On April 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2004 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@homequarters.com by e-mail.

A timely Response was received and determined to be complete on May 10, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on May 17, 2004.

A timely Additional Submission was received from Respondent and determined to be complete on May 24, 2004.

On May 26, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn (Chairperson), David H. Bernstein and Rodney C. Kyle as Panelists.

RELIEF SOUGHT

Complainant requests that the domain name at issue be transferred from Respondent to Complainant.

Respondent requests a declaration that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

PARTIES’ CONTENTIONS

A. Complainant

[a.] Complainant, through its predecessor-in-interest Remerica Real Estate Corporation, has been using the mark HOME QUARTERS in connection with real estate brokerage services, mortgage lending and brokering services, real estate agency services, and real estate title insurance underwriting services since at least as early as January 31, 2000.

[b.] Complainant has filed applications in the U.S. Patent and Trademark Office to register the mark HOME QUARTERS (Serial No. 76/503,016) and a HOME QUARTERS logo (Serial No. 76/503,015).

[c.] Complainant is also the owner of U.S. Reg. No. 2,800,665 for the mark HOME QUARTERS REAL ESTATE, as evidenced by the copy of Reg. No. 2,800,665 and by the copy of the U.S. Patent and Trademark Office Notice of Recordation of Assignment (of February 17, 2004, reel 2794, frame 0856) to Complainant from Remerica Real Estate Corporation.

[d.] Respondent’s domain name at issue <homequarters.com> is identical or confusingly similar to Complainant’s HOME QUARTERS mark.

[e.] Respondent has no rights or legitimate interests in the <homequarters.com> domain name.

[f.] Respondent has registered and is using the <homequarters.com> domain name in bad faith.

B. Respondent

[a.] Respondent registered the domain name <homequarters.com> on October 1, 1997.

[b.] Complainant has not used the mark HOME QUARTERS before January 31, 2000. Neither has Complainant filed any trademark applications for the mark prior to that date.

[c.] Respondent registered the domain name <homequarters.com> before Complainant acquired any rights to the service mark HOME QUARTERS. Therefore, Complainant has no rights which may be asserted against Respondent.

[d.] As Respondent registered its domain name more than two years before Complainant’s use of the HOME QUARTERS mark, Respondent could not have registered the domain in bad faith.

C. Additional Submissions

[a.] Complainant’s Additional Submission states that Respondent acted in bad faith because there existed a third party service mark comprising HOME QUARTERS predating and existing at the time of Respondent’s 1997 registration of the domain name.

[b.] Respondent’s Additional Submission states that even if Complainant’s contention regarding the third party mark were true, bad faith with respect to one or more third party service marks is not what the Policy requires. Rather, the Policy requires intent to profit from the “complainant who is the owner of the trademarks.”

FINDINGS AND 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 and 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:

(i) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The majority of the Panel in this matter is of the opinion that the established fact that Complainant’s trademark rights arose only after the registration of Respondent’s domain name means that Complainant cannot prevail under ¶ 4(a)(i) and/or ¶ 4(a)(iii) of the Policy.

On the record before us, Complainant has demonstrated the existence of neither registered nor common law rights predating Respondent’s domain registration. Several Forum decisions have found that to satisfy the requirements of Rule 4(a)(i), the complainant party must have had trademark or service mark rights before the domain name in dispute was registered. See, e.g., Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum, Sept. 10, 2003), Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum, Feb. 19, 2003), Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 097051 (Nat. Arb. Forum, June 5, 2001). One panelist would rule for Respondent on this basis alone.

Further, this Panel is of the view that, given the absence of any trademark rights owned by Complainant at the time Respondent registered the domain name, Respondent could not have registered the domain name in bad faith as to Complainant as required by Policy ¶ 4(a)(iii). See, Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO, Oct. 5, 2001).

Complainant argues that Policy ¶ 4(a)(iii) is proven in this case because Complainant has proven that Respondent registered the domain name with bad faith as to a third party and its trademark rights. Even if such bad faith were proven, the Panel cannot accept that as sufficient proof of bad faith as required by Policy 4(a)(iii).

