Samuel Hackwell v. Steven Bryant
Claim Number: FA0609000806493
PARTIES
Complainant is Samuel Hackwell (“Complainant”), 305 E. Grover Street, Lynden, WA 98264. Respondent is Steven Bryant (“Respondent”), 911 San Benito Road, Berkeley, CA 94707.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <storybookhomes.com> and <storybookhomes.org>, registered with Network Solutions, Inc.
PANEL
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.
Mark McCormick as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on September 27, 2006; the National Arbitration Forum received a
hard copy of the Complaint on September 29, 2006.
On September 28, 2006, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <storybookhomes.com> and <storybookhomes.org> domain names are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
names. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On October 4, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 24, 2006 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@storybookhomes.com and
postmaster@storybookhomes.org by e-mail.
A timely Response was received and determined to be complete on October
24, 2006.
On November 1, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Mark McCormick as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complaint Samuel Hackwell contends he has registered the service mark
STORYBOOK HOMES in 2003 and has been using the domain
<storybookhomes.biz> since November 2001. He asserts that Respondent Steven Bryant has two domains, <storybookhomes.org> and <storybookhomes.com>, that are
confusingly similar to Complainant’s domain.
Complainant asserts that he has lost customers and money because persons
who are seeking his services have reached Respondent’s inactive and “under
construction” websites. He contends
Respondent does not use his domains for a good faith purpose and has made no
demonstrable preparation for use.
Complainant attempted without success to purchase Respondent’s domains,
but Respondent was refused until leaving a message on Complaint’s answering
machine in September 2006 offering to negotiate sale of his domain names. Complainant contends that Respondent has
acted in bad faith.
B. Respondent
Respondent contends he has a legitimate use for his domain names, which
he registered in April 2002, prior to the effective date of Complainant’s
trademark registration. Respondent
asserts he has a legitimate business called Story Book Homes, Inc., which has
been licensed as a real estate corporation since 2003. He contends Storybook Homes is a generic
term in the residential real estate market.
He denies he is a competitor of Complainant.
He accuses Complainant of having rested on his rights for four
years. He denies that he is a direct
competitor of Complainant. He says he
engages through his corporation in real estate sales, real estate education and
real estate brokerage consulting. He
states he is a member of multiple listing service. He says he uses his domain name primarily for e-mail
communication and also uses a sub-domain for file transfers. He denies he has acted in bad faith and
contends he has a legitimate business interest in the domain name and that, in
fact, Complainant has engaged in reverse domain name hijacking and has
misrepresented facts.
C. Additional Submissions
Complainant filed an additional submission to argue that Tina Hackwell
responded for him to Respondent’s September 26, 2006 message to clarify
Complainant’s willingness to negotiate purchase of Respondent’s domain names
and to offer a total of $800 for them and to ask for a prompt response because
of Complainant’s plan to submit his complaint to the forum on the following
day. He also alleges Respondent has
failed to prove he actually uses the domain names in a going business or is well
known by the names as he asserts.
Complainant contends that in contrast his company is well known and is
nationally and internationally recognized.
He alleges that Respondent’s charge of reverse domain name hijacking is
a meritless effort to divert attention.
FINDINGS
Complainant has been in the residential home design, construction, real estate sales and development business since March 2000, with headquarters in Lynden, Washington. Since November 2001, he has used the domain name <storybookhomes.biz>. He filed for trademark registration of STORYBOOK HOMES on July 27, 2001. The name was published for opposition on February 5, 2002 and was accepted for registration on February 11, 2003. Respondent registered the disputed domain names <storybookhomes.com> and <storybookhomes.org> in April 2002.
