The Complainant is PN II, Inc. of Atlanta, Georgia, United States of America, represented by Adams and Reese LLP, United States of America.
The Respondent is Isaac Goldstein of Central, Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name is registered with DropC 467 LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 18, 2016. On April 19, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2016 the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 21, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 11, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 13, 2016.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on May 20, 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 is a wholly-owned subsidiary and intellectual property holding company for the homebuilding company PulteGroup, Inc., with its head offices in Atlanta, United States of America.
The Complainant has been using the trademark PULTE for more than 40 years and operates in approximately 50 markets.
The Complainant owns, among others, the US registrations Nos. 3676026, for PULTE, in international class 36, granted on September 1, 2009, being in use in commerce since 1969, and 1949747, for PULTE, in international classes 36 and 37, granted on December 19, 1995, being in use in commerce since 1972.
The Complainant is the owner of the domain names , , among others, all of them registered before November 19, 2015.
The disputed domain name was registered on November 19, 2015. The disputed domain name resolves to a website which contains sponsored links to websites offering services identical or related to those of Complainant and its competitors. 5. Parties’ Contentions A. Complainant
The Complainant argues that it owned the disputed domain name, but inadvertently failed to renew it. Shortly after the disputed domain name lapsed, the Respondent registered it.
The Complainant presents, in Annex 4 of the Complaint, a copy of the cease and desist letter it sent to the Respondent on February 26, 2016, asking it to transfer the disputed domain name to PulteGroup, Inc. The same Annex shows that the Recipient of the cease and desist letter refused to receive the letter.
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s trademark PULTE. The disputed domain name is a combination of the Complainant’s trademark PULTE with the generic word “benefits.” The main element of the disputed domain name is the trademark PULTE. The Complainant cites WIPO UDRP decisions stating that the incorporation of an entire trademark is enough to establish that a domain name is identical or confusingly similar to such a trademark, namely, T, Inc. v. Daniel Deamone,WIPO Case No. D2001-1066, Six Continents Hotels, Inc. v. Domain Park Limited,WIPO Case No. D2007-0313, and Berlitz Investment Corporation v. Marcus Santamaria,WIPO Case No. D2006-1082.
Citations of several WIPO UDRP decisions finding that the addition of generic words does not prevent a domain name from being confusingly similar to a trademark were also included in the Complainant, so as to defend that the addition of the word “benefits” does not avoid confusion between the disputed domain name and the Complainant’s trademark PULTE.
According to the Complainant, the confusion in this case is more likely to occur due to the fact that the Complainant owned the disputed domain name and the Complainant’s employees may look to the corresponding website as they did in the past.
The Complainant has no knowledge that the Respondent is known by the name “Pulte.” The Respondent is not and has not been a licensee or a franchisee of the Complainant.
The Respondent is not authorized to register and use the disputed domain name.
The Complainant contends that the Respondent is not using the disputed domain name with a bona fide offering of goods and services, or in a legitimate noncommercial or fair manner. The disputed domain name resolves to a website which contains sponsored links to websites offering services identical or related to those of the Complainant and its competitors, as demonstrated in Annex 5 of the Complaint.
According to the Complainant, the Respondent’s knowledge of the Complainant’s trademark PULTE is evidenced by the content of the Respondent’s website related to the disputed domain name, which includes links named “Pulte Homes.”
The Complainant states that the Respondent has been acting in bad faith by using the disputed domain name to redirect users from the Complainant’s website to third parties’ websites, illegitimately capitalizing on the goodwill associated with the trademark PULTE. It cites the Volvo Trademark Holding AB v. Unasi, Inc. WIPO Case No. D2005-0556 stating that “Respondent may generate unjustified revenues for each click-through by on-line consumers of the sponsored links. Respondent is therefore illegitimately capitalizing on the VOLVO trademark fame.”
The Complainant also cites WIPO UDRP decisions stressing that the opportunistic registration of lapsed domain names is evidence of bad faith, namely, Mobile Communication Service, Inc. v. WebReg, RN,WIPO Case No. D2005-1304, Donna Karan Studio v. Raymond Donn,WIPO Case No. D2001-0587 and Theodoor Gilissen Bankiers N.V. v. AbdulBasit Mallani,WIPO Case No. D2013-1229. The Complainant also cites WIPO UDRP decisions based on this same understanding towards opportunistic registration of lapsed domain name in cases in which the Respondent at issue, Mr. Isaac Goldstein, was the respondent, namely in Softronic AB v. Privacy Protect/ Frank Lancaster/ Isaac Goldstein,WIPO Case No. D2013-0637, and VIRBAC v. PrivacyP, Mantow Tian, Preventic China Systems, Isaac Goldstein,WIPO Case No. D2001-0026.
Finally, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The evidence presented demonstrates that the Complainant is the owner of the trademark PULTE in the United States of America, in international classes 36 and 37, and of the domain names , , among others.
The Complainant’s trademarks and domain names predate the disputed domain name.
The disputed domain name comprises the Complainant’s trademark PULTE.
The addition of the generic term “benefits” does not prevent the confusion between the disputed domain name and the Complainant’s trademark.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Respondent has not submitted a response to the Complaint.
There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark PULTE.
There is no evidence that the Respondent is commonly known by the disputed domain name.
There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made 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. The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark with the addition of a generic word, to resolve to a website displaying sponsored links to websites offering services identical or related to those of the Complainant, does not correspond to a bona fide use of domain names under the Policy.
For the above reasons, the Complainant has made an unrebutted prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
The trademark PULTE is registered by the Complainant in the United States of America and used for more than 40 years.
The disputed domain name is comprised by the trademark PULTE, with the addition of the generic word “benefits.”
The Respondent has no rights or legitimate interests in the disputed domain name.
The website at the disputed domain name displays sponsored links to websites offering services identical or related to those of the Complainant, including a link with the expression PULTE HOMES, which refers to the Complainant.
The Respondent has been involved in other cases of opportunistic registration of lapsed domain names.
In view of the above reasons, this Panel finds that by using the disputed domain name, the Respondent has intentionally attempted to attract, for its own or for third parties’ commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark and misleading Internet users to believe that its website belongs to or is associated with the Complainant.
This Panel finds that the Respondent’s intention of taking undue advantage of the trademark PULTE as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: Rio de Janeiro, June 3, 2016
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