HomeVestors of America, Inc. v. Sean Terry
Claim Number: FA1310001523266
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Kelsey Weir Johnson of Klemchuk Kubasta LLP, Texas, USA. Respondent is Sean Terry (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <webuyuglyhousesphoenixaz.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 7, 2013; the National Arbitration Forum received payment on October 7, 2013.
On October 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhousesphoenixaz.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@webuyuglyhousesphoenixaz.com. Also on October 10, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel issues its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶ 4(a)(i)
a. Complainant, HomeVestors of America, Inc., uses its WE BUY UGLY HOUSES mark in connection with its business of buying homes that are hard to sell and paying cash to owners who are in difficult situations.
b. Complainant owns rights in the WE BUY UGLY HOUSES mark through registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,761,385 registered September 9, 2003). See Complainant’s Exhibit A.
c. The <webuyuglyhousesphoenixaz.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark because the domain name fully appropriates the mark and merely adds the geographic identifier “Phoenix AZ.”
2. Policy ¶ 4(a)(ii)
a. Respondent is not commonly known as <webuyuglyhousesphoenixaz.com> because the WHOIS information identifies “Sean Terry” as the registrant of the disputed domain name, and the disputed domain name’s resolving website hosts a video that advertises Sean Terry’s real estate services. See Complainant’s Exhibit D.
b. Respondent is not using the <webuyuglyhousesphoenixaz.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the domain name hosts a commercial website that directly competes with Complainant in the offering of home-buying services. See Complainant’s Exhibit D.
3. Policy ¶ 4(a)(iii)
a. Respondent has demonstrated bad faith registration and use of the <webuyuglyhousesphoenixaz.com> domain name pursuant to Policy ¶ 4(b)(iii), because the disputed domain name targets potential customers of Complainant and redirects them to Respondent’s competing website. See Complainant’s Exhibit D.
b. The <webuyuglyhousesphoenixaz.com> domain name is likely to cause confusion with Complainant’s WE BUY UGLY HOUSES mark, and Respondent is profiting from this confusion in the form of increased traffic to his commercial website. See Complainant’s Exhibit D.
c. Respondent registered the <webuyuglyhousesphoenixaz.com> domain name with actual notice of Complainant’s rights in the WE BUY UGLY HOUSES mark, which can be inferred from the clear link between the mark and the content posted on the at-issue website. See Complainant’s Exhibit D.
4. Respondent registered the disputed domain name on November 21, 2012.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered the disputed domain name on November 21, 2012. In an email dated October 14, 2013, Respondent claims to have hired a virtual assistant to purchase domains and build sites to generate seller leads, and that the disputed domain name must have been one of them. Respondent also offers to transfer the domain and ensure that there will be no further issues.
Complainant established that it had rights in the mark contained in the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant, HomeVestors of America, Inc., states that it uses its WE BUY UGLY HOUSES mark in connection with its business of buying homes that are hard to sell and paying cash to owners who are in difficult situations. Complainant asserts that it has established ownership of the WE BUY UGLY HOUSES mark by registering the mark with the USPTO (e.g., Reg. No. 2,761,385 registered September 9, 2003). See Complainant’s Exhibit A. The Panel notes that it has previously been determined that a complainant’s registration of its mark with the USPTO establishes the complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See, e.g., Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Therefore, the Panel holds that Complainant has demonstrated its rights in the WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i).
