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Generic Top Level Domain Name (gTLD) Decisions |
Home Builders Institute v. IHBMI
Claim
Number: FA0310000204084
Complainant is Home Builders Institute (“Complainant”),
represented by Jonathan Hudis, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C., 1940 Duke
Street, Alexandria, VA 22314.
Respondent is IHBMI (“Respondent”), 6793 W. Canyon Avenue, Suite
13-A, Littleton, Colorado 80128.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <homebuildersinstitute.com>, registered
with Network Solutions, Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on October 21, 2003; the
Forum received a hard copy of the
Complaint on October 22, 2003.
On
October 27, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that
the domain name <homebuildersinstitute.com> is registered with Network
Solutions, Inc. and that 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
October 27, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
November 17, 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@homebuildersinstitute.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
January 8, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the
Honorable Charles K.
McCotter, Jr. (Ret.) 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 <homebuildersinstitute.com>
domain name is identical to Complainant’s HOME BUILDERS INSTITUTE mark.
2. Respondent does not have any rights or
legitimate interests in the <homebuildersinstitute.com> domain name.
3. Respondent registered and used the <homebuildersinstitute.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 <homebuildersinstitute.com> domain name on October
15, 2002. Respondent uses the domain
name to promote its business of providing consulting services, training
sessions, testing, building plans
and drawings, and online forums relating to
the real estate and home building industries.
The administrative contact for the domain name, Emma Shinn, has
presented seminars for Complainant over the years but not recently.
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 <homebuildersinstitute.com>
domain name is identical to Complainant’s HOME BUILDERS INSTITUTE mark
because the domain name fully incorporates the mark and merely
adds the generic
top-level domain “.com.” Addition of a
generic top-level domain to a mark is insufficient to distinguish a domain name
from another’s mark. 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
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Entrepreneur Media, Inc. v.
Smith, [2002] USCA9 115; 279
F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s
[w]ebsite . . . assume, as a rule of thumb, that the domain name of a
particular
company will be the company name [or trademark] followed by
‘.com.’”); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Due to
Respondent’s failure to contest the allegations of the Complaint, the Panel may
conclude that Respondent lacks rights and legitimate
interests in the domain
name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as
an admission that they have no
legitimate interest in the domain names); 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).
It may be
inferred that Respondent, through its administrative contact, had actual or
constructive knowledge of Complainant’s rights
in the HOME BUILDERS INSTITUTE
mark. Despite this Respondent registered
the <homebuildersinstitute.com> domain name and uses it to offer
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 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 <homebuildersinstitute.com> domain name
fails to establish that Respondent is commonly known by the domain name. The record also fails to establish that
Respondent was authorized or licensed to register or use domain names that incorporate
Complainant’s
marks. Therefore, the
Panel concludes that Respondent lacks rights and legitimate interests in the <homebuildersinstitute.com>
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 Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding no rights or legitimate interests where (1) Respondent is not a
licensee of Complainant;
(2) Complainant’s prior rights in the domain name
precede Respondent’s registration; (3) Respondent is not commonly known by the
domain name in question).
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 and
has been used in commerce since 1985, the domain name resolves to a website
that competes
with Complainant, and the administrative contact for the domain
name has presented seminars for Complainant in the past. 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 <homebuildersinstitute.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 <homebuildersinstitute.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 13, 2004
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