WIPO Domain Name Decision D2021-2768 for idahomerealty.agency, idahomerealty.biz, idahomerealty.com, idahomerealty.expert, idahomerealty.homes, idahomerealty.info, idahomerealty.online, idahomerealty.properties, idahomerealty.realestate, idahomerealty.rentals, idahomerealty.solutions

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Idaho Home Realty LLC v. Michael James Ohlson / Michael Ohlson / Bob Adams, VVG Case No. D2021-2768 1. The Parties

Complainant is Idaho Home Realty LLC, United States of America (“United States”), represented by JMR Law Group PLLC, United States.

Respondent is Michael James Ohlson / Michael Ohlson / Bob Adams, VVG, United States of America, represented internally.

2. The Domain Names and Registrar

The disputed domain names , , , , , , , , , , and are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2021. On August 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 24, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 27, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on September 1, 2021. Complainant filed the second amended Complaint on September 7, 2021.

The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on September 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2021. On September 29, 2021 and October 1, 2021, Respondent requested for an extension of Response due. Further to Respondent’s request for an extension to file a Response, and taking into account his stated reasons for that request, the Center in accordance with paragraph 5(e) of the Rules exceptionally granted the extension of time until October 10, 2021. On October 10, 2021, Respondent requested for another extension to file a Response; Complainant sent a rejecting email on the same day regarding Respondent’s extension request. The Response was filed with the Center on October 14, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 2, 2021. 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. Preliminary Issue Regarding the Request for Consolidation of Respondents

Complainant has submitted a request for consolidation of Respondents Michael James Ohlson, Michael Ohlson, and Robert Howard Adams in the same proceeding. In determining whether a single consolidated complaint can be brought against multiple respondents, panels typically look at whether (i) the disputed domain names or the corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. See section 4.11.2, Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

Based on the evidence submitted, the Panel accepts that the disputed domain names are subject to the common control of a single respondent, Michael James Ohlson. Indeed, Mr. Ohlson does not contest that he owns or controls all of the disputed domain names in this proceeding and, in fact, admits in his response that he registered and controls all of the disputed domain names at issue. As such, the Panel finds that consolidation would be fair and equitable to all parties. (Respondents in this proceeding will hereinafter be referred to collectively as “Respondent” in the singular form.)

5. Factual Background

Complainant, Idaho Home Realty LLC, is a real estate business based in Idaho, United States. Complainant offers various real estate services under its name Idaho Home Realty. Complainant owns a trademark registration for a logo mark with the words “Idaho Home Realty Group LLC” in connection with its real estate agency services. That registration issued to registration on March 23, 2021 with a claimed first use date of November 1, 2018. Notably, Complainant disclaimed the words “Idaho Home Realty Group LLC” in that registration. Complainant also owns a pending application for the word mark IDAHO HOME REALTY GROUP. In that application, Complainant claims a first use date of July 30, 2014 and has disclaimed the words “Idaho Realty.”

On or about June 16, 2020, Complainant obtained an assignment of all rights in two marks that include IDAHOME REALTY. These marks were apparently acquired as part of a settlement with a third party who is not involved in this proceeding. The marks include: (i) a registration for a logo mark with IDAHOME REALTY GROUP, which issued to registration on April 28, 2020 with a claimed first use of February 1, 2019; (ii) a pending intent to use application for IDAHOME REALTY GROUP that was filed on February 4, 2019. A notice of allowance issued for the IDAHOME REALTY GROUP application on May 5, 2020 and Complainant has to date filed three extensions of time to file a statement of use to perfect its rights in the application for the IDAHOME REALTY GROUP mark.1

Respondent registered the disputed domain name on January 15, 2013. At least as early as June 7, 2013, Respondent used the disputed domain name with a website promoting the real estate services offered by Respondent at that time. At some point thereafter, Respondent appears to have stopped offering real estate services, and by mid-2017 Respondent’s real estate license in Idaho terminated.

