DECISION

HQ Holdings, LLC v. EquiCorp, Inc.
Claim Number: FA0404000256402

PARTIES

Complainant is HQ Holdings, LLC (“Complainant”), represented by Marc A. Bergsman, of Dickinson Wright PLLC, 1901 L Street, N.W., Suite 800, Washington, DC 20036.  Respondent is EquiCorp, Inc. (“Respondent”), represented by Ari Goldberger, of ESQwire.com Law Firm, 35 Cameo Drive, Cherry Hill, NJ 08003.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <homequarters.com>, registered with Wild West Domains, Inc.

PANEL

Each of 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.

David A. Einhorn (Chairperson), David H. Bernstein, and Rodney C. Kyle as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 15, 2004; the Forum received a hard copy of the Complaint on April 16, 2004.

On April 16, 2004, Wild West Domains, Inc. confirmed by e-mail to the Forum that the domain name <homequarters.com> is registered with Wild West Domains, Inc. and that the Respondent is the current registrant of the name.  Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 April 20, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 10, 2004 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@homequarters.com by e-mail.

A timely Response was received and determined to be complete on May 10, 2004.

A timely Additional Submission was received from Complainant and determined to be complete on May 17, 2004.

A timely Additional Submission was received from Respondent and determined to be complete on May 24, 2004.

On May 26, 2004, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed David A. Einhorn (Chairperson), David H. Bernstein and Rodney C. Kyle as Panelists.

RELIEF SOUGHT

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

Respondent requests a declaration that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

PARTIES’ CONTENTIONS

A.            Complainant

[a.]       Complainant, through its predecessor-in-interest Remerica Real Estate Corporation, has been using the mark HOME QUARTERS in connection with real estate brokerage services, mortgage lending and brokering services, real estate agency services, and real estate title insurance underwriting services since at least as early as January 31, 2000.

[b.]       Complainant has filed applications in the U.S. Patent and Trademark Office to register the mark HOME QUARTERS (Serial No. 76/503,016) and a HOME QUARTERS logo (Serial No. 76/503,015).

[c.]        Complainant is also the owner of U.S. Reg. No. 2,800,665 for the mark HOME QUARTERS REAL ESTATE, as evidenced by the copy of Reg. No. 2,800,665 and by the copy of the U.S. Patent and Trademark Office Notice of Recordation of Assignment (of February 17, 2004, reel 2794, frame 0856) to Complainant from Remerica Real Estate Corporation.

[d.]       Respondent’s domain name at issue <homequarters.com> is identical or confusingly similar to Complainant’s HOME QUARTERS mark.

[e.]       Respondent has no rights or legitimate interests in the <homequarters.com> domain name.

[f.]        Respondent has registered and is using the <homequarters.com> domain name in bad faith.

B.            Respondent

[a.]       Respondent registered the domain name <homequarters.com> on October 1, 1997.

[b.] Complainant has not used the mark HOME QUARTERS before January 31, 2000.  Neither has Complainant filed any trademark applications for the mark prior to that date.

[c.] Respondent registered the domain name <homequarters.com> before Complainant acquired any rights to the service mark HOME QUARTERS.  Therefore, Complainant has no rights which may be asserted against Respondent.

[d.] As Respondent registered its domain name more than two years before Complainant’s use of the HOME QUARTERS mark, Respondent could not have registered the domain in bad faith.

C.            Additional Submissions

[a.]       Complainant’s Additional Submission states that Respondent acted in bad faith because there existed a third party service mark comprising HOME QUARTERS predating and existing at the time of Respondent’s 1997 registration of the domain name.

[b.]       Respondent’s Additional Submission states that even if Complainant’s contention regarding the third party mark were true, bad faith with respect to one or more third party service marks is not what the Policy requires.  Rather, the Policy requires intent to profit from the “complainant who is the owner of the trademarks.”

FINDINGS AND 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 and 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:

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

(ii)        the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii)            the domain name has been registered and is being used in bad faith.

