DECISION

 

Wilshire Homes, Ltd. and The Fortress Group, Inc. v. Nawel Seth d/b/a Domsellers.com

Claim Number: FA0108000099088

 

PARTIES

The Complainants are Wilshire Homes, Ltd. and The Fortress Group, Inc., Austin, TX (“Complainants”) represented by Kevin J. Heinl and Anessa Owen Kramer, of Brooks & Kushman P.C.  The Respondent is Nawel Seth Domsellers.com, Concord, ON, CA (“Respondent”) represented by David Harvey, of Goodman and Carr LLP.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <wilshirehomes.com>, registered with Enom, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

 

Judge Nelson A. Diaz (Retired) as Panelist.

 

PROCEDURAL HISTORY

Complainants submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on August 17, 2001; the Forum received a hard copy of the Complaint on August 20, 2001.

 

On August 21, 2001, Enom, Inc. confirmed by e-mail to the Forum that the domain name <wilshirehomes.com> is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, 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 August 23, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 12, 2001 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@wilshirehomes.com by e-mail.

 

A timely response was received and determined to be complete on September 10, 2001.

 

The Forum received a timely and complete Additional Submission from Complainant on September 14, 2001.

 

On September 27, 2001, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the Forum appointed Judge Nelson A. Diaz (Retired) as Panelist.

 

RELIEF SOUGHT

The Complainants request that the domain name be transferred from Respondent to Complainants.

 

PARTIES’ CONTENTIONS

A. Complainants

(1)  Complainants contend that Respondent’s domain name <wilshirehomes.com> fully incorporates Complainants’ mark into the domain name and is diverting customers from Complainants’ domain <wilshire-homes.com>.

(2)  Complainants contend that Respondent has no rights or legitimate interest in the disputed domain name. 

(3)  Complainants contend that Respondent registered and is using the domain name in bad faith.

 

B. Respondent

(1)  Respondent acknowledges that the domain name is similar to Complainant’s mark.

(2)  Respondent denies Complainant’s assertion that it has no rights or legitimate interest in the disputed domain name.

(3)  Respondent denies that it has acted in bad faith in registering and using the domain name.

 

FINDINGS

The Panel finds that: (a) <wilshirehomes.com> is identical or confusingly similar to Complainants’ common law service mark; (b) Respondent has a legitimate interest in the domain name; and (c) Respondent did not register the domain name and is not using it in bad faith.  For the reasons explained below, the Panel orders that the domain name NOT be transferred to Complainants.

 

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.

 

Identical and/or Confusingly Similar

Under paragraph 4(a) of the Policy, it is clear that the domain name registered by Respondent, <wilshirehomes.com>, is nearly identical, if not identical, to Complainants’ mark WILSHIRE HOMES, both phonetically and in appearance and spelling and is therefore confusingly similar.  The Panel notes that the lack of a space between the word “wilshire” and the word “homes” is insignificant in determining confusing similarity.  While additional factors beyond appearance, spelling and pronunciation are ordinarily considered in determining likelihood of confusion between trademarks, such as the goods or services with which the marks are used, the consumers involved, and the trade channels involved, it is clear that <wilshirehomes.com> is confusingly similar to Complainants’ mark under the Policy.  The Panel concludes that Complainant has met its burden of proof on the first prong and that the domain name is confusingly similar to Complainants’ service mark.  The fact that both Complainants and Respondent conduct business in the real estate and/or home development field further buttresses the finding of confusing similarity.

 

Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, evidence of a registrant’s rights or legitimate interest in the domain name includes:

 

(1) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;

(2) An indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or

(3) Legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.

 

In support of its claim that Respondent has no legitimate interest in <wilshirehomes.com>, Complainants assert that “it [wilshirehomes.com] is a site used to divert traffic from ‘real estate domains’ to the <theseths.com> website.”   Complainants assert in their Additional Response that “Respondent’s claim that he lives in a neighborhood in the City of Vaughn known as ‘Wilshire/Westmount’ does not support his claim of legitimate interest in the phrase ‘Wilshire Homes.’”  Finally, Complainants note that if Respondent was genuinely “interested in generating real estate interest” in various neighborhoods, Respondent would have also registered a domain name incorporating “Westmount” into the domain. 

 

Respondent avers that it has made a legitimate use of the disputed domain name, i.e., that it registered the domain name “in connection with the bona fide offering of real estate services” in the geographic area known as Wilshire/Westmount in the City of Vaughn.  Respondent further asserts that the Wilshire/Westmount is sometimes referred to as “Wilshire,” and that the “west side [of] the area [Wilshire/Westmount] is known as Wilshire Homes, [and] on the east side it is known as Westmount Homes.”  Further, in response to Complainants’ assertion that Respondent only registered the domain <wilshirehomes.com> and not <westmounthomes.com>, Respondent includes evidence demonstrating that Respondent also registered <wilshirewestmounthomes.com> on December 14, 2000, the same day as the domain name in dispute was registered.  Finally, as Exhibit 7 to Respondent’s Response, a photograph of an elementary school in the “Wilshire/Westmount” neighborhood of a school named “Wilshire Elementary School” is included in an attempt to demonstrate that the neighborhood is sometimes referred to as “Wilshire.”

