HomeVestors of America, Inc. v. Realty Franchise Systems, Inc / John Balossi
Claim Number: FA1605001675692
Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Aaron D. Davidson of Klemchuk Kubasta LLP, Texas, USA. Respondent is Realty Franchise Systems, Inc / John Balossi (“Respondent”), represented by Alejandro J. Cacho, Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <compramoscasasfeas.com> and <compramoscasasfeaspr.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 19, 2016; the Forum received payment on May 19, 2016.
On May 19, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <compramoscasasfeas.com> and <compramoscasasfeaspr.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 May 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 9, 2016 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@compramoscasasfeas.com, postmaster@compramoscasasfeaspr.com. Also on May 20, 2016, 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.
A timely Response was received and determined to be complete on June 9, 2016.
On June 15, 2016 an Additional Submission was filed by Complainant in compliance with Supplemental Rule 7.
On June 15, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, HomeVestors, is a franchisor whose over 700 franchisees in 45 states are in the business of buying and selling homes. Complainant started franchising its business in 1996. Complainant has built substantial goodwill in its name and business practices among both consumers and its franchisees.
Complainant has used the WE BUY UGLY HOUSES mark and the Spanish translation of the mark, COMPRAMOS CASAS FEAS, in connection with its business. Complainant’s rights in the WE BUY UGLY HOUSES and COMPRAMOS CASAS marks stem from registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,761,385, registered September 9, 2003; and 2,988,337, registered August 23, 2005, respectively).
Respondent’s domains <compramoscasasfeas.com> and <compramoscasasfeaspr.com> are identical and confusingly similar to the WE BUY UGLY HOUSES and COMPRAMOS CASAS FEAS marks because the domains incorporate the COMPRAMOS CASAS FEAS mark entirely or merely add the generic top-level domain (“gTLD”) “.com,” and the letters “pr.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been licensed or otherwise permitted to use Complainant’s marks or been in a business relationship with Complainant. Further, Respondent’s use of the domain to resolve to a website offering services identical to those offered by Complainant and thereby diverting customers from Complainant, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has registered and is using the disputed domain name in bad faith. Respondent has intentionally attempted to attract internet users for commercial grain by creating a website that is confusingly similar to the marks owned by Complainant. Respondent registered the domains with knowledge of Complainant’s rights in the marks.
Respondent has advertising directed at U.S. consumers through <sanantonio.buenasuerte.com>, an online business directory advertising to consumers located in San Antonio, Texas.
B. Respondent
Respondent’s domains are identical to the COMPRAMOS CASAS FEAS marks in which Respondent has rights as evidenced by registration of the mark with the Puerto Rico Trademark Office (Reg. No 61,320, registered Nov. 12, 2004).
Complainant’s mere token use of the COMPRAMOS CASAS FEAS mark is not sufficient to maintain rights in the mark.
Respondent’s use of the disputed domain names is a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domains are used in connection with Respondent’s business in real estate marketing.
Respondent has been using the disputed domains since 2003 and there has been no confusion with Complainant’s WE BUY UGLY HOUSES mark. Complainant’s registration of the COMPRAMOS CASAS FEAS mark was in 2005 with first use in commerce in 2004, whereas Respondent’s registration of the COMPRAMOS CASAS FEAS mark in Puerto Rico was in 2004 with first use in 2003. Complainant and Respondent operate their business in completely different and distinct geographic areas and thus there can be no likelihood of confusion in the minds of users.
Complainant is a holder of Federal US trademark registrations No. 2,988,337 (COMPRAMOS CASAS FEAS); No. 2,982,363 (COMPRAMOS CASAS FEAS); No. 2,999,705 (WE BUY UGLY HOUSES); No. 3,099,814 (WE BUY UGLY HOUSES.); No. 2,827,136 (WE BUY UGLY HOUSES AND MAKE THEM NICE AGAIN® & Design); and No. 2,761,385 (WE BUY UGLY HOUSES. HOMEVESTORS® & Design).
The earliest registered rights to the WE BUY UGLY HOUSES mark dates back to September 30, 2002 (the filing date of the Reg. Nos. 2,827,705 and 2,761,385).
