HomeAway.com, Inc. v. Name
Administration Inc. (BVI)
Claim Number: FA0909001283498
PARTIES
Complainant is HomeAway.com, Inc. (“Complainant”), represented by Peter
Kennedy, of Graves, Dougherty, Hearson & Moody,
P.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <homeawayfromhome.com>, registered
with Iregistry
Corp.
PANEL
The undersigned certifies that he and the other panelists have acted
independently and impartially and to the best of their knowledge have no known
conflict in serving as Panelists in this proceeding.
Hon. Louis E. Condon
G. Gervaise Davis III
Daniel B. Banks, Jr., as Panelists
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
A timely Response was received and determined to be complete on
On
A timely additional submission was submitted by Respondent and was
considered.
On October 16, 2009, pursuant to Respondent’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Hon. Louis E. Condon, G. Gervaise Davis III and
Daniel B. Banks, Jr., as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant owns federal trademark registrations for the HOME AWAY FROM
HOME mark.
HOME AWAY FROM HOME has become distinctive of the services of
Complainant through substantial and exclusive use of that name in commerce for
almost 50 years. The website is
extremely popular and well-known. For
almost 19 years, Complainant and its legal predecessor have used the trademark HOME
AWAY FROM HOME to identify its website and rental services. It has become a famous trademark in common
law and carries valuable good will, high consumer recognition, distinctiveness
and secondary meaning.
Respondent registered the disputed domain name on or about October 5,
1999 and operates a website at that address.
The disputed domain name is identical and/or confusingly similar to
Complainant’s registered trademark.
Respondent is using the mark on its website in connection with its
services. Such use is causing consumer
confusion to the severe detriment of the Complainant.
The Respondent registered the disputed domain name without the
permission of Complainant. It came more
than 35 years after Complainant began using the mark and more than 15 years
after the USPTO issued a federal registration for the mark. These facts show that Respondent has no
rights or legitimate interests in the disputed domain name.
The domain name was registered and is being used in bad faith. By using the domain name, Respondent has
intentionally attempted to attract, for commercial gain, Internet users to
Respondent’s website by creating a likelihood of confusion with the
Complainant’s mark. From the context of
the site, it is clear that Respondent is deriving, or attempting to derive,
revenue from the operation of the site.
This demonstrates bad faith.
Respondent uses the site to redirect users to Respondent’s commercial
website featuring links to competing services.
This constitutes disruption of a competitor and shows bad faith
registration and use.
Respondent has failed to respond to three cease and desist letters from
Complainant and has continued to use the domain name in bad faith.
B. Respondent
This dispute raises a question as to
whether a recent naked purchase of a relatively narrow US Trademark
Registration, absent supporting evidence of underlying use by the Complainant
or the Assignor, is a sufficient basis for asserting a monopoly in a common
expression used in connection with the subject matter to which its primary
non-trademark meaning pertains.
The first criterion required to be proven
by the Complainant is that the domain name
is identical or confusingly similar to a
trade or service mark in which the Complainant has rights. In support of this element, the Complainant
has produced US TM Reg. No. 1,152,761, for “HOME AWAY FROM HOME” in connection
with the service of “Rental of Temporary and Permanent Living Quarters to
Others”. The Complainant mischaracterizes the services for which the
registration was issued by including “hotel services” at page three of the
Complaint, and as “vacation rental properties” at page four of the
Complaint. Neither of these things are
recited in the registration document which the Complainant purchased in 2007,
some eight years after the domain name was created, and several years after the
domain name was acquired by the Respondent.
Complainant provides no evidence of any use
of the disputed term as a trade or service mark and no evidence of such use by
the party which sold the registrations to Complainant. Complainant’s Exhibit 4, which the
Complainant shows as its website confirms the absence of any use of the term
“HOME AWAY FROM HOME”. A mark ceases to
be enforceable against others when it loses its significance as an indication
of the origin of goods sold by and associated with the mark owner.
The Complainant has shown an “assignment”
of the federal registration but has made no showing of how it claims to use the
mark or how it was used by the “assignee”.
The mere purchase of a trademark registration without continuity of use
does not confer an enforceable trade or service mark right.
