WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Leap Real Estate Systems, LLC. v. BytePlay Limited Case No. D2009-1290 1. The Parties
The Complainant is Leap Real Estate Systems, LLC., Chicago, Illinois 60657, United States of America, represented by Fitch, Even, Tabin & Flannery, United States of America.
The Respondent is BytePlay Limited, London, United Kingdom, represented internally. 2. The Domain Name and Registrar
The disputed domain name is registered with TierraNet d/b/a DomainDiscover. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 30, 2009. On October 1, 2009, the Center transmitted by email to TierraNet d/b/a DomainDiscover a request for registrar verification in connection with the disputed domain name. On October 1, 2009, TierraNet d/b/a DomainDiscover transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 October 6, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2009. The Response was filed with the Center on October 22, 2009.
The Center appointed Andrew Frederick Christie as the sole panelist in this matter on November 3, 2009. 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.
On November 4, 2009, the Complainant submitted an unsolicited Reply to the Response of the Respondent. On the same day, the Respondent submitted an unsolicited Reply to the Complainant's Reply. These documents were forwarded to the Panel. The Panel has considered these documents, and has exercised its discretion to admit them into the record of the dispute. 4. Factual Background
The Complainant is a technology company specializing in providing marketing solutions for real estate agents and brokerages. It owns United States of America trademark registrations for DOTHOME (filed on April 26, 2007 and issued on August 11, 2009) and for .HOME (filed April 25, 2007 and issued February 10, 2009), both in respect of residential real estate marketing and advertising services (class 35). It also owns a logo featuring the phrase “DotHome”, and the domain name (registered April 26, 2007). Using its registered trademarks, logo and domain name, the Complainant offers marketing and advertising tools and proprietary software that provide syndication of property listings in print and online advertising venues, and measures of effectiveness of agents' and brokers' own marketing activities. The Complainant first used its DOTHOME and .HOME trademarks in interstate commerce on August 8, 2006, when it made a presentation to decision-makers affiliated with the National Association of Realtors about its yet-to-be-established service.
The disputed domain name was first registered on April 6, 2002. The Respondent acquired the domain name from unrelated third parties at some time around November 9, 2007. It has used the domain name to resolve to a website at which the Respondent indexes web pages from real estate websites, using its “deep-crawling” search technology. The Respondent first offered this service sometime in 2006, under the brand name EXTATE and using the domain name . The service was re-branded DOTHOMES, and offered using the disputed domain name , on January 1, 2008. 5. Parties' Contentions A. Complainant
The Complainant contends that the disputed domain name is identical, or virtually identical, and confusingly similar to its DOTHOME trademark. The disputed domain name is simply the plural form of that trademark, and is indistinguishable from it.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is the owner and senior user of the DOTHOME registered trademark, and used and promoted its services under the DOTHOME unregistered trademark more than one year before the Respondent registered the disputed domain name. The Complainant has not authorized the Respondent to use its DOTHOME trademark in any manner. The Complainant had been using its DOTHOME trademark for real estate marketing services, and those services had become known in the real estate field, for more than one year before the Respondent began using the disputed domain name as the address for its real estate search website.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Respondent adopted the name “dothomes” for its search engine, and acquired the disputed domain name, only after the Complainant created and offered and promoted its DOTHOME real estate marketing service. The Respondent officially began offering listings for residential properties in the United States of America in January 2008. It is difficult to believe that the Respondent did not know of the Complainant and its trademarks at the time it registered the disputed domain name. The Respondent registered the domain name to intentionally attract, for commercial gain, Internet users looking for real estate to its site, by creating a likelihood of confusion as to source or affiliation with the Complainant's DOTHOME services. The Complainant communicated with the Respondent in July and August 2009, informing of its trademark rights and requesting the Respondent to transfer the disputed domain name to it. After receiving the second of these communications, the Respondent announced publicly that real estate was not its “cup of tea” and posted notice that the domain name was for sale in a private auction. The Complainant was not invited to participate in the private auction. This demonstrates the Respondent's bad faith intent to prevent the Complainant from obtaining registration of a domain name that corresponds to its DOTHOME trademark. The Respondent's offer to sell the domain name for more than registration costs after receiving notification of the Complainant's rights is further evidence of bad faith use of the domain name. B. Respondent
The Respondent contends that the services of the Respondent and of the Complainant cannot be confused by estate agents or casual browsers as they are clearly different – the Complainant's service being a syndication tool and the Respondent's service being a search engine.
The Respondent contends that its “DotH” brand has accumulated significant goodwill and interest since January 1, 2008 when the website was first opened, a full six months before the Complainant made first use of its trademark. Furthermore, the Respondent's “DotH” site is international, whereas the Complainant only holds a United States of America trademark registration.
