Generic Top Level Domain Name (gTLD) Decisions

Complainant is Home Properties, Rochester, NY, USA ("Complainant"). Respondent is SMS Online ("Respondent").

The domain name at issue is homeproperties.org registered with Network Solutions, Inc.

The Panelist certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as the panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on September 20, 2000; The Forum received a hard copy of the Complaint on September 19, 2000.

On September 21, 2000, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name homeproperties.org is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On September 22, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 12, 2000 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@homeproperties.org 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 19, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member Panel, the Forum appointed Honorable Carolyn Marks Johnson 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 Uniform 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 the Respondent.

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

A. Complainant

The Complainant contends:

B. Respondent

Respondent did not file a response in this case in compliance with the ICANN Rules and Policy.

Complainant is a real estate investment trust that owns, manages, acquires, rehabilitates, and develops apartment communities throughout the Northeast, Midatlantic and Midwest United States. Complainant and its predecessors have operated multi-family properties since 1967.

Complainant has used the HOME PROPERTIES mark continuously since 1993. On March 7, 2000, the Complainant filed a Federal trademark application for its HOME PROPERTIES mark. The application is currently pending.

Complainant owns the domain names <homeproperties.com> and <homeproperties.net>.

Respondent is a company that operates various contracting businesses under different names including "Syndicated Mechanical Services, Inc.", "Schroebel Mechanical Service" and "SMS & Associates." The principal of all of these companies is Peter A. Schroebel. Prior to Respondent’s registration of the domain name in question, one of Mr. Schroebel’s companies performed contracting services for Complainant. Mr. Schroebel and Complainant were involved in a commercial dispute involving those services that resulted in litigation that was settled in April 2000. This prior commercial dispute in no way involved the domain names set forth in this matter.

Neither Respondent nor Mr. Schroebel ever operated a business using the HOME PROPERTIES mark.

Respondent registered the domain name in question on or about August 24, 1999.

On August 24, 1999, Respondent also registered the following domain names that use the HOME PROPERTIES mark: "www.homepropertiessucks.com"; "www.homepropertiessucks.org"; and "www.homepropertiessucks.net".

On July 17, 2000, Complainant wrote to Mr. Schroebel to inform him of the unlawful and improper use of the domain name in question. Respondent posted a copy of this letter on its website.

Respondent is using the domain name to operate a web site to disparage Complainant and the facts before the Panel permit the inference that Respondent seeks to drive customers, who would do business with Complainant, away from Complainant by virtue of the negative domain names using the same identifying name and the addition of the word "sucks."

Based on ICANN Policy, Rules and the Supplemental Rules that govern these proceedings this Panel holds that it cannot grant the claimant's request automatically, but that it must instead examine the evidence presented to determine whether or not Complainant has proven its case as required by the ICANN Policy.

It is clear from the record that Complainant and Respondent are entrenched in legal issues that are extrinsic to those raised in this domain name dispute. The Panel in this proceeding concerns itself only with that portion of their dispute related to the domain name at question in this case "homeproperties.org." The Panel makes no determination as to other domain names purportedly owned by Respondent that also contain Complainant’s marks.

The Panel concludes that Respondent has no legitimate interest in the domain name "homeproperties.org" and that the evidence permits the inference that Respondent is using that domain name to operate a web site solely for the purposes of disparaging Complainant, of confusing Internet users, and of attempting to negatively affect the Complainant’s commercial activities as a result of a prior commercial dispute between these parties.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that a 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 to or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

The ICANN dispute resolution policy is "broad in scope" and "the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000) (emphasis in original).

Complainant has common law rights in the mark HOME PROPERTIES, given Complainant’s continuous use of the mark in connection with its real estate services since 1993. Complainant also has rights in the mark, given Complainant’s pending trademark application. See Phone-N-Phone Services (Bermuda) Ltd. v. Shlomi (Salomon) Levi, D2000-00400 (WIPO Mar. 23, 2000) (finding that the domain name was identical or confusingly similar to the complainant’s pending service mark application).

The HOME PROPERTIES mark used by Complainant since 1993, and the domain name registered by Respondent in August 1999, are virtually identical except for the second level domain ".org". See Planned Parenthood v. Bucci, 1997 WL 133313 at *8 (S.D.N.Y. March 24, 1997) (finding plaintiff’s mark and defendant’s domain name consisting of plaintiff’s mark and ".com" nearly identical). The Panel concludes that Complainant has satisfied Policy ¶ 4.a.(i), which reads: "Your [domain name holder’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights."

Respondent does not operate a business using the name "Home Properties" and Respondent is not commonly known by the HOME PROPERTIES mark contained in the domain name at issue. Policy ¶ 4.c.(ii).

Respondent has not used the domain name to advertise or otherwise further its contracting business. Respondent did not register the domain name--and Mr. Schroebel is not operating the web site--in conjunction with any work that Respondent or Mr. Schroebel previously performed for Complainant. Therefore, Respondent has not used the domain name in connection with a bona fide offering of goods and services. Policy ¶ 4.c.(i).

The proof permits the inference that Respondent is using the domain name, which is identical and confusingly similar to Complainant’s mark, to disparage Complainant as a result of a former business relationship that turned sour, and to confuse those who would otherwise do business with Complainant. This is not a legitimate use of the domain name. Respondent has not used the domain name in connection with a legitimate noncommercial or fair use. Policy ¶ 4.c.(iii). Additionally, Respondent could have demonstrated fair use of a domain name by establishing that such use was not intended for commercial gain nor to divert customers from Complainant’s business or to tarnish Complainant’s mark. See Kelson Physican Partners, Inc. v. Mason, CPR003 (CPR 2000). Respondent chose not to present any of these arguments.

The panel finds that Respondent has no rights or legitimate interest in the domain name.

Complainant does not seek to restrain the Respondent from speech that criticizes Home Properties. Deciding a First Amendment Constitutional issue is outside the scope of this proceeding at any rate, but several federal court decisions have held that incorporating another’s registered trademark into a domain name to attract internet users to a site with competing or critical views to those of the trademark owner is not protected by the right of fair use. Compare Planned Parenthood Fed’n of America v. Bucci, 1997 U.S.Dist. LEXIS 3338 (S.D.N.Y. 1997); Jews for Jesus v. Brodsky, 993 F. Supp. 282 (D.N.J. 1998), and Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998).

The proof permits the inference that Respondent’s intent in registering and using the domain name at issue is to disrupt Complainant’s business and to tarnish Complainant’s reputation by luring current and potential customers of Complainant to Respondent’s website. There, they will likely encounter Respondent’s negative "opinions" and disparagement of Complainant’s business. Registering a domain name to disrupt a competitor is evidence of bad faith. Policy ¶ 4.b.(iii). The infringement upon Complainant’s mark has disrupted the Complainant’s business operations. While in this case it does not appear that Complainant and Respondent are direct competitors, in these circumstances the Panel is permitted to conclude that Respondent’s conduct indicates a bad faith intent to wrongfully disrupt Complainant’s business, which is not permitted.

The Panel also concludes that Respondent registered the domain name to prevent Complainant from utilizing its mark in a domain name. Policy ¶ 4.b.(ii) states as follows: "You have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a patter of such conduct." Respondent registered numerous domain names containing Complainant’s mark on August 24, 1999. This constitutes a pattern of conduct that is contrary to the clear policy of ¶ 4.b.(ii).

Based on the above, the Panel concludes that Respondent registered and is using the domain name in issue here in bad faith.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the Panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "HOMEPROPERTIES.ORG" be transferred from Respondent to Complainant.