The disputed domain was originally
registered in 1999. It was purchased for
$1,400 by Respondent in 2005 at a public auction held after the lapse of registration. This was before Complainant acquired its
homeaway.com domain name and long before the recent purchase of the trademark
registration. WHOIS shows the disputed
domain name had previously been registered by a “Home Away From Home Rental
Properties” of
The second criterion required to be proven
by the Complainant is that the Respondent
lacks legitimate rights or interests in the
domain name. This criterion is not limited to trade or service mark rights, but
includes equitable interests such as expectation and reliance interests
implicated by the use of the domain name prior to notice of a dispute in
connection with a bona fide offering of goods and services. The Policy
expressly states that bona
fide use of the domain name prior to
notification of a dispute constitutes a legitimate interest.
The Respondent is charted in the
The common term “home away from home” is a
casual reference to vacation locations as opposed to residential
locations. Complainant does not use the
term as a mark or otherwise in connection with hotel or resort rentals but many
other parties do. Exhibit C is a list of 9 such uses and Respondent can provide
hundreds more.
The term at issue is a common phrase and
the Complainant does not own a monopoly in the term. There is a question of the scope of
Complainant’s rights, if any, afforded by the Complainant’s purchased
registration. Exhibit E shows 5 U.S.
Trademark Registrations incorporating the phrase demonstrating that the
Complainant’s rights, if any, must be narrowly construed. Use of a common phrase or term in connection
with relevant search results is a legitimate activity. Use of domain name
constituting a common phrase in association with the information denominated or
suggested by the domain name is not an illegitimate use. Respondent was using the domain name prior to
any time at which the Complainant has shown itself to be engaged in the
provision of goods or services whatsoever in the mark.
Complainant has failed to demonstrate
Respondent’s use of the domain name prior to notice of a dispute has been
illegitimate. Respondent acquired the disputed
domain name prior to Complainant’s acquisition of its domain name.
The final criteria required to be proven by
the Complainant is that the domain name
was (a) registered in bad faith, and (b)
used in bad faith by the Respondent. The
bad faith element is directed to an inquiry into why the Respondent registered
this domain name. Did the Respondent register the domain name with an intent to
target or usurp the goodwill of the Complainant, or was the Respondent
motivated by an independent intent, unrelated to the Complainant.
The Complaint demonstrates no evidence of
use of the term as a mark by the Complainant or its predecessor prior to
registration of the domain name by the Respondent. In fact, the Complainant has used robots.txt
to block access to the history of the Complainant’s website. Attached as Exhibit F is a printout of an
attempt using the Internet Archive to determine what, if anything, was being
done at the Complainant’s claimed website in late 2005, when the domain name
was registered by the Respondent. Access to the entire history of the
Complainant’s site is deliberately blocked by the Complainant.
The Archive results for the disputed domain
name, as of October 2005, just prior to registration by the Respondent, (also Exhibit F) shows the page to be a Network Solutions “expired domain page” including
advertisements for vacation rentals (as indeed the domain name has been used
for much of its history dating back to 1999 when it was created). This blocking is relevant because “bad
faith” on the part of the domain registrant is to be assessed at the time of
registration. It cannot be determined
what Complainant was doing in October 2005 when the disputed domain name
expired.
The remainder of the Complainant’s argument
under “bad faith” amounts to pique at not
having
received responsive communications from the Respondent. Respondent is under no obligation to reply to
any communications from Complainant.
Complainant has not established facts which
the Respondent knew or should have known at the time the domain name was
registered which evince a bad faith intent in the registration and use of the
disputed domain name. The asserted
does not provide booking, leasing, or
rental services of any kind, and generally advertises
subject matter with which the phrase, apart
from any of numerous marks registered to various entities, has long been
associated. The Complainant’s acquisition of a naked assignment in 2007 for a
fortuitous term which the Complainant itself uses generically and not as a
mark, does not alter the salient knowable facts in November 2005. The mere
existence of any of several registered marks does not establish that such marks
where in use or used in connection with relevant goods or services at the
pertinent time to this dispute.
C. Additional Submissions
Complainant:
Complainant submitted an additional submission which was deemed by the
Forum to have been received in a timely manner.
In its additional submission, Complainant restates many contentions set
out in the original complaint.
