National Arbitration Forum
DECISION
HomeVestors of America, Inc.
v. Cristino Chico
Claim Number: FA0701000904273
PARTIES
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 Cristino Chico (“Respondent”), represented by Corey
D. Mack, of Cahn & Samuels, LLP, 2000 P Street, NW, Suite 200, Washington,
DC 20036.
REGISTRAR AND DISPUTED DOMAIN NAME
The disputed domain name is <iselluglyhouses.com>,
and it is registered with Abacus America, Inc.
d/b/a Names4Ever (“Abacus”) since December 11, 2005.
PANEL
The undersigned, David H Tatham, 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “NAF”) electronically on January 29, 2007;
the NAF received a hard copy of the Complaint on January 31, 2007.
On February 7, 2007, Abacus confirmed by e-mail to the NAF that the
disputed domain name was registered with it and
that Respondent is the current registrant of the name. Abacus has
verified that Respondent is bound by its 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 February 14, 2007, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 6, 2007, 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@iselluglyhouses.com by
e-mail.
A timely Response was received and determined to be complete on March 6, 2007.
Additional Submissions were received from both parties and deemed by the
NAF to be timely – that from Complainant was received on March 12, 2007 and
from Respondent on March 19, 2007.
On March 14, 2007, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the NAF appointed
Mr. David H Tatham as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
FACTUAL BACKGROUND
Complainant
Complainant is in the business of
providing real estate-related services, mortgage-related services, and
franchising services including real estate acquisition, brokerage, title, and
financing services in interstate commerce since at least as early as March 1,
2000. In doing so it uses its unique business
identifier and trade name “WE BUY UGLY HOUSES.” This is the subject of the following service
mark registrations at the USPTO all in the name of Complainant –
WE BUY UGLY HOUSES No. 2,689,569, registered September 26, 2002, for use
with
"real estate services, namely,
real estate brokerage, and providing mortgage, title and home insurance
brokerage services" in International Class 36;
WE BUY UGLY HOUSES No. 2,999,705, registered September 27, 2005, for use
with "real estate services, namely real estate acquisition, real estate
brokerage services and real estate financing services" in International
Class 36;
WE BUY UGLY HOUSES No. 3,099,814, registered June 6, 2006, for use with
"real estate services, namely, real estate brokerage, and providing
mortgage, title and home insurance brokerage services" in International
Class 36;
WE BUY UGLY HOUSES. HOMEVESTORS No.
2,761,385, registered September 9, 2003, for use with "franchising
services, namely, offering technical assistance in establishing, operating,
marketing and developing franchised businesses that purchase, finance and sell
residential real estate" in International Class 35;
WE BUY UGLY HOUSES AND MAKE THEM
NICE AGAIN & DESIGN No.
2,827,136, registered March 30, 2004, for use with "franchising services,
namely, offering technical assistance in establishing, operating, marketing and
developing franchised businesses that purchase, finance and sell residential
real estate" in International Class 35;
UG BUYS UGLY HOUSES No. 2,999,978, registered September 27, 2005, for use
with "franchising services, namely, offering technical assistance in
establishing, operating, marketing and developing franchised businesses that
purchase, finance and sell residential real estate" in International Class
35;
UG BUYS UGLY HOUSES No. 2,935,916, registered March 29, 2005, for use with
"real estate services, namely, real estate acquisition, real estate
brokerage services, and real estate financing services" in International
Class 36;
COMPRAMOS CASAS FEAS (Spanish for
"WE BUY UGLY HOUSES") No. 2,988,337, registered August 23, 2005, for
use with "real estate services, namely, the acquisition and brokerage of
residential real property and real estate financing services" in
International Class 36;
COMPRAMOS CASAS FEAS (Spanish for
"WE BUY UGLY HOUSES") No.
2,982,363, registered August 2, 2005, for use with "franchising services,
namely, offering technical assistance in establishing, operating, marketing and
developing franchised businesses that purchase, finance and sell residential
real estate" in International Class 35;
In addition, Complainant owns an International
Registration No. 878,239, for WE BUY
UGLY HOUSES, which was registered on November 29, 2005 for: "franchising
services, namely, offering technical assistance in establishing, operating,
marketing, and developing franchised businesses that purchase, finance and sell
residential real estate" in International Class 35 and "real estate
services, namely real estate acquisition, real estate brokerage services and
mortgage lending services of residential real estate" in International
Class 36. This registration has been
extended to: Australia, the European
Community, France, Germany, Greece,
Hungary, Ireland, Italy,
Netherlands Antilles, Poland,
Spain, Switzerland, and United Kingdom.
Complainant claims to spend many millions
of dollars each year on advertising and promoting its services under the above
trademarks through television and radio commercials, outdoor billboards, print
media, the Internet, direct marketing campaigns, and many other advertising
media. Accordingly, its customers and others have
come to associate Complainant with each of these marks as the source and origin
of its Services. Moreover, the trademarks are distinctive
trade identifiers, both because of long, conspicuous, and continuous use and
pursuant to the Federal Trademark Act.
Complainant also promotes its
services through an Internet website which is linked to its domain names <webuyuglyhouses.com>,
<webuyuglyhouses.biz>, and <webuyuglyhouses.info>.
Complainant’s website is interactive and
franchisees, potential franchisees, customers and potential customers may use
it to obtain information on Complainant’s services and products. Complainant
contends that as a result of its extensive use of these domain names through
its website they are therefore common law trademarks.
Respondent
Respondent confirms that it is the registered owner of the disputed
domain name. It is and has been
actively involved in the real estate business since at least as early as May 7,
2002. Respondent's primary business has been related
to acquiring and selling undervalued real estate to customers, including
investors, in the South Florida region.
In an effort to provide ready access to property listings to existing
customers and to reach new customers, Respondent reserved the domain name <iselluglyhouses.com> on December 11,
2005, and began operating a website at this name. From the date of registration, and at all
times since, this domain name has been used in relation to Respondent's
business. The name remains an invaluable
resource for conducting Respondent's business.
PARTIES’ CONTENTIONS
A. Complainant
Confusing Similarity
Complainant
contends that Respondent’s domain name <iselluglyhouses.com>
(the disputed domain name) is substantially identical, or at the very
least confusingly similar, to its own trademarks, domain names, and common law
service marks, in particular "WE BUY UGLY HOUSES" which it has the
exclusive right to use in respect of those services listed above in
International Classes 35 and 36.
