Complainant is Eric Levy of New York, New York, United States of America, represented by Gearhart Law, United States of America.
Respondent is Joseph Ahmadi of Phoenix, Arizona, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with DNC Holdings, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 12, 2014. On August 13, 2014, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On August 13, 2014, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Complainant filed an amendment to the Complaint with the Center on August 22, 2014.
The Center verified that the Complaint, together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 28, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 17, 2014. Respondent submitted an informal e-mail communication on September 6, 2014, requesting documentation concerning this proceeding. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 18, 2014.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 29, 2014. 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 describes itself as "a neighborhood information and hyperlocal hub that allows user [sic] to research and find best-fit neighborhoods based on budget, lifestyle, and user generated content (reviews, photos, star ratings)." According to Complainant, Internet users who avail themselves of Complainant's offerings "can look for neighborhoods based on search criteria."
Complainant holds United States Patent & Trademark office trademark registration 4448480 for the mark YOURNEIGHBORHOOD LOVE WHERE YOU LIVE…, registered on December 10, 2013. The mark covers the following services: "providing an on-line searchable interactive database that matches people with neighborhoods, namely, providing an on-line searchable interactive database featuring real estate listings; providing an on-line searchable interactive database that matches people with living priorities, namely, providing an on-line searchable interactive database featuring information on real estate and how it conforms to people's living priorities; providing an on-line searchable interactive database that matches people with communities, namely, providing an on-line searchable interactive database featuring information on real estate in particular communities."
Complainant's mark is represented in two shades of blue, which colors are claimed as a feature of the mark. The mark is also subject to the following disclaimer: "NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE 'YOURNEIGHBORHOOD' APART FROM THE MARK AS SHOWN." The actual USPTO registration was not annexed as an exhibit to the Complaint, and the foregoing disclaimer is nowhere mentioned by Complainant.
In the Complaint, Complainant repeatedly refers to the mark in question as "Complainant's well-known YOURNEIGHBORHOOD" mark, with no reference to the LOVE WHERE YOU LIVE portion of the mark.
The first use of the mark in commerce was April 15, 2013.
The Domain Name was first registered on November 25, 1998. It is not clear from the record how long Respondent has been the registrant of the Domain Name, but the Panel notes in this connection Complainant's observation of "the respondent's failure to use the YourNeighborhood name in more than three years since April 4th 2011." It is evidently Complainant's position, for purposes of this case, that Respondent had been the registrant of the Domain Name, at least as of April 4, 2011, since Respondent is being criticized in the Complaint for not having used the Domain Name to host a live website since that date. 5. Parties' Contentions A. Complainant
Complainant contends that its YOURNEIGHBORHOOD mark is "well-known" and that Complainant has made "extensive use" of the mark. (The record is devoid of any evidence to support these allegations.) According to Complainant, the Domain Name "completely incorporates Complainants' [sic] Mark."
Complainant also maintains that its trademark rights predate any recent use Respondent has made of the Domain Name, and hence the burden falls upon Respondent to establish a right or legitimate interest in the Domain Name. Complainant goes on to say: "Where, however, as here, Complainants' [sic] Mark is so well-known and recognized, particularly in the real estate industries, there can be no rights or legitimate use by Respondent."
Complainant alleges that Respondent is seeking to capitalize on Complainant's well-known mark by diverting Internet traffic for pecuniary gain. For these and other reasons, Complainant seeks a transfer of the Domain Name from Respondent to Complainant. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) 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.
Complainant must satisfy these elements in order to obtain the relief sought regardless of the fact that Respondent has defaulted. A. Identical or Confusingly Similar
Complainant holds rights in a mark containing the words YOURNEIGHBORHOOD LOVE WHERE YOU LIVE… Throughout the Complaint, Complainant refers solely to the YOURNEIGHBORHOOD component of this mark, and makes no mention of the other words. Nor did Complainant attach a copy of the USPTO registration as an annex to the Complaint, which would have been common practice. This omission is important, because it obscures the fact that the registration specifically disclaims any right in the text YOURNEIGHBORHOOD apart from the mark as shown. The Panel suspects legerdemain on the part of Complainant. Not only was this important information omitted from the Complaint, but Complainant actually asserted in the pleadings that "the Domain Name completely incorporates Complainants' [sic] Mark." The manifest falsity of that statement persuades the Panel that Complainant was trying to pull a fast one.
The Panel here, however, took the step of looking up the USPTO registration.
Even though the "confusing similarity" element of a claim under the Policy is generally regarded as a relatively low hurdle for a Complainant to clear, the Panel here rejects Complainant's assertion that the Domain Name is confusingly similar to a mark in which Complainant has rights. The absence of the text "love where you live" from the Domain Name is enough to thwart any claim to confusing similarity.
Accordingly, the Panel concludes that Complainant has failed to satisfy the requirement of Policy paragraph 4(a)(i), and the Complaint fails. 7. Decision
For the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Date: October 2, 2014
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