Section 4(b) of the Policy provides examples of the kind of conduct that constitutes bad faith registration. In every case, the bad faith has to be directed towards the complainant. Those examples include preventing the complainant from registering domain names containing its mark, registering the domain name to disrupt the complainant’s business, or registering the domain name to divert Internet users from the complainant’s website to the respondent’s website. None of these examples could possibly be met if the bad faith conduct was directed towards a third party. None could possibly be met if Complainant had no trademark rights at the time the domain name was registered.

Complainant, however, latches onto the mention of a “competitor” in ¶ 4(b)(i). That section discusses the registration of the domain name for the purpose of selling it back to the complainant or to a competitor of the complainant. Even in that context, it is clear that the Policy is intending that the bad faith be directed towards the complainant. That is because this provision suggests that the transfer of the mark to a competitor must be motivated by bad faith not towards the competitor, but towards the complainant itself. For example, if a cyber-squatter were to offer to sell the domain name <cocacola.com> to PepsiCo so that PepsiCo might use the domain name to damage the reputation of is competitor, that would constitute bad faith as to Coca Cola. Conversely, if Respondent had offered the domain name <homequarters.com> to PepsiCo at a time when Coca Cola had no trademark rights in that mark, then the offer could not possibly have been in bad faith (unless some other party with the Home Quarters mark was a competitor of PepsiCo, but even there, it is that trademark owner who would have standing to be the proper Complainant). In other words, at the time of registration, it has to have been for the purpose of selling the domain name to “complainant who is the owner of the trademark or service mark or to a competitor of that complainant” (emphasis added). Complainant thus has to have rights at the time of registration to be the “that complainant” who, at that time, has a competitor.

Thus, the Panel has determined that Complainant has not satisfied the requirements of Policy ¶ 4(a).

Reverse Domain Name Hijacking

Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which predates its service mark rights. While the Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy. Trujillo, supra. See also, Netro Corp. v. Koustas, FA 109723 (Nat. Arb. Forum, June 12, 2002) (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking. True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c)”). Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.

DECISION

As Complainant has failed to establish the requirements of Policy ¶ 4(a), Complainant’s requested relief is hereby DENIED.

David A. Einhorn, Panelist (Chairperson)

David H. Bernstein, Panelist

Dated: June 15, 2004

Panelist Rodney C. Kyle concurring:

I concur with the dismissal of the Complaint, though solely for Complainant’s not proving Policy ¶ 4(a)(iii).

I also concur with the dismissal of Respondent’s request for a declaration that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Identical or Confusingly Similar

In the other Panelists’ reasons stated for their disposition of this Complaint, their use of the expression “and/or” in referring to Policy ¶¶ 4(a)(i) and 4(a)(iii) indicates that at least one of them is deciding the Complaint wholly or partly on the basis that Policy ¶ 4(a)(i) requires a complainant to have trademark or service mark rights the onset of which predate the registration date of the contested domain name. I respectfully disagree: neither expressly nor implicitly does Policy ¶ 4(a)(i) include such a requirement.

Respondent, and at least one of the other Panelists in this proceeding, contend there is such a requirement and each cites three administrative panel decisions as standing for such a requirement. Whether or not any of those decisions actually do, individually or in some combination, stand for Respondent’s proposition, the Panel is aware that there are also many other panel decisions to the contrary and especially in view of three main reasons the Panel should have decided to follow two basic principles which also happen to accord with those many other decisions. First, Policy ¶ 4(a)(i) is phrased in the present tense and, as I believe accords with the reasons as to Policy ¶ 4(b)(i) stated by the other Panelists in this proceeding, unlike the Policy ¶ 4(b)(i) occurrence of “is”, the Policy ¶ 4(a)(i) occurrence of “is”[1] does not appear to have context warranting departure from a usual meaning of that expression; for Policy ¶ 4(a)(i) the pertinent time appears to be the time of commencing an administrative proceeding under the Policy and the Panel should have found as much. Second, Respondent’s proposition would preclude complaints succeeding in instances such as, for example, instances in which two persons A and B collaborated with one another regarding a prospective trademark (e.g. which A and B have agreed would be owned by A) but that B (e.g. behaving contrary to a contract between A and B or contrary to a common-law obligation of confidentiality owed by B to A) then registered a domain name corresponding to the prospective trademark, and that only after such registration did A’s trademark legal interests come into being; the Panel’s disposition of the complaint should have accorded with the view that a complaint by A against B would be within the scope of the Policy in that Policy ¶ 4(a)(i) as applied to those facts would not preclude a complaint by A succeeding against B. Third, although the Panel is aware of decisions under the Policy wherein other panels raised views,^[2] or applied views,^[3] that Policy paragraph 4(a)(i) requires trademark or service mark rights at the time of the registration of a contested domain name, this Panel, as still other panels have done,^[4] should have dealt with such timing matters only in relation to one or more other aspects of the Policy.