The majority of the Panel in this matter is of the opinion that the established fact that Complainant’s trademark rights arose only after the registration of Respondent’s domain name means that Complainant cannot prevail under ¶ 4(a)(i) and/or ¶ 4(a)(iii) of the Policy.

On the record before us, Complainant has demonstrated the existence of neither registered nor common law rights predating Respondent’s domain registration.  Several Forum decisions have found that to satisfy the requirements of Rule 4(a)(i), the complainant party must have had trademark or service mark rights before the domain name in dispute was registered.  See, e.g., Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum, Sept. 10, 2003), Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum, Feb. 19, 2003), Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 097051 (Nat. Arb. Forum, June 5, 2001).  One panelist would rule for Respondent on this basis alone.

Further, this Panel is of the view that, given the absence of any trademark rights owned by Complainant at the time Respondent registered the domain name, Respondent could not have registered the domain name in bad faith as to Complainant as required by Policy ¶ 4(a)(iii).  See, Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO, Oct. 5, 2001).

Complainant argues that Policy ¶ 4(a)(iii) is proven in this case because Complainant has proven that Respondent registered the domain name with bad faith as to a third party and its trademark rights.  Even if such bad faith were proven, the Panel cannot accept that as sufficient proof of bad faith as required by Policy 4(a)(iii).

Section 4(b) of the Policy provides examples of the kind of conduct that constitutes bad faith registration.  In every case, the bad faith has to be directed towards the complainant.  Those examples include preventing the complainant from registering domain names containing its mark, registering the domain name to disrupt the complainant’s business, or registering the domain name to divert Internet users from the complainant’s website to the respondent’s website.  None of these examples could possibly be met if the bad faith conduct was directed towards a third party.  None could possibly be met if Complainant had no trademark rights at the time the domain name was registered.

Complainant, however, latches onto the mention of a “competitor” in ¶ 4(b)(i).  That section discusses the registration of the domain name for the purpose of selling it back to the complainant or to a competitor of the complainant.  Even in that context, it is clear that the Policy is intending that the bad faith be directed towards the complainant.  That is because this provision suggests that the transfer of the mark to a competitor must be motivated by bad faith not towards the competitor, but towards the complainant itself.  For example, if a cyber-squatter were to offer to sell the domain name <cocacola.com> to PepsiCo so that PepsiCo might use the domain name to damage the reputation of is competitor, that would constitute bad faith as to Coca Cola.  Conversely, if Respondent had offered the domain name <homequarters.com> to PepsiCo at a time when Coca Cola had no trademark rights in that mark, then the offer could not possibly have been in bad faith (unless some other party with the Home Quarters mark was a competitor of PepsiCo, but even there, it is that trademark owner who would have standing to be the proper Complainant).  In other words, at the time of registration, it has to have been for the purpose of selling the domain name to “complainant who is the owner of the trademark or service mark or to a competitor of that complainant” (emphasis added).  Complainant thus has to have rights at the time of registration to be the “that complainant” who, at that time, has a competitor.

Thus, the Panel has determined that Complainant has not satisfied the requirements of Policy ¶ 4(a).

Reverse Domain Name Hijacking

Complainant is a legitimate trademark owner who was attempting to improperly apply the Policy to a domain name which predates its service mark rights.  While the Panel notes that the filing of this Complaint and of the Additional Submission were ill-advised, this Panel cannot find, on the record before it, that the Complaint was filed in bad faith with the knowledge that it could not prove the requisite elements of the Policy.  Trujillo, supra.  See also, Netro Corp. v. Koustas, FA 109723 (Nat. Arb. Forum, June 12, 2002) (“This is a close call, but the Panel has determined not to find that Complainant has attempted a Reverse Domain Name Hijacking.  True, the case was very weak and probably should not have been filed, but the facts do not justify a finding under Rule 15(c)”).   Therefore, this Panel does not find Reverse Domain Name Hijacking based upon the evidence and pleadings submitted.

DECISION

As Complainant has failed to establish the requirements of Policy ¶ 4(a), Complainant’s requested relief is hereby DENIED.

David A. Einhorn, Panelist (Chairperson)

David H. Bernstein, Panelist

Dated: June 15, 2004

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