Complainant contacted Respondent by telephone in 2002 and made a monetary offer to purchase the domain names which Respondent refused. Complainant made an additional offer by e-mail through Network Solutions LLC in 2006, which was ignored. Then on September 15, 2006, Complainant through Tina Hackwell who left a voicemail message in an effort to open negotiations and to inform Respondent that if he was unwilling to negotiate sale Complainant would seek a legal remedy. Respondent at about 12:05 a.m. on September 26, 2006 left a message on Complainant’s answering machine expressing appreciation for Tina’s call, saying he had been approached previously by potential purchasers who had not made “serious offers.” He said that if “you guys” are in a position to open a serious negotiation he was certain that his business partner and he were open to see where that might lead. He asked for clarification about whether the negotiation would be between principals or through attorneys and left his home telephone number, saying he “looked forward to seeing where this might go.” Tina Hackwell at about 11:00 a.m. the same date again left a message on Respondent’s answering machine offering $400 for each domain name and said if it were not accepted Complainant would the next day be filing paperwork with the National Arbitration Forum if Respondent did not call her back. Respondent did not call her back, and Complainant filed his present complaint.
Respondent is sole owner of a California corporation called Story Book Homes, Inc., which is licensed as a real estate broker in California. Other than provide copies of three examples of junk mail addressed to his corporation; Respondent did not produce evidence regarding the scope and actual activities of his corporation. If he has used the domain names since he registered them, it is only in connection with e-mail or file transfers, the extent of which was not shown. It appears Complainant is correct that Respondent does not have websites in use and that anyone seeking access has for four years been met with a message that they are “under construction.”
Respondent has been wiling to negotiate a sale of the domain names but considers an offer of $800 to be much too low. No evidence exists that Respondent actually intends to construct websites in connection with his corporate real estate license or for any other purpose.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 established rights in the STORYBOOK
HOMES service mark through a trademark registration with the United States
Patent and Trademark Office that was requested by him in an application filed
July 27, 2001. Registration was
effective February 11, 2003, and constitutes prima facie proof of continued use
of the mark dating back to the filing date of the application. See J.
C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435
(C.C.P.A. 1965). Respondent’s domain
names <storybookhomes.com> and <storybookhomes.org> are
identical to Complainant’s STORYBOOK HOMES mark because they contain
Complainant’s mark in its entirety with the addition of the generic top-level
domain signs. See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002). Under Policy ¶4(a)(i), the disputed domain
names are confusingly similar to Complainant’s mark.
Because Complainant made a prima facie case of confusing similarity, the burden shifted to Respondent to show he had rights or legitimate interests in use of his domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Although Respondent contends he has used the domain names in e-mail and for file transfer, he has not shown anything that would enable the Panel to conclude the scope or magnitude of any such use, and it is clear he has not made an active use of the disputed domain names to establish websites. No evidence exists that he has made any demonstrable preparations to use them or that he has made a bona fide offering of goods or services through use of the domain names within the terms of Policy ¶4(c)(i). Insofar as the record shows, Respondent has done nothing other than merely register the domain names approximately four years ago. This is insufficient to establish any rights or legitimate interests in the domain names. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000).
Respondent’s lack of rights and legitimate interests in the domain name is further shown by his last minute offer to sell its domain name registration to Complainant for a “serious negotiation” for a price substantially more than the $800 offered by Complainant. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003). Even though Respondent has a corporation which holds a real estate license named STORYBOOK HOMES, INC., the record does not show Respondent is commonly known by the <storybookhomes.com> and <storybookhomes.org> domain names.
Complainant has established that Respondent does not have rights and legitimate interests in the domain names pursuant to Policy ¶4(a)(ii).
Respondent’s registration of the domain names
is in bad faith within the meaning of Policy ¶4(a)(iii) because Respondent has
not made an active use of the disputed domain names and has no demonstrable
preparations to use them. See Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000); Mondich v. Brown, D2000-0004
(WIPO Feb. 16, 2000). Moreover,
Respondent’s bad faith is evidenced by his willingness to sell the domain names
through “a serious negotiation.” See Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000).
No merit exists in Respondent’s allegation that
Complainant is guilty of reverse domain name hijacking. Complainant’s filing of his Complaint was
based on a good-faith belief in his rights to the disputed domain names through
his registration with the United States Patent Office of the STORYBOOK HOMES
mark. See Rusconi Editore S.P.A. v. Bestinfo, D2001-0656 (WIPO July
5, 2001).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storybookhomes.com>
and <storybookhomes.org> domain names be TRANSFERRED from
Respondent to Complainant.
Mark McCormick, Panelist
Dated: November 15, 2006
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