HomeVestors of America, Inc. v. Howard Jung
Claim Number: FA1304001493476
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Remy M. Davis of Klemchuk Kubasta LLP, Texas, USA. Respondent is Howard Jung (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue are <webuyuglyhousestampa.com>, registered with GoDaddy.com, LLC.
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 5, 2013; the National Arbitration Forum received payment on April 8, 2013.
On April 8, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <webuyuglyhousestampa.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 8, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@webuyuglyhousestampa.com. Also on April 8, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David A. Einhorn as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant founded its business in 1989, and is known as WE BUY UGLY HOUSES. Complainant began franchising its business in 1996 and to date has bought over 45,000 houses and has established about 200 franchisees in 33 states. Complainant’s franchisees purchase hard-to-sell homes, rehabilitate them, then sell or lease the home, which helps improve neighborhood aesthetics and allows first-time homebuyers the opportunity to buy their first home. Complainant offers low-cost franchising opportunities to potential franchise investors that are looking to enter into the business. Complainant has established itself as a growing company with an increasing marketing presence. Complainant’s business was ranked on Entrepreneur magazine’s “Franchise 500” companies for five years, and its “Fastest-Growing Franchises” for four years. Complainant owns rights in the WE BUY UGLY HOUSES marks, through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,099,814 registered June 6, 2006). Complainant has used its mark since March 1, 2000, and has built brand name recognition in its marks by spending significant amounts of resources to develop the brand and to maintain goodwill in the marks. Complainant has spent over $100 million on advertising in the past decade and its mark is easily recognizable to the public. Complainant owns the domain name <webuyuglyhouses.com>, which it registered on June 5, 2000, and which it uses to host a website about its services.
Respondent registered the <webuyuglyhousestampa.com> domain name on June 15, 2011. Respondent has not now, nor has it ever been commonly known by the disputed domain name. The domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services. Respondent posts links at the resolving website to third-party competitor sites, in an opportunistic attempt to attract consumers by creating a likelihood of confusion. Respondent makes a commercial gain from the click-through fees generated as a result of the posted hyperlinks. Respondent’s registration and use of the <webuyuglyhousestampa.com> domain name is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims that it has rights in the WE BUY UGLY HOUSES mark via its USPTO registration (e.g., Reg. No. 3,099,814 registered June 6, 2006). Complainant’s trademark registration with the USPTO serves to demonstrate Complainant’s rights in its WE BUY UGLY HOUSES mark pursuant to Policy ¶ 4(a)(i). Additionally, previous panels have determined that a Complainant is not required to register its mark in the same country where Respondent resides. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Thus, Complainant’s rights in the WE BUY UGLY HOUSES mark is established for the purposes of Policy ¶ 4(a)(i).
Complainant claims that the <webuyuglyhousestampa.com> domain name is confusingly similar to Complainant’s WE BUY UGLY HOUSES mark, because the domain name includes only the geographic term “tampa” at the end of the mark. The Panel determines that by merely including a geographic word while eliminating the spaces between words in Complainant’s mark, the <webuyuglyhousestampa.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). SeeTrip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent has not been authorized to use the WE BUY UGLY HOUSES mark, and states that the WHOIS information for the <webuyuglyhousestampa.com> domain name identifies “Howard Jung” as the domain name’s registrant. The panel in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), held that the respondent was not known by the disputed domain name, as no evidence on record, including in the WHOIS information, suggested that the respondent was commonly known by the disputed domain name. This Panel likewise concludes that Respondent does not possess rights or legitimate interests in the <webuyuglyhousestampa.com> domain name, because Respondent does not have permission from Complainant to use the mark, and the WHOIS information does not demonstrate that Respondent is commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent has not and does not use the disputed domain name in connection with a bona fide offering of goods or services, as Respondent uses the <webuyuglyhousestampa.com> domain name to operate a website whereupon hyperlinks are displayed, which resolve to websites belonging to competitors in Complainant’s field of business. Complainant contends that Respondent’s attempt to divert Internet users to its website does not support a finding that Respondent has rights or legitimate interests in the disputed domain name. The Panel finds that hosting a website that contains hyperlinks to websites operated by Complainant’s competitors does not demonstrate a bona fide operation of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent attempts to take advantage of the goodwill built into the mark in order to keep Complainant from making use of its own trademark as part of a domain name, which disrupts Complainant’s business. Complainant contends that Respondent posts hyperlinks to competing businesses at the resolving website. The Panel determines that Respondent’s use of the <webuyuglyhousestampa.com> domain name is disruptive and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent registered the confusingly similar domain name in bad faith, as Respondent operates a website at the disputed domain name that hosts hyperlinks that Respondent intends to profit from via “click-through” fees based on visitors that land on the webpage. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel stated that the respondent’s use of the disputed domain name was evidence of bad faith because the domain name provided links to the complainant’s competitors and the respondent was presumed to commercially benefit by receiving click-through fees. This Panel similarly finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark, in an attempt to attract Internet consumers to its website in order to display hyperlinks that generate income, is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
Complainant further alleges that Complainant’s trademark registration and well-established trademark rights in the WE BUY UGLY HOUSES mark bestows upon Respondent actual knowledge of Complainant’s rights in the mark, demonstrating bad faith registration. The Panel finds that Respondent’s incorporation of the entirety of Complainant’s well-established mark into its domain name demonstrates Respondent’s actual knowledge of the mark, and supports a finding of bad faith registration under Policy ¶ 4(a)(iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <webuyuglyhousestampa.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: May 20, 2013
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