DECISION

Home Builders Institute v. IHBMI

Claim Number:  FA0310000204084

PARTIES

Complainant is Home Builders Institute (“Complainant”), represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke Street, Alexandria, VA 22314.  Respondent is IHBMI  (“Respondent”), 6793 W. Canyon Avenue, Suite 13-A, Littleton, Colorado 80128.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <homebuildersinstitute.com>, registered with Network Solutions, Inc.

PANEL

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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 21, 2003; the Forum received a hard copy of the Complaint on October 22, 2003.

On October 27, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <homebuildersinstitute.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 2003 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@homebuildersinstitute.com 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 January 8, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <homebuildersinstitute.com> domain name is identical to Complainant’s HOME BUILDERS INSTITUTE mark.

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

3. Respondent registered and used the <homebuildersinstitute.com> domain name in bad faith.

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

FINDINGS

Complainant is dedicated to the advancement and enrichment of education and training programs serving the needs of the housing industry.  Complainant, for forty years, has trained skilled workers in residential construction, promoted the industry as a career and helped the National Association of Home Builders membership address its need for qualified employees.  Complainant registered the HOME BUILDERS INSTITUTE HBI & DESIGN mark with the U.S. Patent and Trademark Office (“USPTO”) on October 20, 1987 (Reg. No. 1,462,282).  Complainant also registered the HOME BUILDERS INSTITUTE mark with the USPTO on October 17, 1995 (Reg. No. 1,927,218).  Complainant has used the HOME BUILDERS INSTITUTE mark in commerce since 1985.  Complainant holds the registration for the <hbi.org> domain name which resolves to a website that prominently shows the HOME BUILDERS INSTITUTE HBI & DESIGN mark. 

Respondent registered the <homebuildersinstitute.com> domain name on October 15, 2002.  Respondent uses the domain name to promote its business of providing consulting services, training sessions, testing, building plans and drawings, and online forums relating to the real estate and home building industries.  The administrative contact for the domain name, Emma Shinn, has presented seminars for Complainant over the years but not recently. 

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

Complainant has established rights in the HOME BUILDERS INSTITUTE mark through registration of the mark with the USPTO and use of the mark in commerce since 1985.  See 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”); see also 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.  Respondent has the burden of refuting this assumption).

Respondent’s <homebuildersinstitute.com> domain name is identical to Complainant’s HOME BUILDERS INSTITUTE mark because the domain name fully incorporates the mark and merely adds the generic top-level domain “.com.”  Addition of a generic top-level domain to a mark is insufficient to distinguish a domain name from another’s mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied. 

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights and legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

It may be inferred that Respondent, through its administrative contact, had actual or constructive knowledge of Complainant’s rights in the HOME BUILDERS INSTITUTE mark.  Despite this Respondent registered the <homebuildersinstitute.com> domain name and uses it to offer goods and services that compete with those offered by Complainant.  Respondent’s use of the misleading domain name to compete and disrupt Complainant’s business is evidence that Respondent is not using the domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or 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).

Furthermore, the WHOIS information for the <homebuildersinstitute.com> domain name fails to establish that Respondent is commonly known by the domain name.  The record also fails to establish that Respondent was authorized or licensed to register or use domain names that incorporate Complainant’s marks.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the <homebuildersinstitute.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. 

Registration and Use in Bad Faith

It may be inferred that Respondent had actual or constructive knowledge of Complainant’s HOME BUILDERS INSTITUTE mark because the mark was registered with the USPTO and has been used in commerce since 1985, the domain name resolves to a website that competes with Complainant, and the administrative contact for the domain name has presented seminars for Complainant in the past.  Registration of a domain name, despite knowledge of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

Furthermore, Respondent has used the misleading <homebuildersinstitute.com> domain name to offer goods and services that compete with Complainant.  Respondent’s competitive use of the misleading domain name disrupts Complainant’s business and is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).  See Gen. Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

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 <homebuildersinstitute.com> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  January 13, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/91.html