HomeVestors of America, Inc. v. Andrew
Stubblefield
Claim
Number: FA0507000516915
Complainant is HomeVestors of America, Inc. (“Complainant”),
represented by Stephen L. Sapp of Locke Liddell & Sapp,
2200 Ross Avenue, Suite 2200, Dallas, TX, 75201. Respondent is Andrew
Stubblefield (“Respondent”), 5490 Greenland Road, Jacksonville, FL, 32258.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <crystalhomevestors.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically July 14,
2005; the National Arbitration Forum received a hard copy of the Complaint July
18, 2005.
On
July 15, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <crystalhomevestors.com> is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. verified that Respondent is bound by the Go Daddy Software, Inc.
registration agreement and thereby has agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN's Uniform Domain Name Dispute
Resolution Policy (the "Policy").
On
July 20, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 9, 2005, by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@crystalhomevestors.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
August 15, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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." Therefore, the Panel may issue its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration 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 makes the following assertions:
1. The domain name that Respondent
registered, <crystalhomevestors.com>, is confusingly similar to
Complainant’s HOMEVESTORS mark.
2. Respondent has no rights to or legitimate
interests in the <crystalhomevestors.com> domain name.
3. Respondent registered and used the <crystalhomevestors.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
HomeVestors of America, Inc., and its related companies are in the business of
providing real estate-related services, mortgage-related services and
franchising services, namely, offering technical assistance in establishing,
operating, marketing and developing franchised businesses that purchase,
finance and sell residential real estate.
Complainant has
used the HOMEVESTORS mark in connection with its real estate and franchising
services in commerce since July 21, 1989.
Complainant holds several trademark registrations with the United States
Patent and Trademark Office (“USPTO”) for the HOMEVESTORS mark (Reg. No.
2,216,811 issued January 12, 1999; Reg. No. 2,402,260 issued November 7, 2000;
Reg. No. 2,721,129 issued June 3, 2003; Reg. No. 2,761,385 issued September 9,
2003).
Respondent
registered the <crystalhomevestors.com> domain name December 9,
2004. Respondent is using the disputed
domain name to redirect Internet users to a commercial website offering
residential real estate services in direct competition with Complainant’s
services.
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."
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(e), 14(a) and 15(a) of the Rules and
will draw such inferences as the Panel 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.").
Paragraph 4(a)
of the Policy requires Complainant to 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.
Using extrinsic
proof in this proceeding, Complainant established rights in the HOMEVESTORS
mark through several registrations of the mark with the USPTO and by continuous
use of the mark in commerce. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
The disputed
domain name that Respondent registered, <crystalhomevestors.com>,
is confusingly similar to Complainant’s HOMEVESTORS mark because the domain
name features Complainant’s mark in its entirety and adds the term “crystal”
and the generic top-level domain “.com” to the mark. The Panel finds that these minor alterations to Complainant’s
registered mark are insufficient to negate the confusingly similar aspects of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also Am. Online, Inc.
v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the
descriptive terms “traffic school,” “defensive driving,” and “driver
improvement” did not add any distinctive features capable of overcoming a claim
of confusing similarity); see also Sony Kabushiki Kaisha v.
Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the
addition of an ordinary descriptive word . . . nor the
suffix ‘.com’ detract from the overall impression of the dominant part of the
name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleged that Respondent has no rights to or legitimate interests in the <crystalhomevestors.com>
domain name. Once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to prove that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel presumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent is
using the <crystalhomevestors.com> domain name to redirect
Internet users to a commercial website offering residential real estate
services in direct competition with Complainant’s services. Respondent’s use of a domain name that is
confusingly similar to Complainant’s HOMEVESTORS mark to redirect Internet
users to a website featuring links to real estate services in direct
competition with Complainant’s services is not a use in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and it is
not a legitimate noncommercial or fair use of the domain name pursuant to
Policy ¶ 4(c)(iii). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products
that compete with Complainant’s goods does not constitute a bona fide offering
of goods and services.”); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where the respondent attempted
to profit using the complainant’s mark by redirecting Internet traffic to its
own website); see also DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in
connection with a bona fide offering of goods and services because Respondent
is using the domain name to divert Internet users to <visual.com>, where
services that compete with Complainant are advertised.”).
Respondent has
not offered any proof, and nothing in the record suggests, that Respondent is
commonly known by the <crystalhomevestors.com> domain name. Furthermore, Respondent has no permission or
license to use Complainant’s mark.
Thus, Respondent has not established rights or legitimate interests in
the disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23,
2001) (finding that the respondent does not have rights in a domain name when
the respondent is not known by the mark); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant
alleges that Respondent registered and used the <crystalhomevestors.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain
name that is confusingly similar to Complainant’s mark and using the domain
name to market competing real estate services.
The Panel agrees. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation
from the complainant's marks suggests that the respondent, the complainant’s
competitor, registered the names primarily for the purpose of disrupting the
complainant's business); see also S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competes with the complainant’s business).
Moreover, Respondent
is capitalizing on the goodwill of the HOMEVESTORS mark by using the <crystalhomevestors.com>
domain name to divert Internet users to a website featuring competing real
estate services. Since the disputed
domain name contains Complainant’s mark in its entirety, a consumer searching
for Complainant would become confused as to Complainant’s affiliation with the
resulting website. Therefore,
Respondent’s opportunistic use of the disputed domain name constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708
(Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from
its diversionary use of the complainant's mark when the domain name resolves to
commercial websites and the respondent fails to contest the complaint, it may
be concluded that the respondent is using the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv)); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant’s site to its own website for commercial gain).
Furthermore,
Respondent’s registration of a domain name that is confusingly similar to
Complainant’s well-known registered mark, and the content of Respondent’s
website, suggest that Respondent knew of Complainant’s rights in the
HOMEVESTORS mark. Respondent is deemed
to have constructive knowledge of Complainant’s mark due to Complainant’s
registration with the USPTO. Thus, the
Panel finds that Respondent registered and used the domain name in bad faith
because Respondent chose the <crystalhomevestors.com> domain name
based on the distinctive and well-known qualities of Complainant’s mark. See
Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000)
(finding that evidence of bad faith includes actual or constructive knowledge
of a commonly known mark at the time of registration); see also Orange Glo Int’l v.
Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN
mark is listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see
also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)
(“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); see also 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
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <crystalhomevestors.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: August 26, 2005.
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