Houzz Inc. v. Mahendra Rathore / natural living
Claim Number: FA1701001711991
Complainant is Houzz Inc. (“Complainant”), represented by Anne H. Peck of Cooley LLP, California, USA. Respondent is Mahendra Rathore / natural living (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <inhouzfurniture.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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 11, 2017; the Forum received payment on January 11, 2017.
On January 12, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <inhouzfurniture.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 January 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 2, 2017 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@inhouzfurniture.com. Also on January 13, 2017, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 10, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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" 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.
A. Complainant
Complainant Houzz Inc. is a corporation that hosts an online platform for home remodeling and design, offering products for sale such as vanities, cabinets, lighting, furniture, tile, and more. Complainant has rights to the HOUZZ mark based upon numerous registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,124,845, registered Apr. 10, 2014), as well as other trademark agencies throughout the world. Respondent’s <inhouzfurniture.com> is confusingly similar to the HOUZZ mark, as it contains a common misspelling of the mark—namely, the removing of the letter “z”—as well as the generic, non-descriptive terms “in” and “furniture,” and the generic top-level domain name (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by <inhouzfurniture.com>, nor has Complainant authorized Respondent to use Complainant’s trademarks in any way. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website which purports to provide similar, if not identical, products to those offered by Complainant.
Respondent has registered and is using the disputed domain name in bad faith. The resolving website purports to offer product and services that are in direct competition to those provided by Complainant, diverting and confusing Internet users. Respondent’s resolving website utilizes a color scheme similar to that used by Complainant, enhancing the confusion. Further, Respondent’s registration and use of the disputed domain, connected as it is with such a well-known name, suggests opportunistic bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Houzz Inc. of Palo Alto, CA, USA. Complainant is the owner of domestic and international registrations for the mark HOUZZ, which it has used continuously since at least as early as 2008 in connection with goods and services marketed from its online platform for home remodeling and design. Complainant maintains an internet presence, principally at its <houzz.com> website.
Respondent is Mahendra Rathore / natural living of Rajasthan, India. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA.
The Panel notes that <inhouzfurniture.com> was created on or about April 11, 2015.
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 (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 claims rights in the HOUZZ mark based upon registration of the mark with the USPTO (e.g., Reg. No. 4,124,845, registered Apr. 10, 2014). Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel here finds that Complainant’s registration of the HOUZZ mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <inhouzfurniture.com> is confusingly similar to the HOUZZ mark, as it contains a common misspelling of the mark—namely, the removing of the letter “z”—as well as the generic, non-descriptive terms “in” and “furniture,” and the gTLD “.com.” A simple misspelling is not enough to distinguish a disputed domain name from a complainant’s mark in a Policy ¶ 4(a)(i) analysis. See Twitch Interactive, Inc. v. zhang qin, FA 1626511 (Forum Aug. 4, 2015) (finding, “The relevant comparison then resolves to the trademark, TWITCH, with the term, ‘titch,’ which, as can be readily seen, merely removes the letter ‘w’ from the trademark. In spite of that omission the compared integers remain visually and aurally very similar and so Panel finds them to be confusingly similar for the purposes of the Policy.”). Similarly, addition of generic terms and a gTLD does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names). The Panel here finds that the <inhouzfurniture.com> domain name is confusingly similar to the HOUZZ mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that 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). Complainant has met this burden.
Complainant argues that Respondent has no rights or legitimate interests in <inhouzfurniture.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the HOUZZ mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Mahendra Rathore”, “natural living.” Additionally, lack of evidence in the record indicating a respondent was authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel here finds that under Policy ¶ 4(c)(ii) Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s <inhouzfurniture.com> resolves to a website that offers products and services which are in direct competition with those offered by Complainant. Use of a domain name to resolve to a competing website amounts to neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum March 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Complainant contends, as additional evidence of Respondent’s lack of rights or legitimate interests, that Respondent’s use of a common misspelling of the HOUZZ mark both in the domain name and on the resolving website is an attempt to pass off as Complainant. Passing off behavior is likewise not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel here finds that Respondent’s improper use of <inhouzfurniture.com> supports the conclusion that Respondent lacks rights or legitimate interests, and fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use of the disputed domain name.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
Complainant has proven this element.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because the domain name and its resolving website incorporate a common misspelling of the HOUZZ mark and offers for sale products and services which directly compete with Complainant’s business. Use of a disputed domain name to divert Internet users to a competing website can be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). The Panel here again notes that <inhouzfurniture.com> resolves to a website offering furniture and other products that compete with those offered by Complainant. Complainant claims the intent to deceive is further evidenced by Respondent’s use on the resolving website of Complainant’s misspelled mark in a stylization that features Complainant’s distinctive lime green color scheme. The Panel here finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and/or (iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
Complainant has proven this element.
Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <inhouzfurniture.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 24, 2017
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