WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Inland Homebuilding Group, Inc. v. Douglas Blymier and Flashmasters Photography Inc.
Case No. D2003-0011
1. The Parties
The Complainant is Inland Homebuilding Group, Inc., 8401 JR Manor Drive, Suite 100, Tampa, FL 33634, of United States of America, represented by Phelps Dunbar, LLP of United States of America.
The Respondent is Douglas Blymier and Flashmasters Photography Inc., 3442 B Tampa Rd., Palm Harbor, FL 34684, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 13, 2003. On February 14, 2003, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On February 19, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2003. The Response was filed with the Center on March 5, 2003.
The Center appointed Kenneth A. Genoni as the sole Panelist in this matter on March 12, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is the owner of the service mark Inland Homes®, which is used in connection with the provision of homebuilding services.
Complainant is the owner of a system for the building of single family homes in many communities, including the greater Tampa Bay area of Florida. In this business, Complainant has developed a reputation for building homes. Complainant registered the mark Inland Homes® with the United States Patent and Trademark Office. Complainant has diligently monitored, policed and protected the use of and its rights in the Inland Homes® mark. Further, Complainant has through its practices, marketing efforts, and internal philosophy, developed and maintained considerable name recognition and goodwill associated with the Inland Homes® mark. Respondent has not denied these allegations by Complainant.
Complainant�s franchisee, IH Suncoast Homes, Inc., entered into a contract with Respondent for the construction and sale of a home in Florida. Respondent complained about a variety of the project�s aspects. It eventually became apparent that Complainant would not be able to satisfy Respondent.
In a letter dated April 10, 2002, Respondent wrote to Complainant, threatening various retaliatory actions against Inland Homes® related to the construction of Respondent�s house. Respondent threatened, inter alia, to design and publish "a website under [sic] I which I own." Respondent demanded that Complainant pay him "$50,000.00 plus our full deposit" in exchange for, among other things, return of "I to have for whatever purpose you desire." Respondent demanded a response by April 19, 2002, after which time Respondent further threatened to "publish my website." Respondent registered the domain name on April 9, 2002, one day before the date of the demand letter he sent to Inland Homes® in which he demanded payment in exchange for the release of the domain name.
Complainant, after receiving Respondent�s letter demanding payment in exchange for a transfer of the domain name, responded in a letter dated April 19, 2002. Complainant advised Respondent that the Complainant had federally registered and owned the Inland Homes® mark, that Complainant objected to Respondent�s registration of a website through a domain name that incorporated Complainant�s mark, and that Complainant would not accede to Respondent�s demand for payment in exchange for a transfer of the domain name. Finally, Complainant made a formal demand that Respondent cease and desist all uses of Complainant�s mark, including through the domain name and website.
Respondent has not de-registered the website or otherwise responded to Complainant�s demand. This dispute arose after Respondent, a disgruntled customer of Complainant, registered and threatened to use the domain name to attract an audience for Respondent�s criticism of Complainant�s business and as a means of obtaining a monetary payment for the name from Complainant.
5. Parties� Contentions
A. Complainant
1. Respondent�s domain name is identical or confusingly similar to a service mark in which Complaint has rights
Complainant states that it is the owner of the federally-registered service mark Inland Homes® which is used in connection with the provision of homebuilding services. Complainant asserts that it has through its practices, marketing efforts and internal philosophy, developed and maintained considerable name recognition and goodwill associated with the Inland Home name.
When Respondent registered the domain name the day before sending its demand letter to Complainant, Respondent created a domain name that is identical or, at minimum, confusingly similar to a trademark in which Complainant has rights that were obtained by use and registration of Inland Homes.
2. Respondent has no rights or legitimate interests in the domain name . Complainant argues as follows:
There is no affiliation between Complainant and Respondent. Complainant has not licensed or otherwise authorized Respondent to use Complainant�s mark. To Complainant�s knowledge, Respondent has not registered nor used the name "Inland Homes" as a trade name or trademark, nor has Respondent ever been known by or conducted business under this name.
Though Respondent has threatened to use the domain name as a tool for disparaging Complainant, to date the corresponding web page is merely a site hosting various commercial advertisements and promotionals. Currently, the website has no connection to Inland Homes® and serves no apparent purpose. Further, Respondent�s registration of the domain name prevents a valid use of the domain name by Complainant, and therefore wastefully restrains the legitimate and proper use of the domain name and unlawfully tarnishes Complainant�s mark. In his April 10, 2002 letter to Complainant, Respondent indicates the sole purpose for his registration of the domain name was to extract a financial payment from Complainant by stating that upon payment of the $50,000 sum, Respondent would "give [Complainant] I to have for whatever purpose [Complainant] desire[s]."
