Houzz Inc. v. George Farcas / N/A
Claim Number: FA1602001660204
Complainant is Houzz Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is George Farcas / N/A (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houzzilla.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
Each of 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.
Hon. Karl V. Fink (Ret.) (Chair), The Hon. Neil Anthony Brown QC, and Eleni Lappa as Panelists.
Complainant submitted a Complaint to the Forum electronically on February 9, 2016; the Forum received payment on February 9, 2016.
On February 09, 2016, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <houzzilla.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 7, 2016 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@houzzilla.com. Also on February 15, 2016, 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.
On February 22, 2016, the Forum received email correspondence from Respondent, which was not a proper Response to the Complaint. In its correspondence, Respondent denied acting in bad faith but consented to transfer of the domain name.
Having received no proper Response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2016, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) (Chair), The Hon. Neil Anthony Brown QC, and Eleni Lappa as Panelists.
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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant
Complainant uses the HOUZZ mark in connection with its business as an online platform for home remodeling, architecture, interior design and decorating, and landscaping. Complainant has registered the HOUZZ mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,124,845, registered April 10, 2012), which demonstrates rights in the mark. Respondent’s <houzzilla.com> domain name is confusingly similar to Complainant’s HOUZZ mark as it incorporates the mark in its entirety and adds the letters “illa” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <houzzilla.com> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <houzzilla.com> domain name. Rather, the domain name resolves to a website containing competing services to those on Complainant’s own website, <houzz.com>.
Respondent registered and is using the <houzzilla.com> domain name in bad faith. Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Further, Respondent’s registration and use of the disputed domain name exemplifies opportunistic bad faith.
Respondent
Respondent did not submit a proper Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <houzzilla.com> domain name.
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(f), 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 uses the HOUZZ mark in connection with its business as an online platform for home remodeling, architecture, interior design and decorating, and landscaping. Complainant states it has registered the HOUZZ mark with the USPTO (e.g., Reg. No. 4,124,845, registered April 10, 2012), and that this demonstrates its rights in the mark. Past panels have found registration with the USPTO to be sufficient to establish rights in a trademark, even where Respondent operates in a different country. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, the Panel finds that Complainant has demonstrated rights in the HOUZZ mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <houzzilla.com> domain name is confusingly similar to Complainant’s HOUZZ mark as it incorporates the mark in its entirety and adds the letters “illa” and the generic top-level domain (“gTLD”) “.com.” Panels have found such alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel therefore finds that Respondent’s <houzzilla.com> domain name is confusingly similar to Complainant’s HOUZZ mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in the <houzzilla.com> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “George Farcas” as registrant. Complainant also asserts that it has not given Respondent permission to use its HOUZZ mark. Respondent has not submitted a formal response in this proceeding to refute Complainant’s allegations. Therefore, in light of the available evidence, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(i). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent’s use of the <houzzilla.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that the domain name resolves to a website that purports to offer home renovation services competing with those offered by Complainant. Complainant further contends that Respondent is attempting to pass itself off as Complainant by using a similar green and white color scheme and a visually similar logo. Past panels have found use by a respondent to offer competing services or to attempt to pass oneself off as a complainant not to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See 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); see also Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)). Therefore, the Panel finds that Respondent’s <houzzilla.com> domain name constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant contends that Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant contends that Respondent registered the domain name in order to profit from users looking for Complainant’s site who find Respondent’s site and are offered services similar to Complainant’s services. The Panel finds that Respondent is attempting to profit from Internet user confusion that results in the redirection to Respondent’s competing site, and that this constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant argues that Respondent’s registration and use of the <houzzilla.com> domain name was opportunistic bad faith because of the distinctive fame of Complainant’s HOUZZ mark. Past panels have found opportunistic bad faith where it is inconceivable that a respondent could make any use of the disputed domain names without creating an impression of association with the complainant. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”). The Panel finds the domain name appears to be connected with Complainant, and therefore finds opportunistic bad faith registration and use of the <houzzilla.com> domain name.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <houzzilla.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) (Chair), Panelist
The Hon. Neil Anthony Brown QC, Panelist
Eleni Lappa, Panelist
Dated: March 28, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page