As follows from the registrations, the date of first use of WE BUY UGLY HOUSES mark is March 1, 2000.
Complainant has also been operating the www.webuyuglyhouses.com website from the respective domain name registered on June 5, 2000.
Complainant uses the We Buy Ugly Houses Marks in advertising for Complainant’s services throughout its websites incorporating this mark.
Respondent, doing business as Realty Franchise Incorporated, was registered on August 8, 2000.
Respondent holds trademark rights for COMPRAMOS CASAS FEAS under the Puerto Rican registration no. 61320, filed on May 17, 2004, claiming first use from January 7, 2003.
Respondent is operating in the same field as Complainant and offers services identical to those of Complainant.
The disputed domain names <compramoscasasfeaspr.com> and <compramoscasasfeas.com> were registered on February 21, 2007 and February 24, 2011, respectively.
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.
Complainant’s rights in the WE BUY UGLY HOUSES and COMPRAMOS CASAS FEAS marks stem from registration of the marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,761,385, registered Sept. 9, 2003 and 2,988,337, registered Aug. 23, 2005, respectively). See Compl., at Attached Ex. A.
The Panel finds that Complainant has established standing under the Policy, since, as held by previous Panels, a complainant’s registration of a mark with the USPTO is sufficient to demonstrate rights in the registered mark. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s domains <compramoscasasfeas.com> and <compramoscasasfeaspr.com> are identical and confusingly similar to the WE BUY UGLY HOUSE and COMPRAMOS CASAS FEAS marks.
Indeed, the <compramoscasasfeas.com> is identical to the Complainant’s COMPRAMOS CASAS FEAS mark, since the domain incorporates the mentioned mark in its entirety and merely adds the gTLD “.com.” Panels have held that adding a gTLD to a domain is not relevant to a confusing similarity analysis. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”).
Furthermore, Respondent’s <compramoscasasfeaspr.com> domain merely adds the letters “pr,” a geographic indicator for Puerto Rico, and the gTLD “.com.”, which makes it confusingly similar to Complainant’s marks. Previous Panels have held that adding geographic terms to a mark in a domain does not differentiate a domain from a mark. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.).
The Panel further notes that the doctrine of foreign equivalents applies to this case. Previous Panels have found domain names containing trademark translations to be confusingly similar to registered trademarks. See, e.g., Compagnie Generale Des Etablissements Michelin - Michelin & Cie. v. Graeme Foster, D2004-0279 (WIPO May 25, 2004) (finding that a semantic similarity between a trademark and a domain name can also exist if the trademark and the domain name contain word elements of different languages if a considerable part of the public understands the meaning of the translation); see also Société pour l’Oeuvre et la Mémoire d’Antoine de Saint Exupéry – Succession Saint Exupéry – D’Agay v. Perlegos Properties, D2005-1085 (WIPO Jan. 2, 2006) (finding that although there is no phonetic similarity between the disputed domain name and Complainant’s trademark, Complainant's registered trademark is identical with its English translation used in the domain name, which is well known in the English speaking world).
The expression “Compramos casas feas” is a direct translation of the expression “We buy ugly houses” which would be understood and easily translated into Spanish by consumers in Puerto Rico, where English is the second official language.
The Panel thus concludes that Respondent’s <compramoscasasfeas.com> and <compramoscasasfeaspr.com> are identical and confusingly similar to the WE BUY UGLY HOUSE and COMPRAMOS CASAS FEAS marks for purposes of Policy ¶ 4(a)(i).
The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).
Respondent argues that it has rights or legitimate interests in the disputed domain names because it registered the trademark COMPRAMOS CASAS FEAS in Puerto Rico in 2004, namely earlier than Complainant registered and started using the Spanish equivalent of its WE BUY UGLY HOUSES trademark. Respondent further claims first use of the COMPRAMOS CASAS FEAS trademark from January 7, 2003.
Respondent further alleges that it has been using the mark for bona fide offering of services in real estate brokerage.
Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. As noted in paragraph 2.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), Panels have tended to recognize that a respondent's registration of a trademark which corresponds to a disputed domain name normally will, but does not necessarily, establish respondent rights or legitimate interests in that domain name for the purpose of the second element of the UDRP. For example, panels have generally declined to find respondent rights or legitimate interests in a domain name on the basis of a corresponding trademark registration where the overall circumstances demonstrate that such trademark was obtained primarily to circumvent the application of the UDRP.
For the same reason a presumption that a party owning rights in a trademark has been known by the trademark is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com, D2000-0847 (WIPO Oct. 12, 2000) (finding that under the circumstances, some might view Respondent’s Tunisian registration granted without any substantive examination itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration, and that it does not evidence a legitimate interest in the disputed name under the circumstances of this case).
The Panel believes that the facts in this case indicate that Respondent registered the trademark COMPRAMOS CASAS FEAS in Puerto Rico to facilitate taking unfair advantage of Complainant's previously existing trademark rights in the WE BUY UGLY HOUSES trademarks for the following reasons:
1. Respondent has been in the same business as Complainant for an extended period of time and could not be unaware of Complainant's services when it registered the trademark in Puerto Rico. This is further supported by the fact that Complainant is one of the biggest real estate franchisors with its presence in 45 states, who has been extensively advertising its services and business model under its WE BUY UGLY HOUSES trademark, particularly over the Internet;
2. Complainant’s rights in the WE BUY UGLY HOUSES, which extend to the territory of Puerto Rico predate Respondent’s registration date and the alleged date of first use. Respondent’s references to the dates of registration of the Spanish equivalent in the USA, the dates of their first use and the scope of such use are irrelevant for the reasons stated above.
3. Respondent has provided no evidence of use in commerce in Puerto Rico or elsewhere of the trademark COMPRAMOS CASAS FEAS that would pre-date Complainant’s rights . The records of the case contain only some examples of use which apparently date back to 2013.
The Panel thus determines that Respondent's trademark registration for COMPRAMOS CASAS FEAS in Puerto Rico does not establish that Respondent was known by the disputed domain names within the meaning of paragraph 4(c)(ii) of the Policy, nor does it otherwise establish that Respondent has rights or legitimate interests in the disputed domain names.
The Panel respectively determines that Complainant has satisfied the requirements of Paragraph 4(a)(ii) of the Policy.
Complainant asserts bad faith in the registration and use of the Domains as evidenced making reference to historical events preceding Respondent’s registration of the domains. It is established that Complainant has prior widespread use of Complainant’s Marks in connection with real estate services and owns federal registrations for its Marks, including COMPRAMOS CASAS FEAS, the rights of which extend to Puerto Rico and pre-date the dates of registration of the disputed domain names and Respondent’s trademark registration in Puerto Rico. Particularly, the Respondent’s Puerto Rican registration was not filed until four years after Complainant first began using its marks in interstate commerce and two years after Complainant first filed for federal registration of its WE BUY UGLU HOUSES marks.
Based on preponderance of evidence the Panel believes that Respondent registered its marks having Complainant’s trademarks in mind to take unfair advantage over Complainant’s goodwill associated with its marks and business model, particularly bearing in mind that Respondent offers identical services to those of Complainant. See Compl., at Attached Exs. D–F.
Previous Panels have found that a respondent intended to confuse and attract Internet users in bad faith where a respondent used confusingly similar domains to offer services that competed with a complainant. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
The conclusion that Respondent’s domains are being used to confuse and attract internet users for commercial gain is further supported by additional evidence submitted by Complainant showing that, despite its allegations that its services are directed only to consumers in Puerto Rico, Respondent has advertising directed at U.S. consumers through <sanantonio.buenasuerte.com>, an online business directory advertising to consumers located in San Antonio, Texas. See Add. Submission, Exhibit C. Such advertising can create a likelihood of confusion in the marketplace, as well as divert consumers seeking Complainant’s services to Respondent, which further proves Respondent’s intent to disrupt Complainant’s business.
The Panel respectively determines that Complainant has satisfied the requirements of Paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the<compramoscasasfeas.com> and <compramoscasasfeaspr.com> domain names be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: June 29, 2016
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