Complainant next asserts that the <webuyuglyhousesphoenixaz.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark because the domain name fully appropriates the mark and merely adds the geographic identifier “Phoenix AZ.” In addition, the Panel observes that the disputed domain name eliminates the spaces found between words in the mark and adds the generic top-level domain (“gTLD”) “.com.” However, the Panel notes that panels have previously held that a domain name’s elimination of spaces found in the complainant’s mark and addition of a gTLD such as “.com” do not sufficiently differentiate the domain name from the complainant’s mark for the purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See, e.g., Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel notes that it has also been held that a domain name that fully incorporates a complainant’s mark and merely adds a geographic identifier is confusingly similar to the complainant’s mark under the Policy. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). The Panel holds that the term “Phoenix AZ” found in the disputed domain name is a geographic identifier similar to the term “Cancun” in Trip Network, supra. Accordingly, the Panel concludes that the <webuyuglyhousesphoenixaz.com> is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent is not commonly known as <webuyuglyhousesphoenixaz.com> because the WHOIS information identifies “Sean Terry” as the registrant of the disputed domain name, and the disputed domain name’s resolving website hosts a video that advertises Sean Terry’s real estate services. See Complainant’s Exhibit D. The Panel notes that it has previously been determined that a respondent is not commonly known by the disputed domain name where there is no information in the record, including the WHOIS information, to suggest otherwise. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). In the instant proceedings, the Panel concludes that the evidence in the record tends to show that Respondent is commonly known as “Sean Terry,” and that nothing in the record suggests Respondent is commonly known by the <webuyuglyhousesphoenixaz.com> domain name. Accordingly, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant next suggests that Respondent is not using the <webuyuglyhousesphoenixaz.com> domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) because the domain name hosts a commercial website that directly competes with Complainant in the offering of home-buying services. See Complainant’s Exhibit D. The Panel notes that according to a screenshot provided by Complainant, the at-issue website states, “We Buy Ugly Houses Fast For Cash,” and encourages Internet users to “Get An Offer Today!” See id. Complainant further alleges that the disputed domain name’s resolving website hosts an embedded video entitled “Sean Terry Presents eXtremeFREEDOM” in which realtor Sean Terry promotes his realty services. See id. The Panel notes that it has previously been determined that a respondent’s use of a domain name that incorporates the complainant’s mark to promote services that directly compete with services offered by the complainant is not a use protected by Policy ¶¶ 4(c)(i) or 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services). In the instant proceedings, the Panel concludes from the evidence that Respondent is using the <webuyuglyhousesphoenixaz.com> domain name to promote house-buying services that directly compete with the services offered by Complainant under its WE BUY UGLY HOUSES mark. Accordingly, the Panel holds that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant alleges that Respondent has demonstrated bad faith registration and use of the <webuyuglyhousesphoenixaz.com> domain name pursuant to Policy ¶ 4(b)(iii), because the disputed domain name targets potential customers of Complainant and redirects them to Respondent’s competing website. See Complainant’s Exhibit D. The Panel recalls that according to a screenshot provided by Complainant, the at-issue website states, “We Buy Ugly Houses Fast For Cash,” and encourages Internet users to “Get An Offer Today!” See id. The Panel notes that previous panel decisions have found bad faith disruption pursuant to Policy ¶ 4(b)(iii) where the domain name is substantially similar to the complainant’s mark and is used to operate a website that offers services that compete with the complainant’s services. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)). The Panel holds that as in Spark Networks, supra, the <webuyuglyhousesphoenixaz.com> domain name is substantially similar to Complainant’s WE BUY UGLY HOUSES mark. Moreover, the Panel reasonably concludes from the screenshots provided by Complainant that Respondent is using the disputed domain name to operate a website that offers house-buying services that directly compete with those offered by Complainant. Therefore, the Panel holds that Respondent has demonstrated bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iii).
Complainant argues that Respondent has demonstrated bad faith under Policy ¶ 4(a)(iii) by registering the <webuyuglyhousesphoenixaz.com> domain name with actual notice of Complainant’s rights in the WE BUY UGLY HOUSES mark. Complainant suggests that Respondent’s actual notice can be inferred from the clear link between the mark and the content posted on the at-issue website. See Complainant’s Exhibit D. The Panel notes that it has previously been held that a respondent demonstrates bad faith under Policy ¶ 4(a)(iii) where it registers an infringing domain name with actual notice of the complainant and the complainant’s rights in a mark. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Previous panels have inferred that a respondent had actual notice of the complainant’s mark where there is a clear link between the mark and the content associated with the disputed domain name. Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”). The Panel recalls that the disputed domain name’s resolving website states, “We Buy Ugly Houses Fast For Cash,” and encourages Internet users to “Get An Offer Today!” See Complainant’s Exhibit D. From this evidence, the Panel determines that there is a link between the content posted on the disputed domain name’s resolving website and the house-buying services offered by Complainant under its WE BUY UGLY HOUSES mark. Thus, the Panel holds that Respondent registered the <webuyuglyhousesphoenixaz.com> domain name with actual notice of Complainant and its mark, which is further evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webuyuglyhousesphoenixaz.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: November 11, 2013
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