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Generic Top Level Domain Name (gTLD) Decisions |
Thomas B. Hudson v. Ted Machi &
Associates
Claim Number: FA0211000133759
PARTIES
Complainant
is Thomas B. Hudson, Linthicum, MD
(“Complainant”). Respondent is Ted Machi & Associates, Arlington,
TX (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <houselaw.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict
in serving as Panelists in
this proceeding.
Charles
K. McCotter, Jr., James A. Carmody and Tyrus R. Atkinson, Jr., as Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 19, 2002; the Forum received
a hard copy of the
Complaint on November 25, 2002.
On
November 21, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <houselaw.com>
is registered with Network Solutions, Inc. and that the 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
November 26, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of December 20, 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@houselaw.com by e-mail.
A
timely Response was received and determined to be complete on December 16, 2002.
On January 7, 2003, pursuant to Complainant’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Charles K.
McCotter, Jr., James Carmody and Tyrus R. Atkinson, Jr., as Panelists.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of Consumer Credit Compliance Company, LLC, which is in the
business of providing legal services including
researching, compiling,
analyzing and forwarding to clients recent legal developments in the area of
mortgage and home equity lending.
Complainant is located in the State of Maryland.
“HouseLaw”
is registered to Complainant for use in providing the legal services noted
above. “HouseLaw” represents a widely
recognized array of information and services provided by Complainant. Complainant has many national, regional, and
local subscribers to its HouseLaw monthly lending reporting services.
Complainant
has an Internet address for the monthly reporting services at
<houselaw.net>.
Complainant
has held “HouseLaw” as a service mark since its registration with the United
States Patent and Trademark Office on April
4, 1995. The service mark was registered to Complainant and is recorded
under registration number 1,887,635.
Respondent
registered <houselaw.com> on February 8, 1996, well after
Complainant’s first use and registration of “HouseLaw”.
Despite
acquiring the domain name in 1996, Respondent neither used nor exhibited
preparations to use <houselaw.com> in connection with a bona fide
offering of goods or services prior to Complainant’s notice to Respondent of
Complainant’s registration
of the service mark.
Complainant
contacted Respondent in the fall of 2000 and advised Respondent of
Complainant’s rights in “HouseLaw” as a registered
service mark and requested
transfer of the domain name.
Complainant also sent Respondent correspondence via overnight delivery
on March 12, 2002, again informing Respondent of Complainant’s
rights in
“HouseLaw” and inquiring whether Respondent was willing to surrender its use of
the domain name. Complainant followed
the March 12, 2002 correspondence with another letter sent to Respondent via
overnight delivery on May 7, 2002.
Respondent failed to respond to any of the three messages.
<houselaw.com>
was not an operational
website until approximately April, 2002, well after Complainant notified
Respondent of Complainant’s challenge
to Respondent’s use of <houselaw.com>.
Respondent
is not commonly known as <houselaw.com> or “HouseLaw”. Respondent is commonly known as “Ted Machi
& Associates”. Respondent has never
applied for a license or permission from Complainant to use its trademarked
name.
Respondent
is not making a legitimate noncommercial or fair use of the domain name.
Respondent
is intentionally capitalizing on the notoriety and good name of Complainant’s
“HouseLaw” products and services within the
mortgage lending industry in an
attempt to attract Internet users to Respondent’s website. Complainant spent considerable monetary and
non-monetary resources in developing “HouseLaw” into a nationally recognized
and widely
used product.
The
service mark and trademark are identical.
<houselaw.com>
advertises real estate
legal service, including services related to purchasing a home. “HouseLaw” products provide legal advice
regarding residential real estate lending.
Respondent is offering services in the same field as the services
provided by Complainant.
Respondent
registered the domain name after Complainant’s first use and federal
registrations of its service mark.
Since both parties are located within the United States, Respondent is
deemed to have had constructive notice of Complainant’s mark
at the time of its
registration. Because of the extensive
national promotion of the “HouseLaw” products and their wide notoriety and
recognition within the residential
real estate lending field, the evidence is
present to show that Respondent had actual knowledge of Complainant’s mark.
Respondent
registered the domain name in an intentional attempt to attract, for commercial
gain, Internet users to his website, by
creating a likelihood of confusion with
Complainant’s mark.