Complainant is unaware of any evidence that Respondent registered or used the domain name at issue in connection with a bona fide offering of goods or services. Indeed, Respondent�s April 10, 2002 letter, demanding payment of thousands of dollars � a sum far in excess of its out-of-pocket costs � in exchange for transfer of the domain name belies any claim of legitimate interests in the domain name. Consequently, the Policy�s second element is satisfied.
3. Respondent registered and is using the
domain name in bad faith. Complainant argues as follows:
The bad faith registration and use of the domain name by Respondent is demonstrated by the knowing incorporation of Complainant�s mark in the domain name, the timing of Respondent�s registration, and Respondent�s own statements. Similar factual scenarios consistently have been held to require a transfer of the domain name at issue.
The incorporation of Complainant�s Inland Homes® mark in the domain name registered by Respondent indicates not only the confusing similarity between the domain name and Complainant�s mark, but also Respondent�s bad faith in registering the domain name. Without a signal or other identifier to indicate that the domain name is not associated with the owner of the Inland Homes® mark, the domain name plainly intends to attract unknowing Internet users to a site that appears to be connected with or owned by Complainant. Respondent�s use of its registration of the domain name as a bargaining tool only serves to confirm that intention.
The timing of Respondent�s registration of the domain name also exposes Respondent�s bad faith. Respondent registered the domain name after entering a contractual relationship with Complainant, so at that time was necessarily aware of the Inland Homes® mark and the fact that Complainant does business under the Inland Homes trade name. Respondent�s existing relationship with Complainant belies any claim of ignorance of Complainant�s rights in the Inland Homes® mark. Further, Respondent registered the domain name the day before Respondent wrote Complainant and demanded more than $50,000 from Complainant in exchange for transfer of the domain name. The timing and sequence of Respondent�s actions clearly manifest Respondent�s sole intention in incorporating Complainant�s mark in a domain name as a means to extort a financial payment from Complainant in exchange for release of the mark and domain name.
Moreover, if a Respondent�s offer for sale is made in bad faith, then the registration also will be deemed to be in bad faith. See Educational Testing Service v. TOEFL, WIPO D2000-0044 (March 16, 2000). The Policy provides that bad faith may be shown when a Respondent registered or acquired a domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of [Respondent�s] documented out-of-pocket costs directly related to the domain name." Policy, para. 4b(i). Here, Respondent�s letter offering Complainant the domain name in exchange for a sum in excess of $50,000 provides clear evidence that Respondent registered, offered to sell and/or transfer the domain name to Complainant, and is holding the domain name in bad faith.
Respondent�s own statements -- in which it uses the domain name as a bargaining tool -- are perhaps the most revealing evidence of Respondent�s bad faith registration and use of the domain name at issue. Respondent�s April 10, 2002 demand letter, blatantly threatens to "publish [the ] website" if Complainant does not accede to Respondent�s demand for a large monetary payment. Respondent shows his intent in his statement that he would cease the disparagement of Complainant in exchange for money when he states that his "story ends when the check clears the bank." Finally, Respondent urges prompt payment by telling Complainant: "Don�t delay [sic] time is not on your side."
Respondent�s bad faith registration and use of the domain name satisfies the third element under the Policy.
B. Respondent
1. Respondent argues that Complainant has no rights to the name Inland Homes as follows:
"I would like to point out that the said name company does not own rights to the name but only to a drawing called a mark. The mark as it is referred to is a drawing of a logo. If you look at the registration it states clearly that they do not own the name in question. "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "INLAND HOMES" APART FROM THE MARK AS SHOWN.
Inland Homes has claim to a "Mark" under 1202.02(d) a "mark" is defined as a drawing. When registering the domain name I never submitted a drawing, which looks like the "Mark" that was registered.
1202.02(d) Drawing and Description of Mark in Trade Dress Applications.
In an application to register a mark with three-dimensional features, the applicant must submit a drawing that depicts the mark in a single rendition. 37 C.F.R. �2.52(a)(2)(iii). If the mark comprises the design of only a portion of a product or container, broken lines should be used in the drawing to indicate that portion of the product or container that is not claimed as part of the mark. 37 C.F.R. �2.52(a)(2)(ii). See In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89 (C.C.P.A. 1980); In re Famous Foods, Inc., 217 USPQ 177 (TTAB 1983). The matter that is shown in broken (dotted) lines does not have to be disclaimed, because it does not form part of the mark. If the drawing does not meet the requirements of 37 C.F.R. �2.52, the examining attorney should require the applicant to submit a substitute drawing.
There fore I have proven that "Inland Homes" owns a drawing or "Mark" not the rights to the name. Therefore I feel that the domain name which I have registered is legal."