In addition to those contentions previously set out, Complainant
asserts that Respondent, in its Response, does not dispute that the domain name
is identical or confusingly similar to Complainant’s registered trademark; that
Complainant is the owner of the mark; or that Respondent’s use of the domain
name is to advertise vacation lodgings which competes against Complainant’s
business.
While Respondent acknowledges that the UDRP is not a forum for
determining the validity of a federally registered mark, Respondent indirectly
attacks the mark’s validity by arguing that Complainant acquired the mark by
“naked assignment” without the goodwill associated with the mark. Respondent also alleges that Complainant does
not use the mark.
With regard to use of the mark, Complainant submits several examples of
use including:
1 - a current printout of usatoday.homeaway.com, part of the
homeaway.com site which prominently features the mark with the ® symbol.
2 – a French website showing Complainant’s licensee’s use of the mark.
3 – trademark registration in multiple countries including the U.S, the
European Union,
Complainant’s predecessor, Lexington Licensing, Ltd and its
predecessors have been using the mark since 1961. In May of 1986,
Respondent has no rights or legitimate interests in the disputed domain
name. It was registered more than 24
years after the mark’s registration was approved and more than 18 years after
the mark became incontestable.
Respondent’s argument that it has legitimate interests as a domain to
advertise resorts because other entities use the term “home away from home” is
without merit. First, Respondent is not
using the domain to sell or promote any of its goods and services. It is simply parking the domain name and
hosting advertisements related to other travel sites that compete with Complainant.
The header of the site (“homeawayfromhome.com: The Leading Home Away From Home
Site on the Net”) plainly demonstrates the site’s purpose is to capture search
traffic for “HOME AWAY FROM HOME,” rather than to serve a legitimate
purpose. It also serves to demonstrate
that Respondent is using “HOME AWAY FROM HOME” as a trademark.
Second, Respondent lists other trademark registrations for HOME AWAY
FROM HOME or similar marks. Each of
those listings are for a completely different type of use than “rental of
temporary and permanent living quarters to others.” They are unrelated to Complainant’s travel
lodging services.
Third, the descriptive uses by other entities are immaterial. They are not trademark usages, unlike
Complainant’s and Respondent’s use. None
of the descriptive uses are domain name registrations, let alone brands. Respondent is using the mark as a trademark
in competition against Complainant.
With respect to Respondent’s argument that it did not register the
domain name in bad faith, the preponderance of the evidence shows
otherwise. We have 1) Respondent’s use
of an incontestable registered trademark; 2) Respondent’s domain name registration
occurring after years of continuous public use by the trademark owner; 3)
Respondent’s domain name resolving to a website with links to third-parties
offering vacations rental services similar to Complainant; and 4) false claims
on the website stating that the site is the “leading travel accommodations
site.”
Respondent:
Respondent labels his additional submission as a “Response to
Unauthorized Submission.” It is his
position that the Complainant’s additional submission was not timely filed
within 5 days of the date the Response was received by the Forum.
In response to the Additional Submission of Complainant, Respondent
restates that he found no use of “HOME AWAY FROM HOME” as a mark by the
Complainant. Now Complainant claims to
have been using the mark on a web page disconnected from its site, apparently
as a referral page from the site of
First, the logo is inconsistent with the mark used by Complainant’s
predecessor-in-interest. It is, in fact,
the subject mark of Complainant’s U.S. Registration No. 3,596,175 issued in
March 2009, long after Respondent registered and begun using the domain name at
issue. In contrast, the demonstrated use
of the claimed predecessor-of-interest appears to have been to place the phrase
“Home Away From Home” in temporary lettering on a sign outside a motel to
engage in the common practice of a number of hotel chains to use the term as a
noun phrase. It appears the
predecessor-in-interest was operating facilities which offered long and short
term residence facilities while the Complainant appears to be primarily a booking
agent for properties owned by others for short resort visits.
None of the Complainant’s assertions alters the fact that “Home Away
From Home” is an exceedingly common phrase.
The Complainant attempts to cast Respondent’s position as an
“invalidity” argument. It is true that
it is possible to obtain limited rights in trademark registration of what are
otherwise common words and phrases, however, the Policy is composed of more
than the first element and not all trademarks are of equal scope of strength.