According to Complainant, the
disputed domain name and Complainant’s marks differ only by the fact that
Respondent has merely substituted the words "I SELL" for the words
"WE BUY" in order to mirror and allude to Complainant’s service mark
"WE BUY UGLY HOUSES." This
substitution does no more than make the disputed domain name confusingly
similar to the Complainant’s marks and does nothing to distinguish the one from
the other. It is therefore substantially and confusingly
similar to Complainant’s trademarks, common law marks and domain names. The
connection of the disputed domain name to real estate services is emphasized by
the fact that it is used in conjunction with and resolves to a commercial
website providing real estate-related services, including real estate
investment and brokerage services, which are fundamentally identical to, and
directly competitive with Complainant’s services.
Because of this confusing similarity,
consumers and potential consumers for Complainant’s services are likely to be confused,
mistaken or deceived into believing that the commercial website at the disputed
domain name emanates from or is in some way sponsored by or affiliated with
Complainant, all to its irreparable damage, through loss and/or dilution of
that part of its goodwill which is symbolized by its trademarks, common law
marks and domain names. Respondent's use of the disputed domain name
has been without Complainant’s consent and, until recently, without its
knowledge. Complainant contends that
Respondent has intentionally infringed upon its trademarks by using the
disputed domain name despite having constructive and, Complainant believes,
actual notice of its exclusive rights in and to the its trademarks, its common
law marks, and its domain names.
Rights or Legitimate Interests
Respondent has not been using the
disputed domain name in connection with a "bona fide" offering of goods or services.
According to Black's Law Dictionary, 6th
Ed., p.177
(West 1990), the term "bona fide"
is defined as "in or with good faith; honestly, openly and sincerely;
without deceit or fraud." Rather than making bona fide use, Respondent has been using the disputed domain name
for the express purpose of leading potential consumers for Complainant’s
services to a commercial website which is not affiliated with, nor otherwise
sponsored or approved by Complainant, and which offers services directly
competitive with the Complainant’s services.
Respondent cannot demonstrate that
it has been commonly known by the disputed domain name.
Respondent is identified by current
WHOIS records as an individual named "Cristino Chico."
There is no indication that Respondent's
name has ever included or is in any way related to the phrase "I SELL UGLY
HOUSES" or any derivative thereof and Complainant has found no evidence
that Respondent had ever done business using the mark "I SELL UGLY
HOUSES" prior to its registration of the disputed domain name on December
11, 2005, which registration was more than five (5) years after Complainant
first began using the its trademarks. As such, Respondent has not been commonly
known by the disputed domain name.
Nor can Respondent demonstrate a
legitimate noncommercial or fair use of the disputed domain name. Instead,
Respondent has used the disputed domain name to direct consumers to a
commercial website offering real estate-related services directly competitive
with those of Complainant. This is not a legitimate noncommercial use.
Additionally, Respondent has made
unfair use of the disputed domain name by using it to deceive consumers, and by
otherwise misappropriating Complainant’s goodwill in its trademarks.
Accordingly, Respondent cannot demonstrate that it has any rights or
legitimate interests in the disputed domain name.
Bad Faith
An online search of USPTO records
and/or a search through any one of the numerous Internet search engines would
have revealed the existence of Complainant’s trademarks and/or domain names,
Complainant therefore contends that Respondent at least had constructive notice
of Complainant’s exclusive rights in and to the designation "WE BUY UGLY
HOUSES," and substantially similar variants thereof, in connection with
the Complainant’s services prior to registering and using the disputed domain
name. Consequently, Respondent cannot claim lack of
knowledge as a defense to bad faith.
Respondent has also continued to
use the disputed domain name to compete with Complainant following actual knowledge
of Complainant’s rights in its trademarks.
On learning that Respondent had registered
the disputed domain name, counsel for Complainant wrote on October 3, 2006 to
demand that Respondent cease and desist use of the disputed domain name, and
transfer ownership of it to Complainant.
A copy of counsel’s letter was annexed
to the Complaint, as well as proof that it was received in the form of a reply
from Respondent. Complainant’s counsel did
subsequently receive a response from counsel for Respondent, but subsequent
negotiations failed to settle the matter or to obtain a transfer of the
disputed domain name. Complainant contends that Respondent's continuing
infringing activities, including use of the disputed domain name in association
with a commercial website offering services directly competitive with its own
services, are clear evidence of Respondent's continued bad faith use of the
disputed domain name.
Internet users typing the phrase
"UGLY HOUSES," or substantially similar variants thereof, into an
Internet search engine and finding themselves directed to Respondent’s website
are likely to believe that they have reached Complainant’s' website and/or are
likely to be confused as to whether Respondent’s website is in some way
sponsored, affiliated or endorsed by Complainant.
Accordingly, a greater volume of traffic
is presently being diverted to Respondent’s website than would be otherwise. Respondent
is therefore intentionally using the disputed domain name to attract, for
commercial gain, Internet users to its website, all as a result of the use of a
domain name that is confusingly similar to Complainant’s trademarks and domain
names, and Complainant referred to several UDRP decisions which, it alleged,
had held that such activity was evidence of bad faith.
The fact that Respondent presently
engages in the online marketing of services which are directly competitive with
those offered by Complainant via an interactive commercial website accessed by
means of a domain name which is confusingly similar to Complainant’s trademarks
and domain names is, Complainant contends, further evidence of bad faith.
B. Respondent
Confusingly
Similar
Respondent contends that the
disputed domain name is not identical, substantially identical, or confusingly
similar to any of Complainant's valid marks.
It is different from Complainant’s
trademarks and domain names in sight, sound and meaning and there is no
likelihood of confusion as a result.
The difference in the appearance of
the two designations is clear and readily apparent. Respondent’s domain name includes the phrase
“I sell” which has a completely different look from Complainant’s phrase “we
buy.” These are not a matter of mere
misspellings or insignificant variations, the relative appearances are quite
different and this alone prevents the disputed domain name from being
confusingly similar to Complainant’s marks.
The difference in the sound between
the domain name and Complainant’s marks is equally clear and immediately
distinct. “I sell ugly houses” is a distant phonetic
cousin to “we buy ugly houses.” The vast
phonetic dissimilarities alone show that the domain name is distinct from
Complainant’s marks.
The meanings of the two
designations are even more distinct. The disputed domain name
"iselluglyhouses" descriptively and accurately informs Internet users
that Respondent is in, the business of selling
ugly houses. Complainant's Mark
"WEBUYUGLYHOUSES" describes the business that Complainant is in, the
business of buying ugly houses.