B.
Respondent
Respondent
is an attorney in Arlington, Texas, doing business as Ted Machi &
Associates.
The
Texas Code of Professional Responsibility which governs advertising for
attorneys licensed in the State of Texas, does not permit
a law firm to have a
fictitious or assumed name such as the “HouseLaw firm” but does allow for
attorneys to use web addresses or
domain names which are descriptive of the
type of legal services provided by the attorney or law firm.
“House”
and “Law” are generic terms that when used in combination connote many
different sub-areas of law and housing including but
not limited to usury,
housing and building code violations, zoning and ordinance of homes,
restrictive covenants, boundary disputes,
deceptive trade practices, insurance
claims and so forth. Respondent
contends that the similarity in Complainant’s registered service mark and
Respondent’s domain name is not confusing to
the party’s respective target
audiences.
After
Complainant learned that Respondent has acquired the domain name <houselaw.com>,
Complainant purchased the domain name registrations <houselaw.net>,
<houselaw.info> and <houselaw.us>.
Complainant only utilizes <houselaw.net> and purchased the other
domain name registrations in bad faith to prevent other persons
and entities
from utilizing those domain names, which may accurately describe their business
or services. Complainant continues to
use <creditcompliance.com> as its website’s main page address.
In
preparation for the use of the website located at <houselaw.com>
Respondent began writing the text in 1997 but misplaced it. In 1998 Respondent obtained permission from
a client to use photographs of the damage to his house and property for use on
Respondent’s
website. Sometime in
August 2001, Respondent contacted a web designer to begin the design of several
websites for Respondent’s Internet marketing
efforts. In particular, he was hired to create the websites
<debtdrs.com>, <seriousinjurylaw.com> and <houselaw.com>. Respondent’s websites were put online with <houselaw.com>
being the last. Respondent was unaware
that Complainant had registered a service mark “HOUSELAW” when it requested the
domain name <houselaw.com>.
Respondent is a private law firm that represents individuals in personal
injury and property claims against insurance companies, sellers
of real estate,
and in individuals filing for bankruptcy protection.
Respondent
does not desire to cause confusion or be associated in any way with
Complainant’s business, a publisher of real estate
law summaries and synopses
of court decisions that may affect large lending institution customers. There is no way that Complainant’s customers
could be confused by or exploited by Respondent’s similar domain name.
Complainant’s
argument that Respondent is using <houselaw.com> as an intentional
attempt to attract Complainant’s customers is blatantly false and unfounded.
While
Respondent was slow to develop its website after first registering it in 1996,
at all times since registration, Respondent has
intended to use the
website.
Respondent
has rights and legitimate interests in the domain name, did not register or use
it in bad faith, and Complainant has failed
to prove that Respondent has no
substantial rights and interests in the domain name, that its use has been in
bad faith or any other
reason why the domain name should be transferred to
Complainant.
C.
Additional Submissions
None
FINDINGS
1. Complainant is an individual who is the
owner of a business that provides, for financial gain, legal services and
materials to customers
desiring such information as it relates to mortgage and
home equity lending.
2. Respondent is an individual who operates
a law firm that represents clients desiring legal representation in the areas
of personal
injury, bankruptcy, property damage, and other such areas of law.
3. Complainant began using the term
“HouseLaw” in 1994 and registered the term with the United States Patent and
Trademark Office on
April 15, 1994, receiving the service mark HOUSELAW with
registration date of April 4, 1995.
4. HOUSELAW provides substantial information
to its customers in the nature of court decisions, legislation, and other
information relating
to mortgage lending.
5. HOUSELAW has a large base of customers
including banks, lending institutions, and law firms.
6. HOUSELAW currently makes its materials
available on the Internet by use of a website at <houselaw.net>.
7. The domain name <houselaw.com> is
identical or confusingly similar to Complainant’s service mark HOUSELAW.
8. Respondent has no rights or legitimate
interests in the domain name <houselaw.com>.
9. Respondent registered and used the domain
name in bad faith.
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.
Complainant has rights to the service
mark HOUSELAW by virtue of registration with the United States Patent and
Trademark Office. This circumstance is
sufficient under Policy ¶ 4(a)(i). See Koninklijke KPN N.V. v. Telepathy, D2000-0217
(WIPO May 7, 2001).
