MadisonFlatFeeHomes.Com. LLC v. Stuart Meland
Claim Number: FA1703001724843
Complainant is MadisonFlatFeeHomes.Com. LLC (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, United States. Respondent is Stuart Meland (“Respondent”), Wisconsin, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <madisonflatfee.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.
Hon. Nelson A Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 31, 2017; the Forum received payment on April 3, 2017.
On April 3, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <madisonflatfee.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 April 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 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@madisonflatfee.com. Also on April 6, 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.
A timely Response was received and determined to be complete on April 24, 2017.
On May2,2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Nelson A. Diaz (ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has engaged in long term and extensive use of the MADISON FLAT FEE HOMES mark in connection with its residential real estate services. Complainant registered the MADISON FLAT FEE HOMES mark with the state of Wisconsin trademark office (Reg. No. 20170000271, first use Sept. 18, 2009). Complainant also has common law rights associated with the mark. Additionally, Respondent’s <madisonflatfee.com> is confusingly similar as it simply eliminates the spaces from the mark, along with the word “homes,” and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <madisonflatfee.com>. Respondent is not commonly known by Complainant’s mark, nor has Complainant authorized or given permission to Respondent to use the MADISON FLAT FEE HOMES mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services as the disputed domain name redirect users to a webpage that prominently displays Complainant’s mark on the webpage, leading users to believe that a relationship exists between Complainant and Respondent. See Compl., at Attached Ex. 3. Similarly, Respondent uses the disputed domain name to offer services in direct competition with Complainant, presumably for profit.
Respondent registered and uses the <madisonflatfee.com> domain name in bad faith. Respondent registered the disputed domain names to disrupt Complainant’s business and to create a likelihood for confusion in users believing that Complainant and Respondent are related. Further, the resolving webpage for the disputed domain name offers services that directly compete with Complainant, presumably for Respondent’s commercial benefit. Finally, Respondent was aware of Complainant’s MADISON FLAT FEE HOMES mark prior to registration of the <madisonflatfee.com> domain name, as Complainant has operated under the mark for several years in the same geographic market with few competitors.
B. Respondent
Complainant does not have established rights in the mark. Respondent has marketed the terms “flat fee” and “flat fee MLS” in the Madison, Wisconsin area since 2003, and rights in a mark, for the state of Wisconsin, are recognized by usage, not registration. Complainant created its MADISON FLAT FEE HOMES mark to capitalize on the market created by Respondent prior to the mark’s registration. Both the <madisonflatfee.com> and <madisonflatfeemls.com> domain names owned by Respondent were previously registered by Homefront LLC, a licensed real estate broker in Wisconsin, until 2014 when Homefront LLC failed to renew the domain names. Additionally, Complainant’s mark and associated domain name, <madisonflatfeehomes.com>, are not unique and use only generic and descriptive terms that are used by Respondent and many other real estate companies throughout the area.
Respondent does have rights and legitimate interests in the name. Respondent is a licensed real estate broker located in Madison, Wisconsin and has offered its services since 2003. Contrary to Complainant’s contention, Respondent is the top selling residential real estate agent since 2003. Further, Respondent uses the domain name in connection with services one would expect by going to the domain name—flat fee real estate services in Madison, Wisconsin. Additionally, the domain name existed and was used prior to the Complainant’s first use of its mark.
Respondent’s use of the domain name is not in bad faith, as it has existed in the real estate sphere since 2003, prior to Complainant’s registration of its mark, and the use of the <madisonflatfee.com> domain name is consistent with Respondent’s brand, brand image, and services provided. Respondent does not attempt to cause confusion with Complainant’s brand, as the resolving webpage for the domain name resembles Respondent’s current website more than Complainant’s existing website.
C. Additional Submissions
In the Response, he argues that Respondent attempted to rely upon the prior registration and use of the subject domain in 2006 by an apparently unrelated third party, Homefront, LLC. However, it does not appear from the Archive.org printouts submitted by the Respondent that Homefront, LLC used MADISON FLAT FEE or a mark similar to the Complainant’s Madison Flat Fee Marks on the website associated with the domain. Further, the Respondent has not shown and does not claim to have purchased nor acquired any rights in the subject domain or the mark MADISON FLAT FEE from the prior domain registrant. Instead, Respondent admits that the subject domain lapsed in July 2014.
Complainant further states that Respondent cannot rely upon the prior registration or use of the domain by an unrelated third party. Instead, it is August 31, 2014, the date that Respondent registered MADISONFLATFEE.com, which is the relevant of registration for the subject domain in this case. Complainant maintains that its use of an ownership in the Madison Flat Fee Marks since 2009 predate the registration and any use of the subject domain upon which Respondent can rely and that Respondent has no past or present legitimate rights or interests in the subject domain name or any name or mark confusingly similar to MADISONFLATFEE.
Respondent has not demonstrated the use of MADISONFLATFEE.com or any name corresponding to the domain name in connection with a bona fide, non-commercial or fair use. Complainant maintains that Respondent has no past or present legitimate rights or interests in the subject domain name.
Respondent has Violated ICANN UDRP ¶ 4(a)(ii), ¶ 4(c)(i) ¶ 4(b)(iv)
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.