The only similarity between the
disputed domain name and any of Complainant's Marks lies in the phrase
"Ugly Houses." As applied to
real estate services, “ugly houses” is generic.
Complainant has no registrations or
rights in the phrase "Ugly Houses" alone. More particularly, "Ugly Houses" is
a commonly used generic/descriptive phrase in the real estate business used to
refer to homes having desirable investment characteristics. This
commonly held meaning is evidenced by the hundreds if not thousands of third
party uses, and Respondent annexed to the Response 12 examples of third party
uses of this phrase. Also attached were 2 examples in which, it was
alleged, Complainant itself had used the term "Ugly Houses"
generically. Respondent contends that no one in the
marketplace associates the commonly used generic/descriptive real estate phrase
"Ugly Houses" exclusively with Complainant or its goods and services.
Rights or
Legitimate Interests
Although Complainant asserts that
"Respondent cannot demonstrate any" evidence of rights or legitimate
interests in Respondent's domain name, Respondent points out that, according to
Rule 3(b)(ix)(2) and paragraph 4(a)(ii) of the Policy, it is a complainant who
carries the burden of proving these elements.
Indeed, Complainant bears the burden of
proving that each of the elements required by paragraph 4(a) of the Policy are
present. The burden only shifts to Respondent on a
clear prima facie showing by
Complainant of Respondent's absence of such legitimate right or interest. In this
case, no such prima facie showing has been made.
Complainant has failed to provide
proof of Respondent using the disputed domain name in a manner lacking a bona fide offering of goods or services. Complainant offers only attorney argument
alleging that the disputed domain name attempts to lead potential customers of
Complainant to Respondent's website without offering any evidence of this allegation. Complainant’s
exhibits of printouts of Respondent's domain registration and homepage offer no
further support or insight into Complainant's general allegation. Respondent contends that, as such, Complainant has
not met its burden of providing evidence sufficient to prove that Respondent
has no rights or interest in its domain name.
However Respondent asserts that even
if Complainant were to have established a prima
facie showing such a showing can be rebutted.
Since December 11, 2005, well prior to
notice from Complainant of this dispute, Respondent has been offering real
estate services specifically directed to the sale of houses that are good
investment candidates (often referred to in the real estate investment
community as ugly houses). Through its website, Respondent provides
listings of such houses and markets them to others primarily in South Florida. Accordingly, Respondent has used its domain
name in full accord with paragraph 4(c)(i) of the Policy.
In addition, Respondent’s use of
the domain name constitutes a “fair use” under paragraph 4(c)(iii) of the
Policy. Respondent’s domain name is aptly descriptive
of its services. Respondent has a legitimate interest in using
a descriptive domain name to inform its customers about the nature of its
services. Such domain name use is sanctioned by 15 U.S.C. § 1114(b) (the Fair Use provision of the Lanham
Act). Respondent contends that this
merits a finding that Respondent has made and continues to make a bona fide offering of its services in
connection with the disputed domain name.
Bad Faith.
Complainant has not established
that Respondent used its Domain Name in bad faith. Complainant makes no allegation or offers of
proof that Respondent registered or acquired its Domain Name primarily for the
purpose of selling, renting or transferring the domain name to the Complainant
or one of Complainant's competitors for profit.
In fact, Respondent's Domain Name was
selected and registered to inform potential customers of the services provided
by Respondent, i.e. the sale and listing of investment properties.
Complainant makes no allegation or
offers any proof that Respondent engaged in conduct related to preventing the
owner of a trademark from registering its mark in a corresponding domain name. In fact,
Respondent's has not attempted to prevent any trademark owner, including
Complainant, from registering its mark. The disputed domain name is not a trademark of
another nor does it include any parts of a trademark belonging to another. Neither
Complainant nor any other party owns a trademark registration for “I sell ugly
houses,” “ugly houses” or “I sell.” Through
the registration of the disputed domain name, Respondent has not engaged in conduct
or a pattern of conduct designed to prevent a trademark owner from registering
its mark in a domain name.
Respondent's sole purpose in
registering and using the disputed domain name has been to reach its customers
and potential customers by describing the services it offers. It
registered the disputed domain name with no intention of disrupting or
disturbing the business of any competitor, including Complainant.
To support its bad faith
contention, Complainant relies on the contention that Respondent used its
domain name to direct customers and potential customers to Respondent's website. Complainant
again relies on the erroneous assertion that Respondent created a
"substantially and confusingly similar" designation to Complainant's
Marks in order direct internet users to Respondent's website. Complainant
argues that internet users who search for the terms "Ugly Houses"
would be likely to reach Respondent's website; and that those users would
believe Respondent's website belongs to Complainant and/or would be likely
confused as to the website's sponsorship, affiliation or endorsement by
Complainant. Even a cursory review of Respondent’s web
page belies this contention.
As established above, the disputed
domain name is aptly descriptive of the services offered by Respondent through
its website. Complainant has not identified any material
on Respondent’s website that would lead a consumer to believe that there is an
affiliation or sponsorship of Respondent’s site by Complainant. In fact, no
such material exists. Therefore, Respondent has not intentionally
attempted to attract Internet users to its website on the basis of any such
alleged confusion.
C. Additional Submissions
Complainant’s Additional Submission
Complainant
firstly refers to the fact that in addition to the registered trademarks which
it cited in the Complaint, it also owns the following U.S. trademarks –
UG SELLS RENTAL HOUSES No. 3,000,281, registered September 25, 2005, for use
with "real estate services, namely purchase, finance and sale of
residential real estate rental properties" in International Class 36;
UG SELLS HOUSES TOO, a pending
Application Serial No. 76/667,768,
filed on October 10, 2006, for use with "real estate services, namely,
purchase, finance, acquisition and brokerage of residential real estate
properties" in International Class 36;
Furthermore,
in addition to the domain names previously cited, Complainant also owns the
following additional domain names which it describes as common law
trademarks –
<iselluglyhouses.biz>,
registered on April 5, 2005.
<iselluglyhouses.net>,
registered on April 5, 2005.
