The Complainant is HomeE Inc. of Hermosa Beach, California, United States of America (“USA”), represented by Fulwider Patton LLP, United States of America.
The Respondent is Lorena Cagnotti of Playa del Carmen Quintana Roo, Mexico, self-represented. 2. The Domain Names and Registrar
The disputed domain names , , , are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2016. On April 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 12, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the disputed domain names and providing the contact details. The Complainant filed an amended Complaint on April 21, 2016.
The Center verified that the Complaint together with the amended Complaint (hereinafter referred both together as 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 12, 2016. The Response was filed with the Center on May 11, 2016.
The Center appointed Warwick Rothnie as the sole panelist in this matter on May 19, 2016. 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
The Complainant was founded under its name in 1997 and has been offering its services to the public since 1998. It provides a service whereby participants may list their home, boat, apartment or recreational vehicle for other members to use for vacations. It has some 60,000 registered subscribers. It has had over 500,000 visitors to its website at “www.homee”, which has been operational since 1998. In the 12 months prior to the filing of the Complaint, over 2.5 million inquiries had been transmitted between participants and there had been approximately 150,000 residence swaps. In the last three years, it has spent some USD 6.2 million in advertising and promotion of its trademark. It has been featured in numerous newspaper and magazine articles and web postings. It has also been featured in the Hollywood movie “The Holiday” featuring Kate Winslet, Jude Law, Cameron Diaz and Jack Black.
The Complainant has secured registration of HOME EXCHANGE as a trademark in the USA, Trademark No. 3,578,188, for membership services in International Class 39 relating to listing residences for temporary use. This Trademark was registered on February 17, 2009. The Complainant also has a pending trademark application in the USA.
There appear to be numerous other organisations which provide services they describe as home exchange services. At least two of them appear to have been operating in the USA since the 1950s; Homelink and Intervac Home Exchange.
All of the disputed domain names were registered on January 2, 2016. They each resolve to a “coming soon” landing page which features the Respondent’s logo, the words “Family Home Exchange” “Family Only Home Swapping Community”. Thus, it appears that the Respondent intends to compete in the provision of similar services as the Complainant. The Respondent’s logo is a stylized house in the shape of a shield with three figures depicted inside, presumably two parents and a child. The words “Home Exchange” appear in block capitals on a line underneath the word “FAMILY”, in a different colour and a smaller font. 5. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The first element that the Complainant must establish is that each disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of the registered trademark in the USA referred to above. The Complainant also claims common law rights in the name Home Exchange throughout the world as a result of its long and extensive use. It is not clear to the Panel if this claim is intended to add anything over and above the trademark registration apart than to help lead an inference that the Respondent well knew of the Complainant’s service and trademark when she registered the disputed domain names.
The disputed domain names differ from the Complainant’s trademark by the addition as a prefix of “family” and the addition as a suffix of the generic Top-Level Domain (“gTLD”).
The Complainant says that these differences do not matter. As each disputed domain name contains the whole of the Complainant’s trademark, it says each disputed domain name is confusingly similar to its trademark.
The Respondent contests this, pointing out that the words “home exchange” are descriptive of the services in question and the word “family” is also an ordinary English word. The composite expression itself as a whole is also descriptive of the services offered.
The Respondent’s argument is misplaced under this limb of the Policy. On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain name itself to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
On this basis, the Panel finds that each disputed domain name is confusingly similar to the Complainant’s trademark. The gTLD component may of course be disregarded as a functional component of the domain naming system. The prefix “family” does not remove the aural or visual resemblance of the disputed domain names to the Complainant’s trademark.
Accordingly, the Panel finds that the Complainant has established that the disputed domain names are confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:
(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or
(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. Panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See e.g., paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
The Complainant states that it has not authorised the Respondent to use the disputed domain names. Nor is the Respondent affiliated with it. The disputed domain names are plainly not derived from the Respondent’s name. These factors are usually sufficient to raise the required prima facie case.
The Respondent provides evidence of at least 13 other businesses or services which use the expression “home exchange” to describe the services in issue here. Not all of them use the expression in their name or as a source designator. Many of them operate in the USA where the Complainant’s trademark is registered. Therefore, the Respondent claims that the Complainant cannot claim exclusive rights over the expression “home exchange”.
The Respondent also points out that in Homee, Inc. v Frank Kelly, Intervac International,WIPO Case No. D2011-2239, the expression was found to be generic and the complaint failed because the respondent had rights or a legitimate interest in its domain name. That case is not directly on point, however, as the respondent commenced using the name before the Complainant and the learned panel considered that the word “Intervac” which prefixed the expression “homeexchange” in the domain name was a strong distinguishing feature.
It is not part of the Panel’s function under the Policy to question the validity of the Complainant’s registered trademark.
That said, the descriptive nature of the expression “home exchange” in the context of the services in issue in this proceeding cannot be ignored. The word “family” does not add much difference and, as the Complainant points out, at least some proportion of its customer base are families looking to arrange exchanges of family homes. The descriptive meaning of the expression “home exchange”, however, means that the scope of the Complainant’s trademark is likely to be confined to a very close degree of correspondence. The Panel considers that, while the differentiation provided by the word “family” is comparatively small particularly compared to the domain name in Homee, Inc. v Frank Kelly, Intervac International, supra, it is nonetheless sufficient for the Respondent to be able to rebut the allegation that it has no rights or legitimate interests in the disputed domain name.
It is not clear from the record whether the Respondent accepts the Complainant’s charge that she registered the disputed domain names with knowledge of the Complainant’s name and trademark. The Panel would not be prepared to find that the Respondent had constructive knowledge on the basis of the Complainant’s registration in the USA. See WIPO Overview 2.0 paragraph 3.4. Nor does the scale of the Complainant’s use necessarily lead to such an inference. Even if the Respondent did have knowledge, however, it does not follow from the record in this case that the Respondent was necessarily seeking to take advantage of the Complainant’s trademark having regard to the nature of expression “home exchange”.
Accordingly, the Complainant has not established on the record in this case that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
In light of the conclusion reached in section 5B above, the Complaint cannot succeed. Accordingly, it is not necessary to address the third requirement under the Policy. 6. Decision
For the foregoing reasons, the Complaint is denied.
Warwick A Rothnie
Sole Panelist
Date: May 30, 2016
Full & Egal Universal Law Academy