WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Home Director, Inc. v. HomeDirector
Case No. D2000-0111
1. The Domain Name and Registrar
The domain name at issue is . This domain name is registered with Network Solutions, Inc.
2. The Parties
The complainant is Home Director, Inc. ("Home Director"), a Delaware corporation with its principal place of business at 991 Aviation Parkway, Suite 880, Morrisville, North Carolina. The respondent is "HomeDirector," with its principal place of business at 88 Rogers Road, Suite 22, Carmel, Indiana.
3. Procedural History
The Complainant initiated this proceeding by filing a complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on March 1, 2000. After confirming that the Complaint satisfied the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center notified Respondent of the commencement of this proceeding on March 7, 2000. Federal Express has confirmed that the Complaint was delivered to a person at the address provided in Respondent�s domain name registration.
Respondent did not submit any response by the March 27, 2000 deadline. Accordingly, on March 29, 2000, the Center notified Respondent that it was in default, and appointed David H. Bernstein as the sole panelist in this matter. The parties have not filed any additional submissions.
4. Factual Background
Because Respondent has not answered the Complaint, the following facts are undisputed:
In April 1996, International Business Machines Corporation ("IBM") filed an intent to use application with the United States Patent and Trademark Office ("USPTO") to register the mark HOME DIRECTOR for "computer hardware and software for use in controlling electrical functions within residences and commercial buildings, and printed instructional manuals sold as a unit." In October 1999, the USPTO issued a Notice of Allowance for the mark. In December 1999, IBM assigned the mark and pending application to Complainant. Although Complainant has not yet filed a statement of use, it has alleged (without challenge from Respondent) that, through its predecessor in interest, it has used the mark in commerce since August 1996. The Panel has independently confirmed that the mark currently is in use at the Complainant�s website, .
On November 9, 1998, Respondent registered the Domain Name with NSI. In its application, Respondent provided the following ownership and contact information:
Registrant: HomeDirector
Address: 88 Rogers Road, Suite 22
Carmel, Indiana 46032
Administrative Contact: Dom, Game,
telephone number: 317-844-0073
email: voiceagent@
Using this information, in January, 2000, Complainant called and wrote to Respondent to assert its rights in the HOME DIRECTOR mark and the domain name. On January 14, 2000, an individual identifying himself as "Chad F." returned the call. Mr. "F" refused to transfer ownership of the domain name to Complainant, notwithstanding Complainant�s offer to reimburse Respondent for its reasonable expenses associated with such transfer. Instead, the caller, who asked whether Complainant was part of IBM, insisted that Complainant tender an offer for the name. Mr. "F" also provided a new email address for further communication.
Using this new email address, on January 21, 2000, Complainant�s attorneys wrote to the Respondent to demand once more that it transfer the domain name. Four days later, Respondent replied via an email, stating:
Your reply has been recieved [sic] and taken as a threat to our legal and respectable organization. You may brand us as you wish, thats [sic] your option. We have and will remain silent about the (bona fide) use of HomeD, Inc. Your client was informed to supply the proper trademark papers, not to make an offer because the URL is NOT for sale. We have not recieved any legal trademarks for HomeDirector nor for HomeD. If you wish, as mentioned to your client, supply our organization the proper trademark papers, we would consider holding a board meeting to discuss this matter. Please do not contact us directly again without showing registered trademark papers.
The email was signed "CP. Folkening."
Complainant�s attorneys responded to this email by sending Respondent, via email and certified United Stated Postal Service mail, information on Complainant�s allowed trademark application. Respondent never replied, and the instant proceeding followed.
5. Discussion
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy") provides that, in order to succeed in its claim, Complainant must prove that each of the following three elements has been satisfied:
i. the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
ii. the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
iii. the domain name has been registered and is being used in bad faith.
A. Similarity of the Mark and Domain Name.
Complainant easily satisfies the first factor. There is little dispute but that the domain name is virtually indistinguishable from Complainant�s mark HOME DIRECTOR.
B. Respondent Has No Legitimate Interests in the Domain Name.
In the absence of a Response, it is appropriate to accept as true all allegations of the Complaint. Talk City, Inc. v. Robertson, Case No. D2000-0009 (WIPO Feb. 29, 2000). Accepting those allegations (including that there is no corporate entity in Indiana called HomeDirector, the name listed as the Registrant of the domain name), it appears that Respondent lacks any legitimate interest or right in the domain name.
The record is devoid of any conceivable justification for Respondent�s registration of this domain name. Although Mr. Folkening asserted in an email that he had a bona fide use, he also said that he would "remain silent" about that use. Given the lack of a response, it appears that he has elected to remain silent in this proceeding as well. In these circumstances, it is fully appropriate to infer a lack of a legitimate interest. Rule 14(b).
C. Respondent Registered and Used the Domain Name in Bad Faith.
In the January 14, 2000, telephone call, Mr. Folkening said he would entertain an offer to purchase the domain name and asked whether Complainant was "part of IBM." That statement, combined with the admission that the HOME DIRECTOR mark had some connection to IBM, is itself persuasive evidence of bad faith.
Further evidence of bad faith is Respondent�s use of false or misleading information in connection with the registration of the domain name. It is undisputed that the administrative contract, Game Dom, is a fictitious name used by Chad Folkening to hide his true identity. It also is undisputed that Mr. Folkening has registered numerous domain names under various pseudonyms (such as Chad Folks, CP Folks, CF Folks, and Chad Spar) and that some of these domain names are or were identical to other trademarks (such as ). This use of false contact information and the registration of other domain names that are confusingly similar to well known trademarks constitutes further evidence of bad faith. See 15 U.S.C. � 43(d)(1)(B)(vi)-(viii) [1].
6. Decision
For all of the foregoing reasons, the Panel finds that the domain name is identical or confusingly similar to Complainant�s trademark HOME DIRECTOR, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the Respondent registered and used the domain name in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel orders that the registration of the domain name be transferred to the Complainant.
David H. Bernstein
Presiding Panelist
Dated: April 11, 2000
1. Given that both parties are United States residents, it is appropriate to consider U.S. legal principles.
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