<iselluglyhouses.org>,
registered on April 5, 2005
<iselluglyhouses.us>,
registered on April 5, 2005
<sell-ugly-houses-fast.com>,
registered on June 15, 2005
<selluglyhouse.net>,
registered on February 17, 2004
<selluglyhouses.com>,
registered on June 15, 2005
<selluglyhousesfast.com>
registered on June 15, 2005
<weselluglyhouses.info>
registered on April 5, 2005
<weselluglyhouses.us>
registered on April 5, 2005
Each
of these domain names resolves to Complainant's primary website and each was
registered prior to December 11, 2005, the date on which Respondent registered
the disputed domain name. Complainant
contends that this name is in fact identical to several of its own domain names.
"Family of Marks"
Complainant
contends that it is undisputed that the disputed domain name contains the
identical dominant distinctive component "UGLY HOUSES" as do its own
trademarks and domain names. Complainant believes that the law is clear that a trademark owner may use
a plurality of marks with a common prefix, suffix or syllable and thus
establish a "family" of marks, all of them having the same component
in common. Complainant referred to two United States court decisions
which, it contended, established that “A family of marks may have a synergistic
recognition that is greater than the sum for each mark.”
From which Complainant drew the conclusion that even if a junior user's mark is
not identical to any one member of the family, it may nevertheless use the
distinguishing "family name" or characteristic in such a way as to be
likely to cause confusion, mistake, or deception.
Complainant
contended that its trademarks and domain names constitute such a family of
marks, each of which uses the “family” name ‘Ugly Houses’ and that,
accordingly, the disputed domain name, which also incorporates ‘Ugly Houses’ as
its dominant distinctive component is confusingly similar to the Complainant’s
trademarks and domain names. This is
especially so when, as here, the designation is used in connection with the
promotion of services on the Internet that are identical to those of
Complainant.
The terms "BUY" and
"SELL" are associated words in the Real Estate industry
The
only difference between the disputed domain name and the majority of
Complainant’s trademarks and domain names are the words "ISELL" and
"WEBUY." Complainant contends, however, that consumers
of residential real estate do not specifically distinguish between the terms
"BUY" and "SELL" when searching for residential real estate
services, as both "SELL" and "BUY" simply denote a
contemplated transaction relating to residential real estate. Complainant and Respondent are both in the business
of buying and selling real estate, and accordingly, there is no substantive
distinction to the consumer between these associated words in the context of
how they are used by Respondent and Complainant, respectively. Complainant contends that Respondent's argument on
this point is somewhat disingenuous given that in any real estate transaction
one party must "buy" and one must "sell."
The
mere use of the words "ISELL" instead of "WEBUY" does not
differentiate the disputed domain name from Complainant’s trademarks and domain
names as these are associated terms in the industry.
They are confusingly similar and, in this context, Complainant referred to the
case of Compagnie Generale Des
Establissements Michelin – Michelin & Cie.
V. Graeme Foster, WIPO Case No. D2004-0279 (May 25, 2004) in which it was held
that the addition of a generic term to a famous trademark is not sufficient to
avoid confusion, and that a domain name which includes as a whole or partially,
a third parties' registered trademark is to be considered confusingly similar
to it.
The public associates ‘UGLY HOUSES’ with Complainant
Complainant
points out that Respondent has not disputed its rights in and to its trademarks
and domain names. Complainant contends that its numerous and long-standing
United States
registrations are presumptively valid and presumptively distinctive. They are
also proof of Complainant's exclusive right to use them in commerce on or in
connection with the goods or services for which they are registered.
Complainant strongly disagrees with
Respondent’s attempt to argue that the term "Ugly Houses" is not
associated with Complainant or its goods and services and that its trademarks
are generic. Complainant refers to a 1982 United States
court decision in contending that it is well known that familiar words used in
unfamiliar ways are arbitrary marks.
Complainant's use of the term "Ugly" in its trademarks is not now,
nor has it ever been, directed just to show that Complainant buys structures
for families which are "displeasing to the eye or unsightly" which is
the usual familiar meaning of the word. Rather, in the specific context that
Complainant uses the term within the United States residential real
estate market, "Ugly" is meant to have and does have multiple
meanings, none of which are considered to be the familiar meaning of the word
"Ugly."
Examples of meanings that the
public attributes to Complainant's use of the word "UGLY" due to the
manner in which it uses the word include:
(a) property that has structural
issues, which are regularly not apparent on the surface of the property, such
as foundation problems;
(b) property which raises memories
that the owner desires to move away from, such as after the death of a spouse
or child or after a divorce;
(c) property where the owner views the
nature of the neighborhood in which the property is located as less than
desirable from any standpoint, including, for example, such things as commuting
distance to work, close proximity to a meat processing plant, located within a
flood plain or located in a high crime area,
(d) property whose current mortgage
financing is structured in a manner that the owner does not like;
(e) property whose current mortgage
financing rate is higher than the owner desires or can afford;
(f) property in which the amount of
the current mortgage is more than the owner can handle or just does not want to deal with; and
(g) property from which an owner would
like to move for any other reason, including, for example, wanting to move to a
bigger house or needing to move to a smaller house or to another city.
Complainant uses the term ‘Ugly’ in
its mark to convey each of these meanings and many others, not simply that a
client is looking for a property which is ‘unsightly.’
Complainant has been so successful
in conditioning the market to recognize that the term ‘UGLY’ has a meaning
other than "displeasing to the eye or unsightly" that Complainant
regularly receives phone calls from, and purchases houses from, consumers who
do not believe that their houses are "unpleasant to the eye or unsightly." This fact is exemplified by the following
unsolicited news article appearing on September 14, 2004 in the St. Louis Post-Dispatch:
Rich Mattler was getting married
and wanted to move in with his bride.
Tyren Williams needed quick cash to pay off a car loan and forestall bankruptcy. Gus and
Mary Harvatach simply wanted a clean break from the house they had loved but
were ready to leave. All wanted to unload their houses quickly. None thought
their residences were ugly. But they sold them to HomeVestors, a company
known for its slogan, 'We Buy Ugly Houses.'
As stated by one United States
court in 1988 "[t]he significant factor is not whether the word itself is
common, but whether the way the word is used in a particular context is unique
enough to warrant trademark protection." Prior to Complainant's use, there was no
ordinary, normal or natural use of the term "UGLY" in connection with
the buying and selling of residential real estate. Indeed, the use of the term "UGLY"
is counterintuitive to what was, prior to Complainant's first use, the normal
expectation of residential real estate consumers. Specifically, others in the industry believed
that the word "UGLY" would repulse potential residential real estate
consumers due to its highly negative implication. Its use by Complainant, however, does not
repulse consumers, but actually drives them to Complainant. Its use by
Complainant is therefore arbitrary because it is used in what was, prior to
Complainant's initial use of it in the "WE BUY UGLY HOUSES" mark, a
manner unfamiliar and unexpected to consumers and potential consumers of
residential real estate.
