DECISION

HomeFinishers, Inc. v. Tom Schutz

Claim Number: FA0208000123928

PARTIES

Complainant is HomeFinishers, Inc., Downers Grove, IL (“Complainant”) represented by Brent E. Ohlmann.  Respondent is Tom Schutz, Naperville, IL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <homefinishers.com>, registered with VeriSign, 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.

Bruce E. Meyerson as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 29, 2002; the Forum received a hard copy of the Complaint on September 3, 2002.

On September 3, 2002, VeriSign, Inc. confirmed by e-mail to the Forum that the domain name <homefinishers.com> is registered with VeriSign, Inc. and that the Respondent is the current registrant of the name.  VeriSign, Inc. has verified that Respondent is bound by the VeriSign, 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 September 3, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 23, 2002 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@homefinishers.com by e-mail.

A timely Response was received and determined to be complete on September 12, 2002.

On September 26, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Bruce Meyerson as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Complainant, HomeFinishers, Inc., is an Illinois corporation engaged in the business of selling and installing specialty bath and kitchen products. It has used the mark HOMEFINISHERS in Illinois since 1989 and registered the service mark HOMEFINISHERS with the State of Illinois effective August 2000.  Complainant contends that Respondent has established a domain name identical to Complainant’s mark, and prior to this dispute had not used, or prepared to use, the domain name in connection with any bona fide offering of goods or services.  Complainant contends that Respondent has never been commonly known by the domain name.  After Respondent registered the domain name in March 2000, Respondent allegedly contacted Complainant and offered to sell the domain name registration to Complainant.  Complainant contends that Respondent has used the site to create confusion with Complainant’s mark.

B. Respondent

Respondent, Tom Schutz, denies the allegations of the Complaint, calling them “frivolous and without merit.”  Respondent agrees that it made no use of the domain name, because he acted out of “fear of retribution and litigation.”

FINDINGS

As stated, Complainant, HomeFinishers, Inc., is an Illinois corporation engaged in the business of selling and installing specialty bath and kitchen products. It has used the mark HOMEFINISHERS in Illinois since 1989 and registered the service mark Homefinishers with the State of Illinois effective August 2000.  Respondent has never been known by the domain name. 

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 disputed domain name is identical to a trademark or service mark in which Complainant has rights. The addition of a generic top-level domain, such as “.com,” is inconsequential to an identical analysis. 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 “.com” after the name POMELLATO is not relevant).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has never been known by the domain name or any variant of it.  Respondent has made no attempt to contradict this assertion.  Under the circumstances, Complainant’s allegations must be accepted as true.  See Time Out Group v. Jacobson, Case No. D2001-0317 (WIPO May 7, 2001).

Other than stating that it abandoned its plans to use the domain name after this dispute arose, Respondent has not demonstrated any bona fide use whatsoever with respect to the domain name. The passive holding of a domain name for over two years without providing any demonstrable plans or preparations to use the domain name fails to establish rights or legitimate interests. See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates a lack of legitimate interest in the domain name); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that when Respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant contends that Respondent, subsequent to its registration of the domain name, contacted Complainant and offered to sell its rights in the domain name. Because Respondent has not established any rights or legitimate interests in the domain name it is evident that it registered the <homefinishers.com> domain name based on the goodwill associated with Complainant’s mark. The aforementioned circumstances indicate that Respondent has registered the domain name primarily for the purpose of selling the domain name registration to Complainant; thus, Respondent’s actions constitute bad faith pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) (finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith).

Additionally, the WHOIS information indicates that Respondent registered the subject domain name on March 10, 2000. Previous panels have determined that the passive holding of a domain name for over two years satisfies a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely).

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

DECISION

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

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

Bruce E. Meyerson, Panelist
Dated: October 10, 2002

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