DECISION

 

Home Builders Institute v. The National Instute of Home Builders Inc.

Claim Number:  FA0307000166011

 

PARTIES

Complainant is Home Builders Institute, Washington, DC (“Complainant”) represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt P.C.  Respondent is The National Instute of Home Builders Inc, Atlanta, GA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homebuilderinstitute.com>, registered with Register.Com.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Sandra Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 2, 2003; the Forum received a hard copy of the Complaint on July 3, 2003.

 

On July 3, 2003, Register.Com confirmed by e-mail to the Forum that the domain name <homebuilderinstitute.com> is registered with Register.Com and that Respondent is the current registrant of the name. Register.Com has verified that Respondent is bound by the Register.Com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On July 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@homebuilderinstitute.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On September 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <homebuilderinstitute.com> domain name is confusingly similar to Complainant’s HOME BUILDERS INSTITUTE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <homebuilderinstitute.com> domain name.

 

3.      Respondent registered and used the <homebuilderinstitute.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is dedicated to the advancement and enrichment of education and training programs serving the needs of the housing industry.  Complainant, for forty years, has trained skilled workers in residential construction, promoted the industry as a career and helped the National Association of Home Builders membership address its need for qualified employees.  Complainant registered the HOME BUILDERS INSTITUTE HBI & DESIGN mark with the U.S. Patent and Trademark Office (“USPTO”) on October 20, 1987 (Reg. No. 1,462,282).  Complainant also registered the HOME BUILDERS INSTITUTE mark with the USPTO on October 17, 1995 (Reg. No. 1,927,218).  Complainant has used the HOME BUILDERS INSTITUTE mark in commerce since 1985.  Complainant holds the registration for the <hbi.org> domain name which resolves to a website that prominently shows the HOME BUILDERS INSTITUTE HBI & DESIGN mark. 

 

Respondent registered the <homebuilderinstitute.com> domain name on December 14, 1999.  Respondent uses the disputed domain name to promote his business, which provides courses on home building, home-study course materials on home building, books on various aspects of home building, builders’ form contracts, and calculators relating to the home building and home mortgage industries.[1]

 

DISCUSSION

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."

 

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.

 

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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the HOME BUILDERS INSTITUTE mark through registration of the mark with the USPTO and use of the mark in commerce since 1985.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

 

Respondent’s <homebuilderinstitute.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name merely misspells the HOME BUILDERS INSTITUTE mark by omitting the letter “s” from BUILDERS.  Respondent’s misspelling of Complainant’s mark is insufficient to distinguish the disputed domain name from the HOME BUILDERS INSTITUTE mark.  See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

 

Rights or Legitimate Interests

 

Respondent, via the <homebuilderinstitute.com> domain name, offers goods and services that compete with those offered by Complainant.  Respondent’s use of the misleading domain name to compete and disrupt Complainant’s business is evidence that Respondent is not using the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website).

 

Furthermore, the WHOIS information for the <homebuilderinstitute.com> domain name fails to establish Respondent as one commonly known by the disputed domain name or the HOMEBUILDERINSTITUE.COM mark.  The WHOIS information for the disputed domain name lists Respondent’s trade name, The National Instute of Homebuilders, Inc. as the administrative contact.  Both the trade name and the disputed domain name share similar words; however, the Panel finds that even if the domain name and the trade name were identical it would not necessarily establish that Respondent was commonly known by the domain name because Respondent could list any administrative contact it desired.  Without a response from Respondent, the Panel will not presume that Respondent is commonly known by the disputed domain name.  The record fails to establish that Respondent was authorized or licensed to use or register domain names that incorporate Complainant’s marks.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Yoga Works, Inc. v. Arpita d/b/a Shanti Yoga Works, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that Respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that Respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Also, due to Respondent’s failure to contest the allegations of the Complaint, the Panel may presume that Respondent lacks rights or legitimate interests in the disputed domain name.  See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

 

Registration and Use in Bad Faith

 

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s HOME BUILDERS INSTITUTE mark because the mark was registered with the USPTO, has been used in commerce since 1985, the domain name is a misspelling of the mark and the domain name provides goods and services that compete with Complainant.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

 

Furthermore, Respondent has used the misleading <homebuilderinstitute.com> domain name to offer goods and services that compete with Complainant.  Respondent’s competitive use of the misleading domain name disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <homebuilderinstitute.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Sandra Franklin, Panelist

Dated:  October 3, 2003

 

 

 

 

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