Complainant contends that the
public has come to associate its trademarks with the services which it and its
army of franchisees offer, and that the "family of UGLY marks" has
acquired a secondary meaning in the mind of the public.
News media from across the country,
including Southern Florida where Respondent is located, and major newspapers
such as The New York Times and The Wall Street Journal have pointed out that
the public associates Complainant and its services with the "WE BUY UGLY
HOUSES" mark and Complainant quoted from 15 separate examples of this with
dates ranging from November 2002 to May 2006, and it also provided copies of 30
other similar news articles. It concluded from this that many people know
Complainant first, and often only as the "WE BUY UGLY HOUSES" people
and that Complainant's designation is famous and has a clear secondary meaning
in the mind of the public.
The presence of other Infringers
is not a defence
Complainant contends that it was
the first user of the “WE BUY UGLY HOUSES” trademark in interstate commerce,
and since that time Complainant's use of its “family” of marks has been
exclusive, save and except for illegal infringers.
It was only after Complainant spent
millions of dollars annually in promoting its trademarks that third-party
competitors begin attempting to copy them precisely because of their
distinctiveness and the success of Complainant's marketing efforts.
Infringement by others, however,
does not diminish the fact that Complainant is the exclusive user of its
trademarks, and the first user of the word "Ugly" in connection with
residential real estate, nor does such infringement by others diminish the fact
that the "family" of "UGLY" marks owned by Complainant are
distinctive. In fact, improper imitation by others is
further evidence that Complainant’s trademarks are an indication of the source
and origin of Complainant's services, and that Complainant's competitors are
merely attempting to draw on Complainant's substantial goodwill in the mark.
Although Respondent appears to
argue that the presence of other infringers in some fashion legitimizes his own
infringement through the registration and use of the disputed domain name, on
the contrary, while there may be other infringers of Complainant’s trademarks,
it is not required to pursue every infringer at the same time. It is no
excuse for Respondent's infringement through the registration and use of the
disputed domain name that others may also be infringing its trademarks and
Complainant referred to several United
States court decisions that, in its opinion,
support this argument.
Nevertheless, to maintain
Complainant's exclusive use of its trademarks and to prevent other intentional
infringements, Complainant proactively searches for and pursues third party
infringers by, among other things, sending cease and desist letters to known
infringers and ultimately filing federal lawsuits for trademark infringement
and/or UDRP arbitrations such as this one.
Since January 2003, Complainant has
pursued more than 100 such infringers. In
many of these instances, Complainant has quickly obtained written agreements
from the infringers to cease all use of the infringed mark. Other
infringers have orally agreed to cease use and Complainant has confirmed
through follow-up actions that such use did cease. Still others have agreed to permanent injunctive
relief. Each of these infringers knew, like consumers
and potential consumers of Complainant's services, that Complainant has the
exclusive right to use its trademarks.
With such knowledge, they had no choice but to capitulate and cease using the mark.
Occasionally, an infringer will not
respond or otherwise initially refuse to comply with Complainant's demands. In these
instances, Complainant has pursued federal lawsuits or filed UDRP complaints
and it referred to the case of
HomeVestors of America, Inc. v. Mizan, Inc.
c/o Alex Mizan, FA 328455 (Nat. Arb. Forum Nov. 1, 2004), in which the
domain name <webuyuglyhouses.net> was transferred to Complainant. Complainant contends that, to date, it has
never lost a decision nor obtained less than the agreement of the infringer to
cease using its trademarks and any mark that is confusingly similar thereto.
No Rights or Legitimate Interest.
Contrary
to Respondent's suggestions, Complainant contends that it has made a prima facie showing that Respondent does
not have any rights or legitimate interests in the disputed domain name and
that in its Complaint it proved that.
No bona fide offering of goods
or services
Complainant
contends that in its Complaint it clearly proved that Respondent has not been using the Infringing
Domain in connection with a "bona
fide" offering of goods or services, as that term is commonly known. In this
context, it referred to two NAF cases:
Computerized Security Systems,, Inc. v. Benny
Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), in which it was held that the
respondent's appropriation of the complainant's mark to market products that
compete with the complainant's goods did not constitute a bona fide offering of goods and services; and Clear Channel Communications, Inc.
v. Beaty Enters., FA 135008 (Nat. Arb. Forum January 2, 2003),
which held that the respondent had no rights or legitimate interests in a
domain name that utilized the complainant's mark for its competing website.
Respondent
does not and cannot dispute that he is a direct competitor of Complainant. As
reflected on his website, Respondent states that:
We are real estate investors in the South Florida market (Dade, Broward,
and Palm Beach). We
wholesale residential real estate single family homes. That mean (sic) we buy them cheap and sell
them cheap so that you can make money after fixing them…
Respondent
is a direct competitor of Complainant in the South Florida market for the sale
of residential real estate, as Complainant has seventeen franchisees in the
South Florida market, including eight in Miami-Dade
County, four in Broward
County, and five in Palm Beach County.
Further, Complainant puts some
emphasis on the argument that nowhere on the website at the disputed domain
name does Respondent identify himself or otherwise provide any information on
who Respondent is. Instead,
Respondent misleadingly uses only the term "we," and not
"I," when describing himself. When coupled with the confusingly similar
domain name, Respondent's intentional failure to provide any identifying
information about himself and his intentional misuse of the term "we"
when he is a single individual clearly reflects Respondent's intent to
appropriate Complainant’s trademarks ("WE BUY UGLY HOUSES")
for the purpose of confusing consumers and potential consumers as to the
sponsorship or affiliation of Respondent's website by Complainant. This type
of use is not and does not constitute a legitimate right or interest in the disputed
domain name.
Additionally,
Complainant contends that infringement can be based upon confusion that creates
initial customer interest, even though no actual sale is completed as a result
of the confusion and that the Courts recognize this.
In
this case, the fact that the dominant and distinctive components of the
disputed domain name are substantially identical to Complainant’s trademarks
and its domain names and the fact that the remaining non-dominant components
clearly imply and contemplate a real estate transaction (i.e.,
transitive "buying" or "selling") is sufficient to show
that, at a minimum, the disputed domain name is sufficiently confusingly
similar that it will likely to lead to initial interest confusion.