Complainant engages in the business of selling real estate property for a flat fee from customers. It has operated in the Madison, Wisconsin area since 2009. Complainant claims it registered the MADISON FLAT FEE HOMES mark with the state of Wisconsin trademark office (WI, Reg. No. 20170000271, first use Sept. 18, 2009). Registration of a mark with a state authority can sufficiently evince rights in a mark. See The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark). While it is unclear when Complainant achieved “registered” status of its state-registered MADISON FLAT FEE HOMES mark based on Attached Exhibit 4, the Panel finds Complainant’s rights under the common law. Common law rights may be established through a proven secondary meaning—achieved through a number of different ways. See generally Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Forum Aug. 13, 2007) (“A common law trademark must be shown by evidence such as sales figures, advertising expenditure, [and] numbers of customers.”). Complainant has made several allegations in support of its rights, including: provision of MADISON FLAT FEE HOMES branded real estate services to over 1,000 clients in Wisconsin since 2010 collecting revenues in connection with the mark in excess of $170 million, investing significant time and resources in the promotion and advertising of its mark and services.. Based on Complainant’s evidence and allegations, the Panel finds that Complainant has supported its rights in the MADISON FLAT FEE HOMES mark under the common law.
Further, while Respondent argues that its registration of the <madisonflatfee.com> domain name predates Complainant’s alleged rights in the mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See AB Svenska Spel v. Zacharov, D2003-0527 (WIPO Oct. 2, 2003) (holding that the UDRP does not require a complainant to have registered its trademark prior to the respondent’s registration of the domain name under Policy ¶ 4(a)(i) but may prevent a finding of bad faith under Policy ¶ 4(a)(iii)); see also Clear!Blue Holdings, L.L.C. v. NaviSite, Inc., FA 888071 (Forum Mar. 5, 2007) (“Although the domain name in dispute was first registered in 1996, four years before Complainant’s alleged first use of the mark, the Panel finds that Complainant can still establish rights in the CLEAR BLUE marks under Policy ¶ 4(a)(i).”).
Complainant alleges that the <madisonflatfee.com> domain name is confusingly similar to the MADISON FLAT FEE HOMES mark because it simply omits spaces and a word from the mark, while adding the gTLD “.com.” Domain names with similar changes have not been found to sufficiently distinguish domain names from marks. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (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)); see also The Pros Closet, Inc. v. Above.com Domain Privacy, FA 1616518 (Forum June 3, 2015) (finding confusing similarity where the <proscloset.com> domain name merely omitted the first term (“the”) from Complainant’s THE PROS CLOSET mark, eliminated spacing between words, and added the “.com” gTLD.). Similarly, the addition of a gTLD is irrelevant for the discussion of confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Respondent’s domain name removes the word “homes,” removes the spaces between the words, and adds the gTLD “.com.” The Panel concludes that Complainant has sufficient rights in the MADISON FLAT FEE HOMES mark, Respondent has not sufficiently changed the mark to distinguish it from Complainant’s mark.
Complainant is required to 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 (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 (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 contends that Respondent has no rights or legitimate interests in the <madisonflatfee.com> domain name, as Respondent is not commonly known by Complainant’s mark and Complainant has not authorized or given permission to Respondent to use the mark. These assertions are evidence of lacking rights or legitimate interests. See Navistar Int’l Corp. 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). Complainant provides that Respondent has never used the MADISON FLAT FEE HOMES mark in connection with any commercial business or otherwise. The Panel weighs Complainant’s argument against Respondent’s argument for a Policy ¶ 4(c)(ii) analysis.
Complainant next argues that Respondent also doesn’t use the <madisonflatfee.com> domain name for any bona fide offering of goods or services because it attempts to pass off as Complainant. Passing off is evidence a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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 claims that the disputed domain name redirects users to a website prominently portraying Complainant’s name and mark, presumably to mislead customers into believing that Respondent and Complainant have a business relationship and gain customers. See Compl., at Attached Ex. 3. The Panel concludes that Respondent’s use of the disputed domain lacks a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant relatedly argues that Respondent uses the <madisonflatfee.com> domain name to redirect users to a webpage offering services directly competing with Complainant’s. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant lacks a bona fide offering of goods or services. See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The domain name redirects prospective users to a webpage that offers competing real estate services in direct competition with Complainant’s services. See Compl., at Attached Ex. 3. The Panel finds that this conduct is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use under a Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
Complainant alleges that Respondent registered and uses the <madisonflatfee.com> domain name in bad faith by attempting to intercept users seeking Complainant’s services and to commercially benefit by using a confusingly similar domain name and offering competing services. These assertions demonstrate bad faith registration and use. See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iii).”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) The Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial services in competition with Complainant. Complainant alleges that Respondent, by using a confusingly similar domain, redirects prospective users to a different landing site with a similar design and layout while offering the same services, disrupting Complainant’s business for Respondent’s financial benefit. The Panel finds that this type of conduct for a respondent’s benefit is evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant contends that Respondent must have had actual knowledge of the MADISON FLAT FEE HOMES mark as Complainant has operated under the mark for several years in the same geographic market with few competitors. The Panel finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <madisonflatfee.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon Nelson A. Diaz (ret.) Panelist
Dated: May 10, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page