The remaining issue is whether the domain
name and service mark are identical or confusingly similar.
The domain name <houselaw.com> is
comprised of the entire service mark with the addition of the top-level domain
“.com”. The top-level domain “.com” is
of no consequence when conducting a Policy ¶ 4(a)(i) analysis. See Pomellato
S.p.A. v. Tonetti, D2000-0493 (WIPO July 7, 2000); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (which found that the top
level of the domain name “.com” does not affect the domain name for the
purpose
of determining whether it is identical or confusingly similar). What is left is the second-level domain <houselaw>
to be compared with the service mark HOUSELAW.
They are identical.
Respondent argues that the domain name is
comprised of two generic terms. As
such, Respondent contends that the <houselaw.com> domain name is
generic such as to defeat Complainant’s exclusive control of every use of the
HOUSELAW service mark. Respondent cites
as authority for this proposition the
case of Gen. Machine Prods. Co., Inc. v. Prime Domains, FA 92531 (Nat.
Arb. Forum Mar.16, 2000). However, the General
Machine case is not authority to support a finding against Complainant
under Policy ¶ 4(a)(i).
Complainant prevails under
Policy¶4(a)(i).
Respondent is not affiliated with
Complainant nor authorized by Complainant to use Complainant’s service
mark. Complainant contends that
Respondent has never been known by the name HOUSELAW in accordance with Policy
¶ 4(c)(ii). Neither party mentions a
noncommercial or fair use of the domain name.
Complainant contends that he has
exclusive rights to use the registered mark. See Am. Online v. Tencent
Communications Corp., FA93668 (Nat. Arb. Forum Mar. 21, 2000).
As result of Complainant’s showing, and
Respondent’s apparent lack of rights and legitimate interests in the domain
name, the burden
must shift to Respondent to demonstrate his rights and
legitimate interests in the domain name. See Clerical Med. Inv. Group Ltd.
v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate his rights and
legitimate interests in the domain name by any of the methods set out in Policy
paragraph
4(c).
For Respondent to prove his contentions
as to rights and legitimate interests, Respondent must produce “concrete
evidence” not “mere
personal assertions.” See Do The Hustle LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (wherein it was stated as follows:
“Where a complainant has asserted that the respondent has no rights
or
legitimate interests in respect of the domain name, it is incumbent upon the
respondent to come forward with concrete evidence
rebutting this
assertion. This information is uniquely
within the knowledge and control of the respondent. Failure of a respondent to come forward with such evidence is
tantamount to admitting to the truth of complainant’s assertions in
this
regard”).
Respondent’s argument as to the generic
nature of the domain name that he raised under Policy ¶ 4(a)(i) should, in all
fairness, be
considered here. In the case
cited by Respondent, it was held by the panel that the word at issue,
“craftwork”, even though Complainant owned a trademark
for the word
“craftwork”, was demonstrated by Respondent to be in “widespread use in a
descriptive sense”, that Complainant failed
to show that consumers are likely
to associate <craftwork.com> only with Complainant, and that consequently
Respondent could
not be proved to be without legitimate rights and interests in
the domain name <craftwork.com>.
In the cited case respondent produced as evidence, lists of hundreds of
businesses that use “craftwork” as, or as part of their corporate
name. See Gen. Machine Prods. Co., Inc. v.
Prime Domains a/k/a Telepathy, Inc., FA 92531 (Nat. Arb. Forum Mar. 16,
2000). Respondent presents no evidence
in this case to warrant finding that HOUSELAW is in widespread use in a
descriptive sense. Complainant
attached as an exhibit several Google searches
for HOUSELAW. The search results
illustrate that, other than Complainant, few other parties use the word
HOUSELAW as part of any title or business
name. The Google search results are
concrete evidence in support of Complainant’s position. Respondent is required
to produce evidence
to support its allegations in order to prevail. See Do
The Hustle LLC v. Tropic Web, supra.
The Panel has examined the exhibits in this case. Nothing appears that suggests that
Complainant cannot rely on HOUSELAW as an enforceable service mark.