Moreover, Respondent did not dispute Complainant’s contentions, contained in Complainant’s initial submission, that the domain name at issue is registered to Respondent, that there is at least one service mark comprising HOME QUARTERS and in which Complainant has rights, and that the domain name at issue is identical or confusingly similar thereto. Such non-contention by Respondent results in those Complainant contentions being admitted by Respondent, such that the Panel should have found Policy ¶ 4(a)(i) is proven as to the domain name at issue.

Rights or Legitimate Interests

The context in which this part of this discussion occurs includes (1) Policy ¶ 4(c); and (2) Policy ¶ 4(a)(ii) administrative panel decisions as to burden of production.

Policy Paragraph 4(c)

Policy ¶ 4(c) is basically directed from a domain name registrar to a domain name registrant and prospective mandatory administrative proceeding respondent, and includes that:

When you receive a complaint, you should refer to [Rule 5] in determining how your response should be prepared. 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 Policy ¶] 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.

Complainant’s second main set of contentions contained in Complainant’s initial submission amounts to a pleading of Policy ¶ 4(a)(ii), and of negatives of the enumerated parts of Policy ¶ 4(c), together with the corresponding Complaint Exhibit Nos. 5 to 15. In view thereof, Complainant has made a prima facie showing that the domain name at issue is within Policy ¶ 4(a)(ii).

Administrative Panel Decisions As To Burden Of Production

Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) includes that when, as in this case, “the complainant has made a prima facie showing, the burden of production shifts to the respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue” (emphasis in original). (To similar effect see e.g. Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) and Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002); the latter decision distinguishes concrete evidence from “unsupported, self-serving allegations.”). As set out in the following three paragraphs hereof, the Panel should have found Respondent has not met that burden.

Respondent provided concrete evidence, basically as to Policy ¶ 4(c)(i), by providing Response Exhibits 4 and 5: a copy of a home page which, apparently prior to the dispute, resolved through the domain name at issue, and a copy of a report of economic activity - i.e. contended by Respondent to be reports of sales of home-related merchandise through an affiliate program - associated with the domain name at issue at that time. The issue therefore is basically whether that evidence proves use of the domain name at issue by Respondent prior to the dispute and, if so, then whether it also proves that such use is in connection with a bona fide offering of goods.

The Panel should have found that the evidence proves use of the domain name at issue prior to the dispute.

However, the Panel should also have found that there is no concrete evidence (as contrasted with unsupported, self-serving allegations contained in an affidavit prepared by or on behalf of Respondent as part of this proceeding) that such use was by Respondent. Instead, neither Response Exhibit 4 nor Response Exhibit 5 contains any reference to Respondent that would indicate Respondent was using the domain name at issue to resolve a website through which Respondent was selling, or offering to sell, home-related merchandise. Nor is there any concrete evidence (as contrasted with unsupported, self-serving allegations contained in an affidavit prepared by or on behalf of Respondent as part of this proceeding) that such use was use in connection with a bona fide offering of goods. In both those respects Response Exhibits 4 and 5 are in stark contrast with Complaint Exhibit No. 11 (which is printouts of websites designed and maintained by Respondent for third-party businesses such as <amberpalace.us>, resolving to the website of an Amber Palace Restaurant in Memphis, Tennessee, and <dentgenie.us>, resolving to the website of Dent Genie Repair & Paintless Dent Removal Services) which refers to Respondent, by Respondent’s name, as the source of website design services and maintenance services.

Summary

In view especially of the seven immediately preceding paragraphs hereof, the Panel should have found that Policy ¶ 4(a)(ii) is proven as to the domain name at issue.

Rodney C. Kyle, Panelist
Dated: June 15, 2004

REGISTRAR AND DISPUTED DOMAIN NAME

PANEL