Furthermore, because Respondent does not identify himself or his company
on his website and instead uses the term "we" when he is a single
individual, Complainant further submits that there is a likelihood of actual
confusion by consumers and potential consumers that reach his website, as
Respondent's website gives no indication of, nor any ability to ascertain, that
neither Respondent nor his services are sponsored by or affiliated with
Complainant.
Complainant
accordingly maintains that it is clear both that (i) Respondent has not used
the disputed domain name in connection with a bona fide offering of goods or services prior to the date
Complainant notified him that it was disputing his rights in and to the
disputed domain name and (ii) that such use may only be interpreted reasonably
as being in bad faith and with an intention to deceive.
In
the remainder of the Additional Submission, Complainant merely repeated, with
the occasional embellishment, arguments already made in its Complaint which
have been set out in detail above, namely –
Respondent does not dispute that he
has never been commonly known by the disputed domain name.
Respondent does not dispute that
his use of the disputed domain name is a legitimate non-commercial use.
Respondent's use of the disputed domain
name is not a fair use.
Respondent
registered and has used the disputed domain name in bad faith.
Respondent had constructive
knowledge of Complainant’s marks before he registered the disputed domain name.
Respondent had actual knowledge of Complainant’s
marks before he registered the disputed domain name.
Respondent is using the disputed domain
name to direct consumers and potential consumers of Complainant to a directly
competitive website.
The missing and misleading information
on Respondent's website is further evidence of bad faith.
Respondent’s
Additional Submission
Respondent notes
that Complainant's original Complaint listed only ten of its registered
trademarks and two of its domain names and it argued that the disputed domain
name was confusingly similar to those marks and names.
Furthermore, Complainant alleged that
its domain names are common law trademarks.
In its Additional
Submission, Complainant lists several more domain names which it also purports
to be common law trademarks, as well as some trademark registrations and
pending trademark applications.
Respondent contends
that these new disclosures are against the ICANN Rules and the NAF’s
Supplemental Rules and that Complainant's Additional Submission should
therefore be stricken or disallowed by the Panel.
For
example –
·
Supplemental Rule 7(f) states that any
additional written statements and documents “must not amend the Complaint.” In
this context, Respondent referred to the NAF cases of Maya Tours v. Eastwind
Group, FA 358059 (Nat. Arb. Forum Dec. 27, 2004), in which the complainant's
additional submission was found to be non-compliant where the submission
amended the complainant's allegations of bad faith).
·
Rule 3(b)(viii) states
that in the Complaint "the trademark(s) or service mark(s) on which the
complaint is based” should be specified.
·
Rule 3(b)(ix)(1) requires a Complainant to
describe “the manner in which the domain name(s) is/are identical or
confusingly similar to a trademark or service mark in which the Complainant has
rights.”
·
Rule 3(b)(xiv) requires
a Complainant to certify that “the information contained in the Complaint is to
the best of Complainant's knowledge complete and accurate…”
The trademarks and
domain names newly referred to by Complainant were presumably known to and in
the possession and control of Complainant at the time the original Complaint
was filed. However, with the exception of the UG SELLS
RENTAL HOUSES registered trademark, which was referred to in Complainant's
cease and desist letter but not in its original Complaint, Respondent has never
been made aware of any of these newly listed marks or domain names.
Furthermore, since
Complainant certified in section 10 of its original Complaint that the
information contained in the Complaint is, “to the best of Homevestor's
knowledge, complete and accurate…,” Respondent contends that Complainant
clearly and egregiously failed to disclose the complete and accurate bases for
its Complaint.
There were no new
domains, issues, or other information raised in the Response that would now
require these newly listed marks to be presented, so Respondent contends that
Complainant's failure to make a proper disclosure was a blatant attempt to
strengthen its fragile position by depriving Respondent of the opportunity to
fully and completely address this matter in its Response. As such, Respondent maintains that
Complainant's Additional Submission should be stricken or disallowed by the
Panel.
Supplemental Rule 4(a).
Supplemental Rule
4(a) mandates that "the Complaint must include all elements listed in
Paragraph 3(b) of the Rules and may not exceed ten (10) pages." Complainant filed both a ten-page Complaint
and a sixteen page Additional Submission, including nearly 150 pages of
exhibits. In the Additional Submission,
Complainant attempts to advance new bases for relief, as well as theories and
arguments intended to support these bases, and Respondent believes that the
Complaint and Submission is an attempt to circumvent the intent of this
Supplementary Rule.
While the original
Complaint does not violate the mandated page limit, it is improper on other
bases, as noted above. Likewise, the Additional Submission is also
improper, as it attempts to advance arguments that should have been brought in
the Complaint. Respondent believes that
this is a violation of the spirit of the mandated ten page limit under
Supplemental Rule 4(a) and that therefore Complainant's Additional Submission
should be stricken or disallowed by the Panel.
Not Confusingly Similar
Respondent does not own any registered
marks that contain the phrase "Sell Ugly Houses" or any variation
thereof, and in fact, none of the registered marks or domain names set forth in
the original Complaint contains the word "Sell" or any variation
thereof. Respondent therefore reiterates its contention
that the disputed domain name is not identical or confusingly similar to any of
Complainant's registered trademarks.
Respondent believes that in its Complaint, Complainant has not established that
Respondent's domain name is identical or confusingly similar to any of
Complainant's registered marks or domain names.
Respondent further notes that only
one week after mailing its cease and desist letter, Complainant filed a
trademark application for one of the other trademarks newly referred to, namely
UG SELLS HOUSES TOO. This application claims a date of first use in
interstate commerce of September 26, 2006, which is well after Respondent
registered the disputed domain name.
Accordingly, this application cannot serve as support for a transfer of
Respondent’s disputed domain name. In any event, based on the differences in
sight, sound and meaning, the disputed domain name is not confusingly similar
to this alleged mark.
Respondent contends that
Complainant has not so much as suggested that secondary meaning has attached to
any of these asserted domain names or that Complainant uses any of them in a
trademark sense as is required for them to serve as trademarks. Therefore,
Complainant's "iselluglyhouses" domains are not valid trademarks and
do not provide a basis for the requested relief.
