Acorn Home Care, LLC v. DOMAIN ADMINISTRATOR / YODLE
Claim Number: FA1709001750771
Complainant is Acorn Home Care, LLC ("Complainant"), represented by Houston Putnam Lowry of Polivy, Taschner, Lowry & Clayton, Connecticut, USA. Respondent is DOMAIN ADMINISTRATOR / YODLE ("Respondent"), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <acornhome.org>, registered with Register.com, Inc..
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2017; the Forum received payment on September 26, 2017.
On September 27, 2017, Register.com, Inc. confirmed by email to the Forum that the <acornhome.org> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 September 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2017 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@acornhome.org. Also on September 27, 2017, the Written Notice of the Complaint, notifying Respondent of the email 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 October 20, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a Connecticut company that provides home care services, including homemaker services, companion services, and live-in services. Complainant has operated under the name Acorn Home Care, LLC, for the past seven years, and uses the domain name <acornhome.com> for its website. Complainant states that it has spent substantial sums and effort advertising its existence and services. Complainant claims common-law trademark rights in the ACORN HOME and ACORN HOME CARE marks and associated logo, asserting that the marks and logo have acquired secondary meaning.
On August 30, 2017, Complainant entered into a contract with Vivial Media LLC, under which Vivial agreed to provide advertising services to Complainant. Two days later, on September 1, 2017, the disputed domain name <acornhome.org> was registered by Respondent. Complainant states that there is no known connection between Respondent and Vivial, and that Complainant did not know of Respondent's existence until its discovery that Respondent had registered the disputed domain name. Complainant did not authorize Vivial to use its marks or logo, in a domain name or otherwise, nor to build a website.
Respondent has created a website using disputed domain name <acornhome.org> that purports to be for Complainant and includes Comlpainant's logo and claimed marks, although the website describes Complainant's business inaccurately in various respects, and contains incorrect contact information for Complainant. Specifically, the website contains a telephone number controlled by Respondent that forwards calls to Complainant's phone number but records the calls without Complainant's permission; Respondent also apparently retains copies of email messages received through the website before forwarding them to Complainant. Complainant accuses Respondent of building an unauthorized "copy-cat" website, operating a "phishing" scheme, and impersonating Complainant for commercial gain.
Complainant's counsel contacted Respondent, demanding that it surrender the disputed domain name; Respondent initially denied having registered the domain name and did not respond to Complainant's subsequent communications. Complainant alleges that Respondent's business model is to purchase similar domain names for businesses that sign up for Vivial's services, without obtaining the customer's permission, with the intent to hold the domain name hostage if the customer subsequently terminates the contract with Vivial.
Complainant contends on the above grounds that the disputed domain name <acornhome.org> is identical and confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests with respect to the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has not demonstrated that it has rights in a relevant mark. The Panel further finds that Respondent lacks rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
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 common-law trademark rights in ACORN HOME and ACORN HOME CARE. Although a trademark registration is not required to prevail under the Policy, a complainant's burden is more onerous if its claimed rights arise solely at common law.
In order to show common-law rights for purposes of the Policy, Complainant must present evidence that the name has acquired secondary meaning—i.e., that it has become a distinctive identifier associated with Complainant or its goods or services. Such evidence may include length and amount of sales under the claimed trademark, the nature and extent of advertising, consumer surveys, and media recognition. A conclusory allegation of common law rights is normally insufficient, even if undisputed. Where the claimed mark is comprised of descriptive or dictionary words, Complainant has a greater onus to present compelling evidence of secondary meaning or distinctiveness.
WMS Group, Inc. v. Molly Jenkins / Brandz Agency Inc., FA 1601220 (Forum Feb. 26, 2015) (quoting TimeWorks, LLC v. Shadwan Swed, FA 1519030 (Forum Oct. 15, 2013)) (citations omitted).
Complainant's evidence of common-law rights consists of various statements in an affidavit signed by Complainant's principal, of which these are the most pertinent:
8. . . . Acorn Home Care, LLC has spent substantial sums and effort advertising its existence and services.
. . . .
12. The phrases "Acorn Home Care" and "Acorn Home" has become synonymous with Acorn Home Care, LLC and its high quality home care services.
13. The phrases "Acorn Home Care" and "Acorn Home" have acquired a secondary meaning for Acorn Home Care, LLC's home care services, including homemaker services, companion services and live-in services.. . . .
24. Within its market, Acorn Home Care, LLC is well known as the premier home care agency which offers excellent service and responsiveness. . . .
The affidavit also includes references to Complainant's logo having been used in televised advertisements and on what appears to be a magnetic sign affixed to the affiant's car.
Unfortunately for Complainant, these statements do not suffice to demonstrate common-law rights for purposes of the Policy. Complainant has presented no evidence regarding the volume of sales under the claimed trademark, nor the extent to which the mark has been featured in advertisements; nor is there any evidence of consumer surveys or media recognition of the mark. The Panel also notes that Complainant's own website does not appear to make any reference to a claim of trademark rights, although it does contain a copyright notice. Cf. WMS Group, Inc. v. Molly Jenkins / Brandz Agency Inc., supra (declining to find common-law rights where complainant provided estimates of sales revenues and advertising expenditures, but no evidence of consumer or media recognition of its claimed marks, and its website contained a copyright notice but no claim of trademark rights).
Under the circumstances, the Panel finds that Complainant has failed to meet its burden of showing that it has rights in a relevant mark for purposes of paragraph 4(a)(i) of the Policy.
Although the Panel's finding with regard to the first element is dispositive, the Panel nonetheless considers it appropriate to briefly address the other two elements.
With regard to rights or legitimate interests, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006). Here, Complainant has made a prima facie case, and Respondent has failed to come forward with any evidence of rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks the requisite rights or legitimate interests.
With regard to registration and use in bad faith, paragraph 4(b) of the Policy sets forth four sets of circumstances that are indicative of bad faith, but these instances are illustrative rather than exhaustive, and bad faith may be found based upon other circumstances in appropriate cases. See Bloomberg Finance L.P. v. Anil, FA 1730066 (Forum June 2, 2017).
As described above, Complainant alleges that Respondent's business model is to purchase similar domain names for businesses that sign up for Vivial's services, without obtaining the customer's permission, with the intent to hold the domain name hostage if the customer subsequently terminates the contract with Vivial. Although this description may incorporate a degree of speculation, it is entirely consistent with the evidence before the Panel. Complainant characterizes Respondent's actions as "textbook bad faith," and the Panel is inclined to agree.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <acornhome.org> domain name REMAIN WITH Respondent.
David E. Sorkin, Panelist
Dated: October 20, 2017
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