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Weekley Homes, L.P. v. Fix My House Or Else [2001] GENDND 782 (18 April 2001)

1. Complainant has been doing business as DAVID WEEKLEY HOMES since 1976.
2. Complainant holds a U.S. Trademark registration for DAVID WEEKLEY’S NEW HOME CENTER. In addition, Complainant has pending trademark registrations for DAVID WEEKLEY HOMES, WEEKLEY HOMES, and DAVID WEEKLEY.
3. Complainant asserts that the domain name is identical and/or substantially similar to Complainant’s trademarks.
4. Respondent is not commonly known by the DAVID WEEKLEY HOME mark contained in the domain name. Policy ¶ 4(c)(ii).
5. Respondent is not in the home building business nor has offered and goods and services under DAVID WEEKLEY name. Policy ¶ 4(c)(i).
6. Complainant contends that Respondent is a cybersquatter that has registered over 2,000 domain names, including names of cities, buildings, businesses, and famous people.

1. Respondent asserts that the website connected to the domain name in question does not cause confusion with Complainant’s business.
2. Respondent contends that it has a legitimate right to publish informative material about Complainant’s business.
3. Respondent contends that none of the bad faith factors listed in Policy ¶ 4(b) apply to its registration of the domain name in question.
• Respondent asserts that there is no evidence that at the time of registration, it had the intent to resell the domain name.
• Respondent argues that the offers to trade the domain name for services and monetary consideration were part of the settlement discussion between Respondent and Complainant and therefore should not be considered.
• Respondent claims that there is no evidence of a particular intent to deprive Complainant of the domain name in question.
• Respondent asserts that it is not a competitor of the Complainant, as required by Policy ¶ 4(b)(iii).
• Respondent contents that the website connected to the domain name is not being used for commercial gain, as required by Policy ¶ 4(b)(iv).

FINDINGS

The panel finds for the Complainant and has determined that the requested relief should be granted.

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 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:

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

(2) the 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

The domain name in question differs from Complainant’s trademark only by the deletion of the letter "s" from the word HOMES. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter "s" from the Complainant’s UNIVERSAL STUDIOS STORE mark does not change the overall impression of the mark and thus is confusingly similar to the Complainant’s mark); Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s "Asprey & Garrard" and "Miss Asprey" marks).

We find the domain name in question to be identical or confusingly similar to Complainant’s trademarks.

Rights or Legitimate Interests

Respondent has made no legitimate, noncommercial, or fair use of the domain name. Policy ¶ 4(c)(iii). See Robo Enterprises, Inc. v. Orvin Tobiason, FA 95857 (Nat. Arb. Forum, Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of Respondent’s web site may enjoy first amendment and fair use protection, those protections do not equate rights or a legitimate interest "with respect to [a] domain name" which is confusingly similar to another’s trademark); Chi-Chi’s Inc. v. Restaurant Commentary, D2000-0321 (WIPO June 29, 2000) (finding that Respondent had no rights or legitimate interest in the domain name even though Respondent stated that it intended to use the domain name for "public comment" on the Internet). See also State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent can accomplish his stated purpose of providing news and information about State Farm without the use of State Farm’s trademark in a name).

Registration and Use in Bad Faith

Registering domain names in order to prevent an owner of a trademark or service mark from reflecting the mark in a corresponding domain name is evidence of bad faith registration and use, provided there is evidence of a pattern of conduct. Policy ¶ 4(b)(ii). See Australian Stock Exchange v. Community Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses). We find that such a pattern of conduct has been established.

Complainant also contends that Respondent registered the domain name in order to extract something of value in exchange for the domain name. Complainant asserts that Respondent requested a number of services and monetary compensation in exchange for the domain name (see page 2 of Complaint). Complainant also asserts that Respondent, in a conversation with Complainant’s employee, admitted he registered domain names for the purpose of selling them back to either the trademark owner or someone else wanting the domain name. Registering a domain name for the purpose of extracting valuable consideration in excess of out of pocket costs related to the domain name is evidence of bad faith registration and use. Policy ¶ 4(b)(i). See Metallica v. Schnieder, FA 95636 (Nat. Arb. Forum Oct. 18, 2000) (finding bad faith based on Policy ¶ 4(b)(i) where the Respondent offered to transfer the domain name in return for nonmonetary consideration (i.e., if the Complainant met with the Respondent, called two of his friends, and granted the Respondent on interview)); Technology Properties, Inc v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (finding bad faith where Respondent verbally offered the domain names for sale for $2,000).

Complainant also contends that any use of the domain name would be for the sole purpose of misleading or diverting Internet consumers to other websites. Policy ¶ 4(b)(iv) states that diverting Internet traffic via a confusingly similar domain name is evidence of bad faith if it is for commercial gain. See State Farm Mut. Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that the Respondent registered the domain name <statefarmnews.com> in bad faith because Respondent intends to use Complainant’s marks to attract the public to the web site without permission from Complainant).

We reject Respondent’s claim that use of the domain name to comment on consumer issues is a First Amendment Free Speech right. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding that where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about the Complainant is evidence of bad faith); Monty and Pat Roberts, Inc. v. Bill Keith, D2000-0299 (WIPO June 9, 2000) (finding that "[T]he Panel does not dispute Respondent’s right to establish and maintain a website critical of (the Complainant)....however, the panel does not consider that this gives Respondent the right to identify itself as Complainant")

DECISION

Upon consideration, the domain name davidweekleyhome.com shall be transferred from the Respondent to the Complainant.

Honorable John J. Upchurch

Retired Judge

Arbitrator

Hon. Louis E. Condon (Ret.)

Jordan S. Weinstein

Dated this 18th day of April, 2001.

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