Houzz Inc. v. HAGOP DOUMANIAN / NETICO, INC.
Claim Number: FA1707001739475
Complainant is Houzz Inc. (“Complainant”), represented by Chantal Z. Hwang of Cooley LLP, California, USA. Respondent is HAGOP DOUMANIAN / NETICO, INC. (“Respondent”), represented by Roger H. Doumanian, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <houz.com> (‘the Domain Name’), registered with eNom, LLC.
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.
Dawn Osborne of Palmer Biggs IP as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2017; the Forum received payment on July 11, 2017.
On July 12, 2017, eNom, LLC confirmed by e-mail to the Forum that the <houz.com> domain name is registered with eNom, LLC and that Respondent is the current registrant of the name. eNom, LLC has verified that Respondent is bound by the eNom, 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 July 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@houz.com. Also on July 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.
A timely Response was received and determined to be complete on August 1, 2017.
On August 2, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs IP 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 provided an additional submission on August 7, 2017 in a timely manner pursuant to Supplementary Rule #7.
Respondent provided an additional submission on August 12, 2017 in a timely manner pursuant to Supplementary Rule #7.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant’s contentions can be summarised as follows:
Complainant is a leading online platform for home remodeling and design. It owns, inter alia, trade mark registrations for HOUZZ in the USA dating back to 2008. It owns Houzz.com.
Respondent originally registered the Domain Name in the false name of a Californian entity, but is an individual.
The Domain Name resolves to a web site that features a series of related links that purport to redirect users to Complainant’s website identified as ‘Houzz’ or ‘Houzz.com’. In fact the website attached to the Domain Name has been identified as a malware site. It has also been used historically for phishing schemes.
The Domain Name is currently being offered for sale for $50,000 on SEDO.com.
Complainant has used the HOUZZ mark since well prior to October 23. 2013 the earliest date that the Domain Name could have been transferred to Respondent.
The Domain Name is confusingly similar to Complainant’s mark being a common misspelling of its designer to divert consumers to Respondent’s web site in the mistaken belief it is associated with Complainant
Respondent is not commonly known by the Domain Name. Complainant has not authorized Respondent to use the HOUZZ name. It is not an offering of bona fide goods and services to redirect users who are seeking Complainant’s well known online platform to a web site that has no affiliation with Complainant. Passing off or phishing is unlawful and cannot be a bona fide offering of goods or services or legitimate non commercial or fair use. Respondent has no rights or legitimate interests in the Domain Name.
Respondent has registered the Domain Name unlawfully and in bad faith.
Typosquatting is, in itself, grounds for a finding of bad faith.
Unlawful use of a Domain Name such as phishing or delivery of malware is also grounds for a finding of bad faith.
Offering a trade mark for sale for tens of thousands of dollars amounts to bad faith use of the Domain Name.
Defendant has been found to have cybersquatted in several prior UDRP decisions and should be considered to have evinced a pattern of bad faith.
Respondent’s submissions in its Response can be summarised as follows:
Contrary to Complainant’s allegation that Respondent registered the Domain Name in a false name, in fact Netico Inc is a 17 year old active Nevada corporation in good standing, in operation since March 2000. Hagop Doumanian is a reputable entrepreneur in the domain technology industry for nearly 2 decades. He uses aliases to avoid spam.
In 2003 Netico Inc, Respondent acquired the Domain Name to develop an online search portal. Respondent continued to use the Domain Name as a search engine throughout 2008, prior to the existence of Complainant’s business. Respondent never made mention of Complainant.
Sometime after 2010 Respondent parked the Domain Name with Sedo.com and began displaying various content provided by Sedo including music related content that had nothing to do with Complainant. Complainant’s assertion that Respondent obtained ownership of the Domain Name in 2013 is inaccurate and meritless. Respondent has always owned the Domain Name since 2003 albeit that it was passed around to another Respondent company and Hagop Doumanian was the principal of the original registrant company. It was registered 5 years before Complainant existed and 8 years before Complainant registered any trade marks. Any confusion is caused by Complainant’s later registration of its domain name and this is an attempt of reverse domain name hijacking. Parking on Sedo in these circumstances is not bad faith.
Respondent is in the business of selling domain names. Since Respondent registered the Domain Name years before Complainant existed it is entitled to own, develop and sell the Domain Name.
Immediately upon becoming aware that the SEDO automatic feed had a link for ‘Houzz’ Respondent requested removal. In any event this looked nothing like Complainant’s site. Complainant’s allegations of phishing by Respondent are false and there is no evidence of this. Upon becoming aware that the web sites linked to the Domain Name may contain malware Respondent immediately requested that Sedo.com remove all such links from the Domain Name and parking page.
Respondent registered the Domain Name 5 years prior to the existence of Complainant and therefore could not have registered the Domain Name in bad faith.
Selling the Domain Name that it has owned for 14 years and prior to the existence of Complainant is not bad faith. Respondent believes that the Complaint offered $2500 and $5000 for the Domain Name through a third party acquisition company before filing this complaint.
Respondent could not have registered the Domain Name primarily for the purpose of disrupting the business of a competitor as Complainant did not exist at the time. In any event Respondent is not a competitor of Complainant which is in a different business.
Respondent is in the business of buying and selling domain names. When dealing in domain names UDRP disputes are common and Respondent has had to surrender some domain names in this way. It is the nature of Respondent’s business.
Complainant’s submissions in its Additional Written Statement in Reply can be summarised as follows:
Respondent does not deny that the Domain Name is similar to Complainant’s mark or that the Domain Name has offered phishing schemes or malware or that Respondent is not commonly known by the Domain Name. Respondent’s web site has offered links to third party businesses which compete with the business of Complainant.
Respondent has not presented any evidence which shows an unbroken chain of ownership of the Domain Name. There has been a change of control amounting to a new registration.
Respondent’s Response to Complainant’s Additional Written Statement in Reply enclosed further evidence that Respondent had owned the Domain Name since 2003 and further evidence of its use of the Domain Name.
Complainant is a leading online platform for home remodeling and design. It owns, inter alia, trade mark registrations for HOUZZ in the USA dating back to 2008. It owns Houzz.com.
Respondent has owned the Domain Name (albeit at times under the name of a corporate vehicle he controls) since 2003.
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.
Identical or Confusingly Similar
Respondent does not dispute Policy 4 (a)(i) that the Domain Name is confusingly similar to a mark HOUZZ in which Complainant has rights. Accordingly it appears that Complainant has satisfied the first limb of the Policy.
Rights or Legitimate Interests
It is not necessary make a finding on the Second limb of the Policy in view of the findings in relation to the third limb of the Policy below.
Registration and Use in Bad Faith
Respondent has shown that it was involved with the company that registered the Domain Name in 2003 five years before Complainant came into existence. Predating has often precluded relief for complainants. See Telecom Italia SpA v NetGears LLC, FA 944807 (Forum May 16, 2007)(determining Respondent could not have registered or used the disputed domain name in bad faith where Respondent registered the disputed domain name before Complainant began using the mark).
However, the panel declines to make a finding of reverse domain name hijacking as it appears Complainant believed in good faith that there was no connection between Respondent and the original owner of the Domain Name and it was hard for them to see that as Respondent used an alias for that registration. See Church in Houston v Moran, D2001-0683 (WIPO Aug 2, 2001)(noting that a finding of reverse domain name hijacking requires bad faith on Complainant’s part which was not proven as Complainant did not know and should not have known that one of the three elements necessary to bring a successful complaint was absent.)
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered the domain name houz.com shall REMAIN WITH Respondent.
Dawn Osborne, Panelist
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