Complainant correctly observes that some of the links which are
associated with the domain name are unrelated to the travel lodge services for
which Complainant’s mark is registered.
First, the type of residential services epitomized by the temporary
signage submitted to the USPTO in connection with the “specimen of use”
submitted by the “Lexington Motor Lodge and Apts” is well known to anyone
familiar with the fate of pre-war motor lodges that litter U.S. highway
corridors supplanted by the Interstate Highway System in the 1950’s. As travel lodging business was lost, such
establishments adapted to a particular market of residential customers of low
cost rentals.
Second, Complainant is absolutely correct that several of the link
categories have nothing to do with travel lodging services. Automated software which matches categories
to domain names has apparently determined that the common phrase “home away
from home” is frequently associated with vacation properties and has moreover
divided the term into individual words and associated the domain name with a
variety of “home” products. That is
precisely what such relevance matching software does, and it demonstrates both
the commonality of the phrase and that it is not uniquely or distinctively associated
with the Complainant. Hyatt operates a
“Home Away From Home” program which Complainant attempts to characterize as
“not a trademark use” while attempting to characterize, as a trademark injury,
the mere association of a common phrase with the category of things to which it
is normally and widely associated in the minds of customers.
Were the Respondent engaged in a clear effort to pass off as the
Complainant, or engaged in the provision of services denominated as “Home Away
From Home”, the situation would be different.
But, the Policy consists of three elements for a reason. One of those reasons is to address situations
where a claimant may be able to demonstrate ownership of a trade or service
mark and similarity of a domain name but other considerations bear on the
relative strength and scope of the mark in question and the nature of use to
which the domain name is being put.
The Policy requires more than similarity or identity between a domain
name and some kind of asserted trademark claim.
Legitimate questions are raised concerning the continuity of use of a
purchased trademark registration, the scope and strength of the asserted mark
versus its status as a common phrase, and the Complainant’s more recent actions
which indicate something other than a reliance on the trademark registration in
connection with the branding of its resort rental booking services.
FINDINGS
The panel finds that, although the disputed
domain name is identical to Complainant’s registered trademark, the Respondent
has rights and/or legitimate interests in respect of the domain name. Having found Respondent has rights and/or
legitimate interests in the name the panel finds no bad faith registration and
use.
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.
The Panel finds that registration
of the HOME AWAY FROM HOME mark with the USPTO is sufficient to convey rights
in the mark pursuant to Policy ¶ 4(a)(i).
The disputed domain name removes
the spaces between the words of the mark and adds the generic top-level domain
(“gTLD”) “.com.” In its additional
submission, Complainant notes that Respondent does not contest that
Complainant’s mark and the disputed domain name are identical. The Panel finds that the <homeawayfromhome.com> domain name is identical to Complainant’s HOME
AWAY FROM HOME mark pursuant to Policy ¶ 4(a)(i). See
Respondent has been using the
disputed domain name in connection with a bona fide offering of services since it
acquired the <homeawayfromhome.com> domain name in a domain name auction in
2005. Respondent holds a large number of
domain name registrations for the purpose of generating advertising and
pay-per-click revenue. The Panel finds
that this is bona fide offering of
services under Policy ¶ 4(c)(i). See McMullen Argus Publ’g
Inc. v. Moniker Privacy Servs., D2007-0676
(WIPO
The
Panel also finds that the terms of the <homeawayfromhome.com> domain name are generic and of common use and therefore, Complainant does not have
an exclusive monopoly on the terms on the Internet. The Panel finds that Respondent can establish
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207
(Nat. Arb. Forum
The Panel concludes that Respondent
has rights or legitimate interests in the <homeawayfromhome.com> domain name pursuant to Policy ¶
4(a)(ii), and therefore finds that Respondent did not register or use the
disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO
DECISION
Having established that Complainant only met the requirements of proof
of the first element of the UDRP, and that Respondent has established defenses
to the other two elements, the Panel concludes that relief shall be DENIED.
Daniel B. Banks, Jr., Panel Chair
Honorable Louis E. Condon, Panelist
G. Gervaise Davis III, Panelist
Dated: October 28, 2009
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