Respondent notes Complainant’s
effort to establish confusing similarity between its marks and the disputed
domain name by arguing – that it contains the "identical dominant
distinctive component 'UGLY HOUSES'" as do Complainant's marks and domain
names; that it owns a "family" of "UGLY HOUSES" marks; and
that "I SELL" in Respondent's domain name is either a prefix or
syllable or are equivalent to a prefix or syllable. To support this contention, Complainant
relies on the established doctrine that "possession of several marks with
a common suffix, prefix or syllable can give rise to a protected 'family' of
marks" where the "common element is the family 'surname.'" However, Respondent contends that this assertion
fails for several reasons. The court, in
the case referred to by Complainant outlined that the "classic
example" of a family of marks is “Eastman Kodak Company's family of KODA
marks including KODACOLOR and KODACHROME.”
That court further articulated that this
doctrine "requires a showing that the family feature or 'surname' is
distinctive enough to trigger recognition in and of itself." The
court also found that “some authorities have even stated that descriptive terms
cannot constitute the common element in a family of marks.”
Complainant has not and cannot show that
the generic/descriptive phrase "Ugly Houses" in and of itself is
distinctive enough to trigger such recognition.
Therefore, Respondent contends, Complainant has not met its burden on
this point.
"UGLY HOUSES" is
Generic or Descriptive
Respondent contends that
Complainant has tacitly admitted to the genericness of the phrase “ugly
house(s)” by stating in its Additional Submission that the term “Ugly” as used
by Complainant in the residential real estate market "is meant to have and
does have multiple meanings, none of which are considered to be the familiar
meaning of the word 'Ugly.’" Complainant
then lists several examples of these meanings. However, the numerous third party uses of
“ugly house” and the context of those uses indicates that the relevant public
understands the phrase “ugly house” to refer to houses as described in the
Additional Submission. Respondent then referred
to two United States court cases from 1999 and 1986 holding that the “test for
genericness is that the term in question must refer to the genus of specific
products or services and the relevant public must understand the term to refer
to the genus.”
Complainant further asserts that
its use of “ugly house(s)” is arbitrary because it is used in "a manner
unfamiliar and unexpected to consumers and potential consumers of residential
real estate" prior to Complainant's initial use. The term "Ugly Houses" has been
used in the real estate investment market to describe properties having
attractive investment characteristics since at least the mid 1990s by real
estate investors, such as Ron LeGrand and others. Since that time, the phrase "ugly
houses" has been widely used by real estate investors to describe properties
that are good real estate investment candidates. This use predates the claim of first use by
Complainant. Complainant did not
originate this "unfamiliar" use of the phrase "ugly houses"
as it avers and the term has become generic or descriptive and does not in and
of itself serve as a trademark for Complainant. As such, it cannot serve as the basis for a
“family of marks.”
Not suitable for Arbitration
Respondent contends that there
remain several issues in this case that require a finding of fact for proper
resolution. These issues include but are not limited to
whether:
1. The
extensive third party uses of the alleged marks render the marks generic;
2. Respondent
registered its domain name in bad faith;
3. Respondent
has a legitimate interest in its domain name;
4. Respondent
used or made demonstrable preparations to use its domain
name in connection with a bona fide offering of goods or services
prior to notice of a dispute from Complainant; and
5. Respondent
is making a legitimate fair use of its domain name.
Respondent states that although
Complainant offers several contentions in an effort to address the foregoing
fact issues, these in fact amount to mere attorney argument and are not
grounded in established fact. The above listed issues of fact "cannot
be resolved in a proceeding under the UDRP" but are more appropriately
addressed in a court proceeding as was said in the case of Verisign Inc., v. VeneSign C.A.,
WIPO Case No. D2000-0303 (WIPO June
28, 2000), which found in favour of Respondent and denied transfer where
substantive issues of fact related to likelihood of confusion where at issue).
Accordingly, Respondent contends
that this proceeding should be terminated as having been inappropriately
brought under the UDRP.
Respondent concludes
that it has fully addressed and rebutted all of the elements that must be
proven by Complainant in order to sustain a successful domain dispute and that Complainant
has offered insufficient evidence to establish any of these grounds.
FINDINGS
Complainant
has been in the business of providing real estate related services,
mortgage related services, and franchising services including real estate
acquisition, brokerage, title, and financing services in interstate commerce
since at least as early as March 1, 2000.
In doing so, it has used its unique
business identifier and trade name WE BUY UGLY HOUSES which is the subject of
several service mark registrations at the USPTO either alone or in conjunction
with other matter, as well as an International Registration which has been
extended to a number of countries in Europe and elsewhere.
Respondent has been actively
involved in the real estate business since at least as early as May 7, 2002. Its primary
business has been related to acquiring and selling undervalued real estate to
customers, including investors, in the South Florida
region. It has undertaken this activity since through
its website at the disputed domain name, which provides listings of such houses. It
maintains that ‘ugly houses’ is a phrase that is commonly used in the real
estate business and was not coined by Complainant.
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.
Preliminary Issues
The Panel believes that there are several issues that need to be aired
before moving to a full discussion of this case.
1. Additional
Grounds
In its Additional Submission,
Complainant refers to a number of trademarks and domain names that it had not
mentioned in the Complaint. Respondent argues that this is against the
Rules, and the Panel agrees.
Rule 3(b)(viii)
(the trademark(s) or service mark(s) on which the complaint is based”) and
NAF’s Supplemental Rule 7(f) (“Additional submissions must not amend the
Complaint or Response”) are quite clear on this point.
The Panel has therefore not taken into account
any of these additional trademarks or domain names.
Nor has the Panel taken exception
to the combined lengths of the Complaint, Complainant’s Additional Submission,
and the Exhibits. In the Panel’s experience the limits laid down
in the Rules are frequently broken, especially when a party is represented by a
United States
attorney.
However the Panel considers that
these transgressions do not make the whole of the Additional Submission invalid.
2. Common
Law trademarks
Complainant states on several
occasions that his domain names are also Common Law Trademarks. This is a
novel concept which the Panel cannot accept.
A Common Law Trademark is a mark that
has been used as a trademark but is not yet registered. A domain name on the other hand is the equivalent
of an address or a telephone number.
3. Both
parties have referred to United
States court decisions in support of their
assertions, but
they are reminded that this case
is to be decided according to the Policy and the Rules and that even previous
UDRP Decisions are not binding on a Panel although every Decision should,
ideally, show some consistency with other Decisions.
Identical and/or Confusingly
Similar
Not one of Complainant’s trade marks is
identical to the disputed domain name, but are they confusingly similar to it? Both marks and name contain the same phrase
‘UGLY HOUSES’ but Complainant’s marks commence with ‘WE BUY’ while Respondent’s
domain name commences with ‘I SELL.’ Complainant
argues that the verbs ‘buy’ and ‘sell’ refer to concepts that are associated in
the real estate industry, while Respondent has it that they differ orally,
visually and conceptually.