2. Respondent argued as follows his rights and legitimate interest in the name:
"I would like to point out that the domain name was original purchased to put a website together based on the bad job the homebuilder did on our house. It would show pictures of the poor workmanship. No false allegations would be made since I have photographs to back it up. It was to be an information site so others would not have to go through what my wife and myself did. When doing a search using the key words of the builder others also have warnings about bad workmanship."
3. Respondent argued as follows with respect to his good faith registration and use of the name:
"The company said there was a price put on the domain name of $50,000.00. This was a misinterpretation. The price was to compensate for a 6-month period of time, which every day was spent at the building site trying to make sure the house was being built correctly. The price was based on aggravation and disappointment. In the price was a $100.00 price for the domain name. The domain name was purchased out of hurt and despair. It was purchased to keep others from loosing the dream by not choosing to build with a company who doesn�t take pride.
I feel that a domain name is only a steering device to direct consumers to a site to get important information. If every company, who has a mark/logo, is entitled to the name then why sale every extension why not stay with .com?
In other cases that have been fought the companies did own the rights to a name. These companies did not just register a "Mark".
Attached you will find a copy of a search typed in "YAHOO" key word "inland homes" you will find that negatives reports come up. Based under the rules of domain names if they win then no one can use the name even as a keyword. Keywords can direct and be misleading in representation of a company."
6. Discussion and Findings
Paragraph 4.a. of the UDRP request the Complainant to make out three elements:
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar (Paragraph 4.a.(i)); and
B. The Respondent has no rights or legitimate interests in respect of the domain name (Paragraph 4.a.(ii)); and
C. The Respondent registered and is using the domain name in bad faith (Paragraph 4.a.(iii)).
A. The Complainant has rights in a trade or service mark, with which Respondent�s domain name is identical or confusingly similar
There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.
Complainant has offered proof that it is the owner of the registered service mark Inland Homesâwhich is used in connection with the provision of homebuilding services. Complainant has also alleged that it has developed a reputation for building homes using the name Inland Homes and that it has diligently monitored, policed and protected the use of its rights in the Inland Homes name. Further, Complainant has alleged that through its practices, marketing efforts and internal philosophy it has developed and maintained considerable name recognition and goodwill associated with the Inland Homes name.
Respondent has pointed out that the registration contains a disclaimer that no claim is made to the exclusive right to use "Inland Homes" apart from the mark as shown. Respondent has not denied Complaint�s allegations of its long use of the Inland Homes name in connection with its homebuilding business. In this instance, the constructive notice given by a registered mark is not required because Respondent admitted that he knew about the use of the Inland Homes name in connection with Complainant�s business. The use by Complainant, which has not been denied by Respondent, created rights in the use of the name Inland Homes, even apart from the registration. It is therefore clear that Complainant has rights in this service mark. Since Respondent�s domain name is identical to the service mark owned by Complainant, Complainant has established that Respondent is using a domain name identical or confusingly similar to the Inland Homes service mark in which Complainant has rights.
B. The Respondent has no rights or legitimate interest in respect of the domain name
Respondent admits that it copied Complainant�s service mark and has no prior independent use. Respondent therefore has no rights or legitimate interest in this domain name.
C. The Respondent registered and is using the domain name in bad faith
The final issue is that of bad faith registration and use by the Respondent. For paragraph 4.a.(iii) to apply, the Complainant must demonstrate the conjunctive requirements that the Respondent registered the domain name in bad faith and continues to use it in bad faith.
Respondent registered the domain name primarily, if not solely, to extract money from Complainant by threatening to display disparaging remarks about Complainant�s business on Respondent�s website. He has continued making those threats and has not made any good faith use of the domain name. Other decisions have held that the registration or use of domain names by disgruntled customers in similar circumstances warrant a transfer of the domain name to the Complainant, the owner of the mark. For example, in Ourisman Dodge, Inc., v. Ourisman "Okie doke" Dodge dot com, et al., the Panel ordered that various domain names be transferred to the Complainant, which owned the marks, when the domain names were registered and used by the Respondent to feature websites critical of the Complainant and in an effort to dissuade the public from doing business with the Complainant. See WIPO D2001-0108 (March 22, 2001). See also, Compagnie de Saint Gobain v. Com-Union Corp., WIPO D2000-0020 (March 14, 2000).
There is no evidence of any intent to have a good faith use, much less evidence that the Respondent has made any good faith use of the domain name.
7. Decision
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, this Panel directs that the domain name be transferred to the Complainant.
Kenneth A. Genoni
Sole Panelist
Dated: [Indicate date decision forwarded]
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