Respondent’s next contention is that
before any notice to him of the dispute, his use, or demonstrable preparations
to use, the domain
name in connection with a bona fide offering of goods or
services was made. If Respondent can
prove this issue, he will prevail. See Policy ¶ 4(c)(i).
Respondent states in his Affidavit that
he “acquired the domain name ‘HouseLaw.com’ in 1996 with the intention of
creating a website
dedicated to those who had purchased homes under false
pretenses that had damage claims against homebuilders and realtors who failed
to disclose defects.” He “began writing
the text for the proposed website in 1997 but misplaced what I had
written.” He hired a web designer to
design several websites, in August 2001, but did not go on line with the
website in question until “sometime
in 2002.”
The Affidavit of Chris Woods states that Respondent contacted him in
2001 to design several websites, including <houselaw.com>. He does not state what work, if any, he did
for Respondent on this website from 2001 until the date of notice of this
dispute except
to state that he has not fully completed <houselaw.com>
as of the date of this proceeding.
Respondent admits that he did not “go on line” with the domain name
until April 2002. “However, the preparation of the web page began
long before
then and modifications continue today.”
Neither Respondent nor Woods produce any
actual documents or other written matter calculated to illustrate any work done
in preparation
prior to the date of notice of the dispute in March 2002. There is nothing for the Panel to examine
except the sworn allegations of Respondent that he began some text which he no
longer has,
and contacted Woods. What
appears then is that Respondent commenced operation of the website at <houselaw.com>
after notice of the dispute represented by Complainant’s letter of March
12, 2002. The Panel does not accept the
bare allegation of Complainant that notice of the dispute was made in 2000,
since there is no evidence
of such a communication included in the pleadings
and Respondent denies receipt of the notice.
Respondent is required to present
concrete evidence of his preparations to satisfy the rule in Do The Hustle
LLC v. Tropic Web. Respondent’s
only evidence is his statement that he prepared some text in 1997, which was
never thereafter used, and that he contacted
Woods. This is the entire preparation done in a span of six years. The Panel decides that under the facts and
circumstances presented by Respondent, there is insufficient “demonstrable
preparations
to use the domain name” prior to March 12, 2002, to warrant
finding for Respondent under the requirements of Policy ¶ 4(c)(i).
“Demonstrable”
as used in Policy ¶ 4(c)(i) is taken by the Panel to mean proved
by evidence in the manner required in Do The Hustle LLC v. Tropic Web. Respondent fails to prove demonstrable
preparation.
Complainant prevails under Policy ¶
4(a)(ii).
Complainant bears the burden of proof on
the issue of bad faith. He may proceed
to illustrate bad faith by any of the methods set out in Policy paragraph 4(b)
or by any other method not set out in
the Policy that would prove bad faith
registration and use on part of Respondent.
Complainant’s first position is that
Respondent registered the domain name after Complainant’s first use and federal
registration
of its service mark. Since
both parties are located within the United States, Respondent is deemed to have
had constructive notice of Complainant’s mark
at the time of registration. Additionally, Complainant engages in
extensive national promotion of its HOUSELAW products, and those products have
gained industry-wide
notoriety and recognition within the residential real
estate lending field. Complainant’s
HOUSELAW products’ popularity in the residential real estate lending industry,
along with its registration of HOUSELAW
as a service mark, is evidence that
Respondent knew of Complainant’s mark and acted in bad faith in registering the
domain name,
it is contended.
Respondent denies actual knowledge of the service mark at the time of
registration.
Respondent must be held to be on
constructive notice of Complainant’s service mark since both are United States
citizens. See Briefing.com Inc. v. Cost Net Domain Manager, D2001-0970
(WIPO Sept. 12, 2001). But constructive
notice alone cannot be taken as evidence of bad faith. See Sterling Inc. v.
Sterling Jewelers, Inc. and Domain Traffic, D2002-0772 (WIPO Nov. 13,
2002). There must, in addition to
constructive notice, be some evidence to support an inference that Respondent
either knew or should have
known of Complainant’s mark either because of its
widespread use or the fame of the mark. See Expedia, Inc. v. European Travel
Network, D2000-0137 (WIPO Arp. 18, 2000); Document Techs. v. Int’l Elec.