It is true that the real estate industry is concerned
with the two actions of buying and selling but this case involves two real
estate agents and in the Panel’s experience the principle business for the
majority of such agents is not with the buying of property but with the selling
of it on behalf of clients who have entrusted their property to them for that
very purpose. However Complainant describes himself as being
involved, inter alia, in the business
of real estate acquisition, and so does Respondent.
Both of them, one can presume, subsequently
sell the real estate after acquiring it, so they are both in the business of
buying and selling. However the Panel has concluded that the phrases
‘we buy’ and ‘I sell’ are different in appearance, in meaning, and in purpose
so they are not confusingly similar.
However both the disputed domain name and all
of Complainant’s trademarks and domain names also have the words ‘ugly houses’
in common. Complainant alleges that his various
trademarks and domain names constitute an ‘ugly house family’ and that there
must be confusion between this ‘family’ and the disputed domain name because it
too contains the phrase ‘ugly houses.’ Respondent
has argued that ‘ugly houses’ is a phrase that is not distinctive and which is
generic in the industry, so it is not the exclusive property of Complainant. Therefore
the ‘family’ does not exist. He also states that ‘ugly house’ is a term
that has been used in relation to real estate investment since the mid 1990’s “by
real estate investors, such as Ron Le Grand and others” – although without providing any explanation as to who ‘Ron Le
Grand’ might be.
Complainant on the other hand asserts that it
was he who first thought of the phrase ‘ugly house’ and it was he who started
using it first. He very strongly denies that it is generic.
The word ‘ugly’ is not one that any property
owner would willingly use in relation to a property which he was trying to sell
as it implies that it is unattractive, either inside or out. But
Complainant makes considerable play of the fact that because of his original
use of the term it has acquired a completely different meaning in the real
estate industry. However, a close
examination of the evidence that was filed in support of this contention does
not always bear this out. Forty-six extracts from various printed
publications were filed, but some of them are duplicates, a few of them make no
mention of “ugly houses”, and some of them use the term generically. One example
of this latter is an extract from The Dallas Morning News for February 11, 2003,
which tellingly quotes Ken D’Angelo, who is the founder of the Complainant company, as saying “No one likes to buy ugly houses.” There is no attempt here to emphasize that it
was he who invented the phrase in the first place or that he claims exclusive
rights to it. Another example of generic use, from the
Philadelphia Daily News for January 16, 2006, under the headline “He likes
‘ugly situations’” quotes Nick Cifaldi, one of Complainant’s franchisees as
saying: “It’s not like I’m just buying ugly, dumpy houses …… It’s just the
situations that are ugly.” He also
claims not to like Complainant’s ads and has deleted the word ‘ugly’ from his
business card.
The Panel has concluded from this evidence,
as well as from the 14 examples filed by Respondent illustrating the generic
usage of the term ‘ugly houses by third parties – including 2 by Complainant
himself – that Complainant’s rights lie in the phrase “we buy ugly houses”
rather than in “ugly houses” as such.
This is what has been registered as a
trademark and this is what Complainant has apparently spent millions of dollars
in promoting. Several of Complainant’s 46 exhibits refer to
the fact that Complainant “is best known by its ubiquitous yellow ‘We Buy Ugly
House’ billboards.” Complainant may indeed have been the first
to describe an unwanted and unloved property as an ugly house, but it is
doubtful if he would ever have been able to register this term by itself as a
trademark, which is perhaps why he coined, uses, and registered WE BUY UGLY
HOUSES instead. This is still somewhat descriptive so it is
not a very strong mark, and the trouble with weak descriptive trademarks is
that they are difficult to police. So, despite Complainant’s apparent record of
successful actions against third party infringers of its trademarks, it would
appear from the evidence either that there is much more work to be done
in this regard, or that Respondent’s claim for the genericness of the
phrase ‘ugly houses’ is correct. The evidence for ‘ugly houses’ being used in a
generic way is not a single isolated instance and comes from both parties.
This is, of course, an issue which could, as
Respondent suggests, be more appropriately decided in court proceedings but the
Panel, on the evidence before it, has concluded that ‘ugly houses’ is not the
sole property of Complainant, as opposed to ‘we buy ugly houses.’ So, having already concluded that ‘I sell’
and ‘we buy’ are not similar, the Panel has concluded that the disputed domain
name itself is not confusingly similar to Complainant’s trademarks. Complainant
has therefore failed to prove the first sub-section of paragraph 4(a) of the
Policy.
In support of this conclusion, the Panel
refers to the case of Tire Discounters, Inc.
v. TireDiscounter.com, FA 679485 (Nat. Arb. Forum June 14,
2006), in which it was held that, “Because the mark is merely descriptive,
small differences matter. In the Internet context, consumers are aware
that domain names for different websites are often quite similar and that small
differences matter.” Also, in Webvan Group, Inc. v.
Atwood, D2000-1512 (WIPO February
20, 2001) it was held that “[W]hen a mark is a relatively weak non-distinctive
term, courts have found that the scope of protection may be limited to the
identical term and that the addition of other descriptive matter may avoid
confusion.”
Rights or Legitimate Interests
Having found that the disputed domain name is
not confusingly similar to Complainant’s trademarks, there is no need to
consider the question of rights or legitimate interest, but the Panel would
like to put on record its opinion firstly, that Complainant’s case under this
head is not a strong one, secondly that Respondent was clearly right to question
whether Complainant had in fact made out a prima
facie case, and thirdly that Respondent does appear to be operating a bona fide business (Policy ¶ 4(c)(i)).
Registration and Use in Bad Faith
Since the first two parts of paragraph 4(a) of the Policy have not been
proved, there is really no necessity for the Panel to consider the question of
bad faith. For example, it was held in Pensacola Christian Coll.
v. Gage, FA 101314 (Nat. Arb.
Forum Dec. 12, 2001) that “Because the Panel has found that Respondent has
rights and interests in respect of the domain name at issue, there is no need
to decide the issue of bad faith.” Also,
in Lee Procurement Solutions Co.
v. getLocalNews.com, Inc.,
FA 366270 (Nat. Arb. Forum Jan. 7, 2005) it was said that “Respondent's rights
and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii),
allow a finding that there was no bad faith registration or use under
Policy ¶ 4(a)(iii).”
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
David H Tatham Sole Panelist
Dated: April 2, 2007
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