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Generic Top Level Domain Name (gTLD) Decisions |
Home Builders Institute v. The National
Instute of Home Builders Inc.
Claim
Number: FA0307000166011
Complainant is Home Builders Institute, Washington,
DC (“Complainant”) represented by Jonathan
Hudis, of Oblon, Spivak, McClelland, Maier &
Neustadt P.C. Respondent is The National Instute of Home Builders Inc,
Atlanta, GA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <homebuilderinstitute.com>, registered
with Register.Com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on July 2, 2003; the Forum
received a hard copy of the Complaint
on July 3, 2003.
On
July 3, 2003, Register.Com confirmed by e-mail to the Forum that the domain
name <homebuilderinstitute.com> is registered with Register.Com
and that Respondent is the current registrant of the name. Register.Com has
verified that Respondent
is bound by the Register.Com 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
July 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
July 28, 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@homebuilderinstitute.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
September 26, 2003, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Sandra Franklin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <homebuilderinstitute.com>
domain name is confusingly similar to Complainant’s HOME BUILDERS INSTITUTE
mark.
2. Respondent does not have any rights or
legitimate interests in the <homebuilderinstitute.com> domain
name.
3. Respondent registered and used the <homebuilderinstitute.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
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 <homebuilderinstitute.com> domain name on December
14, 1999. Respondent uses the disputed
domain name to promote his business, which provides courses on home building,
home-study course materials
on home building, books on various aspects of home
building, builders’ form contracts, and calculators relating to the home
building
and home mortgage industries.[1]
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.
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 <homebuilderinstitute.com>
domain name is confusingly similar to Complainant’s mark because the disputed
domain name merely misspells the HOME BUILDERS INSTITUTE
mark by omitting the
letter “s” from BUILDERS. Respondent’s
misspelling of Complainant’s mark is insufficient to distinguish the disputed
domain name from the HOME BUILDERS INSTITUTE
mark. See Victoria’s
Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding
that, by misspelling words and adding letters to words, a Respondent does not
create a distinct mark but nevertheless renders the domain name confusingly
similar to Complainant’s marks); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730
(Nat. Arb. Forum June 15, 2000) (finding that the domain name
<statfarm.com> is confusingly similar to Complainant’s
STATE FARM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent, via
the <homebuilderinstitute.com> domain name, offers 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 disputed 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 <homebuilderinstitute.com> domain name
fails to establish Respondent as one commonly known by the disputed domain name
or the HOMEBUILDERINSTITUE.COM mark.
The WHOIS information for the disputed domain name lists Respondent’s
trade name, The National Instute of Homebuilders, Inc. as the
administrative
contact. Both the trade name and the
disputed domain name share similar words; however, the Panel finds that even if
the domain name and the
trade name were identical it would not necessarily
establish that Respondent was commonly known by the domain name because
Respondent
could list any administrative contact it desired. Without a response from Respondent, the
Panel will not presume that Respondent is commonly known by the disputed domain
name. The record fails to establish
that Respondent was authorized or licensed to use or register domain names that
incorporate Complainant’s
marks.
Therefore, the Panel concludes that Respondent lacks rights or
legitimate interests in the disputed 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 Yoga Works, Inc.
v. Arpita d/b/a Shanti Yoga Works,
FA 155461 (Nat. Arb. Forum June 17, 2003)
(finding that Respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that Respondent was ever ‘commonly known
by’ the disputed domain name prior to
its registration of the disputed domain
name”); see also Compagnie
de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and
never applied for a license
or permission from Complainant to use the trademarked name).
Also, due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
presume that Respondent lacks rights
or legitimate interests in the disputed
domain name. See BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate,
pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”); 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).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
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,
has been used in commerce since 1985, the domain name is a misspelling of the
mark and the domain
name provides goods and services that compete with
Complainant. 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 <homebuilderinstitute.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.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <homebuilderinstitute.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
October 3, 2003
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