 

Based on the evidence, under paragraph 4(c)(i) of the Policy, the Panel finds that Respondent demonstrated preparations to use the domain name in connection with a bona fide offering of services prior to the dispute.  The Panel finds that Respondent’s use of <wilshirehomes.com> for real estate services in the Wilshire/Westmount neighborhood is persuasive.  The Panel has no reason to doubt the verity of Respondent’s assertion that the Wilshire/Westmount neighborhood is sometimes referred to as “Wilshire” and of the evidence attached to the Response that a nearby school is the “Wilshire Elementary School.”  Moreover, prior to the existence of this Complaint, and on the same day as the domain in dispute was registered, Respondent also registered the <wilshirewestmounthomes.com> domain.  Finally, Complainant has provided no evidence that the Wilshire/Westmount area in the City of Vaughn is not sometimes referred to as Wilshire.  Complainant has thus failed to meet its burden of proof with regard to the second prong under paragraph 4(c) of the Policy.

 

Registration and Use in Bad Faith

Under paragraph 4(b) of the Policy, evidence of Respondent’s bad faith registration and use includes:

 

(1) Circumstances indicating the domain name was registered for the purpose of resale to the trademark owner or competitor for profit;

(2) A pattern of conduct showing an attempt to prevent others from obtaining a domain name corresponding to their trademarks;

(3) Registration of the domain name for the purpose of disrupting the business of competitor; or

(4) Using the domain name to attract, for commercial gain, Internet users to Respondent’s web site by creating a likelihood of confusion with the trademark owner’s mark.

 

Complainants submit that, under (1) above, Respondent has registered and used <wilshirehomes.com> in bad faith as evidenced by Respondent’s purported offer to sell the domain name to Complainants for “valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the Domain Name.”    Complainants also submit that, under (3) above, Respondent’s diversion of customers from Complainants’ <wilshire-homes.com> domain name is conducted with the “primary purpose and effect of disrupting Complainants’ business.”  Complainants further submit that, under (4) above, Respondent uses the <wilshirehomes.com> domain name to attract Internet users “by taking advantage of users who mistakenly omit the hyphen from Complainants’ <wilshire-homes.com> domain[.]”  Finally, in Complainants’ Additional Response, Complainants’ assert that, apparently under (2) above,  “the fact that the Domain Name was registered under the name ‘Domsellers.com’ and that numerous other real estate-related domains were registered evidences Respondent’s true motivation for registering the [name,] to resell it to the highest bidder.  Complainant’s argument focuses squarely on copies of electronic mail correspondence between Complainants and Respondent and of Respondent’s registering numerous real estate related domain names.  Ultimately, the Panel is not persuaded by the evidence submitted by Complainant.

 

Complainants demonstrate in the electronic-mails attached as Exhibits 11 and 12 that Respondent did not initially name an amount for which the domain would be sold, and that Respondent states both “[w]e are an internet based company trading and leasing domain names” and “[y]our initial offer was way too low and I do not think we will have meeting of minds on the price.”  In Exhibit 14, Respondent offers to sell the domain for $39,000.  Considered in a vacuum, the electronic mail attached as exhibits may lead to a conclusion of bad faith on Respondent’s part.  However, taken in context of Respondent’s legitimate real estate business in the Wilshire/Westmount neighborhood, and as stated by Respondent in the April 3, 2001 electronic mail reply to Complainants, “[t]his domain is a cash cow for our business.  As I mentioned to you earlier, we have over 100 Real Estate domains directing traffic to our site[.]”  (Electronic mail attached as Exhibit 13 to Complainants’ Complaint).  Respondent asserts in his Additional Response that among the numerous domain names directing traffic to the <theseths.com> domain are numerous domains that include neighborhood names from the City of Vaughn and/or Toronto geographic areas.  In the final analysis, given the evidence surrounding the purported offer to sell <wilshirehomes.com>, the Panel is unable to find bad faith in either registration or use.  The Panel has no basis to doubt Respondent’s assertions and evidence that <wilshirehomes.com> was registered for the purpose of legitimate real estate services and that the offer to sell the domain for $39,000 accurately reflects the fact that the domain name directs significant, legitimate business to Respondent’s website. 

 

The Panel hereby finds that Complainants have not met their burden of showing that Respondent has registered and used the domain name in bad faith.

 

DECISION

The Panel concludes: (a) that the domain name <wilshirehomes.com> is nearly identical to and confusingly similar to Complainants’ common law service marks; (b) that Respondent has a legitimate interest in the domain name; and (c) that Respondent has not registered and used the domain name in bad faith.  Therefore, pursuant to the Policy and the Rules, the Panel orders that the domain name <wilshirehomes.com> NOT be transferred to the Complainants, thereby remaining under the registration of Respondent.

 

 

Nelson A. Diaz, Panelist

 

Dated: October 9, 2001