DECISION

HomeVestors of America, Inc. v. Mizan, Inc. c/o Alex Mizan

Claim Number:  FA0409000328455

PARTIES

Complainant is HomeVestors of America, Inc. (“Complainant”), represented by Stephen L. Sapp, of Locke Liddell & Sapp LLP, 2200 Ross Avenue, Suite 2200, Dallas, TX 75201.  Respondent is Mizan, Inc. c/o Alex Mizan (“Respondent”), 60 Sophias Avenue, Athens, Greece 11528.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <webuyuglyhouses.net>, registered with DomainsToBeSeen.com.

PANEL

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 15, 2004; the Forum received a hard copy of the Complaint on September 17, 2004.

On September 16, 2004, DomainsToBeSeen.com confirmed by e-mail to the Forum that the domain name <webuyuglyhouses.net> is registered with DomainsToBeSeen.com and that Respondent is the current registrant of the name. DomainsToBeSeen.com has verified that Respondent is bound by the DomainsToBeSeen.com 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 September 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 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@webuyuglyhouses.net by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 20, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <webuyuglyhouses.net> domain name is identical to Complainant’s WE BUY UGLY HOUSES mark.

2. Respondent does not have any rights or legitimate interests in the <webuyuglyhouses.net> domain name.

3. Respondent registered and used the <webuyuglyhouses.net> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is in the business of providing real estate related services, mortgage related services, and franchising services, namely, offering technical assistance in establishing, operating, marketing and developing franchised businesses that purchase, finance and sell residential real estate.  Complainant holds several registrations for the WE BUY UGLY HOUSES mark with the U.S. Patent and Trademark Office (“USPTO”), including Reg. Nos. 2,689,569 and 2,761,385 (registered on Feb. 18, 2003 and Sept. 9, 2003, respectively)

Respondent registered the domain name on July 21, 2003.  The domain name redirects Internet users to an Internet directory that features links to commercial websites.  Moreover, the website provides links to websites that relate to buying real estate. 

DISCUSSION

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."

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.

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.

Identical and/or Confusingly Similar

Through its registration with the USPTO, Complainant has acquired rights in the WE BUY UGLY HOUSES mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive, and Respondent has the burden of refuting this assumption; see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”).

Respondent’s <webuyuglyhouses.net> domain name is identical to Complainant’s WE BUY UGLY HOUSES mark.  The only difference is the addition of the “.net” generic top-level domain, which does not significantly distinguish the domain name from the mark.  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) (finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark.

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has not filed a Response.  Therefore, the Panel accepts any reasonable assertions by Complainant as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true; see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence.

Complainant has alleged that Respondent has colluded with prior registrants to frustrate Complainant’s efforts to begin this administrative proceeding.  Actions such as this (known as “cyberflying”) may demonstrate the absence of rights or legitimate interest. See, generally, British Broadcasting Corporation v. Data Art Corp./Stoneybrook, D2000-0683 (WIPO Sept. 20. 2000) (defining “cyberflying” as an instance “where a registrant of a domain name, when named as the respondent in a domain name dispute case, systematically transfers the domain name to a different registrant to disrupt the proceeding”).  However, because the action of the present registrant (Respondent) demonstrates an absence of rights and legitimate interests, the Panel determines that it need not examine past registrants.  Additionally, Complainant’s trademark registration only predates Respondent’s domain name registration by a matter of months.  If the Panel were to inquire into the prior registrants’ activities, it may also become necessary for the Panel to determine whether Complainant has priority over the prior registrants.  The Panel will not look into Complainant’s allegations of the prior registrant’s lack of rights or legitimate interests if it would destroy Complainant’s priority by registration.  This would, in effect, create the absurd result of lessening Complainant’s burden under Policy ¶ 4(a)(ii) by increasing Complainant’s burden under Policy ¶ 4(a)(i).  See Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do; see also cf. Gassan Diamonds B.V. v. Van Etten Bernardus Jacobus, AF-0149b (eResolution May 25, 2000) finding that despite a willingness to transfer by Respondent, any lack of settlement or actual transfer compels Panel to issue a decision to prevent recurring disputes.

Respondent is using a domain name that is identical to Complainant’s mark to offer directory services, offering, inter alia, services of Complainant’s competitors.  Appropriating another’s mark to lead consumers to competing services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services; see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website.

There is nothing in the record, including the WHOIS domain name registration information, which indicates that Respondent is commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is appropriating Complainant’s WE BUY UGLY HOUSES mark to confuse Complainant’s customers and lead them to other websites through a directory.  The Panel assumes that Respondent has not created the directory website for altruistic reasons; rather, the Panel assumes that Respondent receives remuneration for each customer it leads to websites included in the directory.  Therefore, the Panel finds that Respondent registered and used the <webuyuglyhouses.net> domain name to create confusion for commercial gain pursuant to Policy ¶ 4(b)(iv).  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain; see also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) finding that Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intended to use Complainant’s marks to attract the public to the web site without permission from Complainant.

In addition, Respondent is appropriating Complainant’s mark to lead customers to Complainant’s competitors.  The Panel finds that Respondent’s use of the <webuyuglyhouses.net> domain name is also to disrupt Complainant’s business, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) finding that the minor degree of variation from Complainant's marks suggests that Respondent, Complainant’s competitor, registered the names primarily for the purpose of disrupting Complainant's business; see also SR Motorsports v. Rotary Performance, FA 95859 (Nat. Arb. Forum Jan. 4, 2001) finding it "obvious" that the domain names were registered for the primary purpose of disrupting the competitor's business when the parties are part of the same, highly specialized field.

The Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <webuyuglyhouses.net> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  November 1, 2004

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