The Respondent contends that, because the Complainant's website under the domain name didn't exist when the Respondent's “DotH” website was launched, the disputed domain name could not have been bought in bad faith because the public had no knowledge of the Complainant's service. The Complainant's service was first announced in July 2008, a full six months after the Respondent's “DotH” website commenced operation. The Respondent makes no money from its “DotH” website; rather, it uses it as a demonstration of its vertical search and information retrieval technology that is sold to corporate clients in industries other than real estate. The reason the Respondent failed to respond to the Complainant's initial communications was it had no faith in the case. Not having any money to fight a legal battle, and because the website was not operated for commercial gain and cost money to maintain, the Respondent decided to sell the disputed domain name to someone who would want to operate a real estate search engine. The Complainant wasn't invited to purchase the disputed domain name because nobody was. In any event, the Complainant subsequently contacted the Respondent expressing interest in purchasing the domain name. No sale eventuated because agreement on price could not be reached. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates fully the Complainant's DOTHOME trademark and the letter “s” (once the gTLD identifier is ignored). The addition of the pluralizing letter “s” does not lessen the inevitable confusion of the domain name with the Complainant's trademark that results from the domain name's incorporation of the Complainant's trademark. Thus, this Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademark. B. Rights or Legitimate Interests
The Respondent has been providing a real estate search engine service since some time in 2006. Until January 2008, that service was accessible from the domain name ; thereafter, the service was accessible from the disputed domain name. There is nothing in the evidence to suggest that this service was not a genuine service. The disputed domain name is descriptive of an online service relating to homes. Thus, it is quite plausible that the Respondent would, in good faith, choose to use the dispute domain name for its real estate search engine service. It seems to this Panel, therefore, that the Respondent has been using the domain name in connection with a bona fide offering of a service. According to paragraph 4(c)(i) of the Policy, such a use of the disputed domain name demonstrates that the Respondent has a right or legitimate interest in the domain name, so long as such use occurred “before any notice to [the Respondent] of the dispute”. The issue that therefore arises is whether the Respondent had notice of this dispute before January 2008?
To answer that question, a preliminary question must be answered: what constitutes “notice of the dispute”?
In Corinthians Licenciamentos LTDA v. David Sallen, Sallen Enterprises, and J. D. Sallen Enterprises,WIPO Case No. D2000-0461, the panel undertook a careful consideration of the issue, discussing both a reference in the Policy to the word ‘disputes' and the dictionary meaning of the word “dispute”, and concluded: “in the Policy a dispute is previous to the proceeding … [it] is not equal to “proceeding”, nor to ‘complainant's action to initiate proceedings'.” Rather, “dispute” means the controversy between the parties. For any use to be within paragraph 4(c)(i) of the Policy, “such use must effectively pre-date the cognizance of the dispute by the Respondent”. The panel in that case found that the respondent became cognizant of the dispute when it received a cease-and-desist letter from the complainant.
It seems to this Panel that it is possible for “notice of the dispute” to occur in ways other than, and thus at times earlier than, the filing of the complainant or the dispatch of a cease-and-desist letter. In Phone-N-Phone Services (Bermuda) Ltd v. Shlomi (Salomon) Levi,WIPO Case No. D2000-0040, the panel recognized that although registration of a service mark on the Principal Register at the USPTO establishes constructive notice of the mark as a matter of United States of America federal law, “[n]otice of a mark is not necessarily notice of a dispute”. In this Panel's view, it would be wrong to equate constructive notice of a registered trademark with “notice of the dispute” for the purposes of paragraph 4(c)(i) of the Policy. Something more is necessary. It seems to this Panel that it should only be said that the respondent has “notice of the dispute” when, at the very least, the respondent was, or reasonably should have been, aware both of the existence of the complainant's mark and of the other facts that are necessary for a complainant to have reasonable prospects of success in an action under the Policy.
In this case, the evidence does not establish that the Respondent was actually, or reasonably should have been, aware of the Complainant's DOTHOME trademark prior to the first cease-and-desist communication from the Complainant. The Respondent's contention that it was unaware of the Complainant's DOTHOME trademark and services when it re-branded its “E” website as “DotH”, and used the disputed domain name for that website, is plausible. The Respondent provided evidence that the Complainant's DOTHOME platform was publicly announced in July 2008. The only evidence provided by the Complainant of actual use of the DOTHOME trademark prior to this date was in the non-public presentation to decision-makers affiliated with the National Association of Realtors, made in August 2006. The Complainant asserted in a footnote to its unsolicited Reply to the Response of the Respondent that its website at “received even international hits … at least as early as May, 2007, well before the Respondent switched its name”, but did not provide any evidence in support of that assertion. In any event, the mere existence of a website at in May 2007 does not, of itself, establish that the DOTHOME trademark was being used publicly at that time, let alone that the Respondent thereby was, or reasonably should have been, aware of it.
In all these circumstances, this Panel concludes that the Respondent was not, and could not reasonably have been, aware of the Complainant's DOTHOME trademark until sometime after January 1, 2008, by which time the Respondent had commenced its bona fide offering of its real estate search engine service under the “DotH” brand and from the domain name. This Panel accordingly finds that, before any notice to the Respondent of this dispute, the Respondent used the disputed domain name in connection with a bona fide offering of goods or services. Pursuant to paragraph 4(c)(i) of the Policy, this finding establishes that the Respondent has a right or legitimate interest in the disputed domain name. The Complainant has therefore failed to establish one of the requirements for success in this action. C. Registered and Used in Bad Faith
Because of this Panel's finding on the issue of the Respondent's rights or legitimate interests in the disputed domain name, discussed above, it not necessary for the Panel to consider if the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Andrew F. Christie
Sole Panelist
Dated: November 25, 2009
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