Communications, Inc. D2000-0270 (WIPO June 6, 2000). There is some evidence presented by
Complainant in this case that HOUSELAW is in widespread use. The evidence shown is the content of the web
page, the customer list, and the allegation by Complainant that Complainant’s
products
have gained “notoriety and recognition within the residential real
estate lending field.” Cf. Sterling Inc. v. Sterling Jewelers, Inc.
and Domain Traffic where the panel refused to make the inference that
respondent knew or should have known of the trademark because of its widespread
use where the evidence of the widespread use was merely the conclusory,
unsupported statement by complainant.
Complainant has not proven the widespread or famous nature of his
service mark by proper evidence to the extent that an inference
of actual
notice may be made against Respondent.
The inference cannot be drawn that Respondent knew of the service mark
HOUSELAW at the time of registration by this evidence alone.
Complainant next argues that Respondent
re-registered <houselaw.com> in February, 2002, having actual
notice of Complainant’s HOUSELAW registered mark and prior to any bona fide
offering of goods and
services using the mark, in bad faith. Renewal of a registration in bad faith
cannot support a finding of bad faith under Policy ¶ 4(a)(iii). See Substance
Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc.(SAMI), D2001-0782
(WIPO Aug. 14, 2000) (where it was stated “…[T]he Policy could have been
drafted to address both bad faith registration
or at the time of renewal. It does not, referring only to a
registration having been obtained in bad faith”); see also Weatherall
Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 19, 2001).
Complainant next contends that
Respondent’s domain name is substantially identical to Complainant’s registered
mark, and is used to
access a website offering competing services. Such action, Complainant contends, is an
attempt by Respondent to disrupt Complainant’s business, and is further
evidence of bad faith. Complainant
presents no evidence to support this contention. There is no evidence submitted of any disruption of Complainant’s
business of any kind by Respondent.
This bare allegation cannot be sustained without proof.
Complainant contends that Respondent is
using Complainant’s registered service mark as its domain name in an
intentional attempt to
attract, for commercial gain, Internet users to its
website, by creating a likelihood of confusion with Complainant’s registered
mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s
website and services offered on its website. See
Policy ¶ 4(b)(iv). Complainant presents no evidence to
support this contention.
The evidence is undisputed that
Respondent registered the domain name in 1994 and made no use of it on the
Internet until after notice
of the dispute on March 2002. “Various panels have ordered transfer of a
domain name after a extended period of non-use by its registrant, typically
referred to
as ‘passive holding’. In
each instance, non-use coupled with a complainant having valid trademark rights
commencing prior to the date on which the offending
domain name was registered
coupled with the registrant having actual or imputed knowledge of those
rights…” See Jones Apparel Group,
Inc. v. Robin Sousa, D2001-1308 (WIPO Dec. 21, 2001) and cases cited
therein. While this Panel has
previously stated that Complainant’s proof of registration and less than
conclusive proof of widespread use of
the service mark did not warrant a
finding of actual notice of the service mark by Respondent at the time of
registration, Complainant’s
proof, coupled with Respondent’s passive holding of
the domain name presents a different factual situation.
The Panel notes that Respondent is a
lawyer. Complainant’s services and
products are law-related and directed to law firms, banks and lending
institutions. The question then is
whether the Panel should impute knowledge of Complainant’s service mark to
Respondent at the time of registration
of the domain name. Under the facts and circumstances of this
case, the Panel finds that this is the proper resolution of this issue.
Furthermore, the Panel cannot find any
actual or contemplated active use of the domain name by Respondent that would
not be illegitimate,
such as by being a passing off, an infringement of
consumer protection legislation, or an infringement of Complainant’s rights
under
trademark law. See Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003
(WIPO Feb. 18, 2000). Respondent is
found to have registered and used the domain name <houselaw.com> in
bad faith.
Complainant prevails under Policy ¶
4(a)(iii).
DECISION
The Panel finds that the domain name <houselaw.com>
now registered to Respondent, Ted Machi & Associates, be TRANSFERRED
to Complainant, Thomas B. Hudson.
Tyrus R. Atkinson, Jr., Chairman for the Panel
Charles K. McCotter Jr, James A. Carmody
and Tyrus R. Atkinson, Panelists.
Dated: January 21, 2003
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