In March 2021, Complainant used the services of the GoDaddy Domain Broker Service in an attempt to purchase the disputed domain name . While there were some communications between a representative of the GoDaddy Domain Broker Service and Respondent in late March 2021 concerning a possible purchase of the disputed domain name, communications regarding an offer of USD 6,000 from Complainant for the domain name came to an end by April 15, 2021.

On April 21, 2021, Respondent registered the disputed domain names , , , , , , , , , and (collectively the “Additional Disputed Domain Names”). On or about April 28, 2021, counsel for Complainant reached out directly to Respondent regarding the disputed domain name. In early May 2021, Respondent responded and advised that he owned the Additional Disputed Domain Names. He then advised that he would only be willing to sell with the Additional Disputed Domain Names. Respondent offered to sell the entire group of disputed domain names for USD 30,000. Complainant countered with a lower price which Respondent rejected. There were further communications between Respondent and Complainant’s representative concerning the purchase of the disputed domain names but no agreement was reached.

At one point after April 21, 2021, the disputed domain names all resolved to GoDaddy parked pages with links for various real estate services. Currently the disputed domain names do not resolve to active web pages or websites.

6. Parties’ Contentions A. Complainant

Complainant asserts that it has used the name and marks IDAHO HOME REALTY and IDAHO HOME REALTY GROUP since 2013 in connection with its real estate services and that those marks on account of Complainant’s continuous and extensive use have become well-known in Idaho for real estate services. Complainant also notes that it owns a registration and application for the IDAHOME REALTY GROUP mark by way of an assignment in June 2020.

Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP marks.

Complainant argues that Respondent does not have rights or a legitimate interest in the disputed domain names as Respondent (i) has not used the disputed domain names for a bona fide offering of goods or services but as a redirect to a GoDaddy web page full of links and advertisements for various real estate related services; (ii) is not commonly known by the disputed domain names; and, (iii) registered all of the disputed domain names, except for , after discussions with a broker for GoDaddy Domain Broker Service stopped and then immediately offered them for sale to Complainant, and (i) lost any arguable legitimate interest in long ago and certainly when Respondent tried to sell that disputed domain name for a price in excess of its out of pocket cost.

Lastly, Complainant contends that Respondent registered and has used the disputed domain names in bad faith as Respondent registered the Additional Disputed Domain Names on the “heels of reneging on the sale of the domain name” for purposes of selling them to Complainant or a competitor of Complainant. Complainant further contends that Respondent’s bad faith is established by the fact that Respondent used the disputed domain names with parked pages full of links promoting competing real estate services and by offering them for sale to Complainant for USD 30,000. Complainant also argues that Respondent acted in bad faith by registering multiple disputed domain names based on Complainant’s trademarks and then using such with links to real estate related pages.

B. Respondent

(1) Respondent’s Late Response

The date for a Response was originally September 30, 2021. Respondent obtained two extensions from the Center and the Response date was pushed to October 10, 2021. On October 10, 2021, Respondent requested an additional extension and Complainant opposed such. Respondent filed its Response on October 14, 2021.

Generally, in the event there is a late response, the default course of action, pursuant to paragraph 14(a) of the Rules, would be to proceed to a decision based only on the complaint. However, under paragraph 10(c) and (d) of the Rules, the Panel has the power to extend time periods and to determine the admissibility, relevance and weight of evidence filed. The touchstone for a panelist is made clear under Paragraph 10(b): the panel must ensure that the parties are treated with fairness and equality.

Here, while Respondent’s Response was filed late, it was filed within a short delay after the Center declined a further extension and Complainant opposed such extension. While Respondent asserted the delay was due to his inability to find an attorney, the Panel notes that Respondent knew of the dispute for months. Nevertheless, Respondent filed its papers within days after the request for an additional extension was not granted, and well before a Panel was appointed and the decision-making process by the Panel began. As Respondent is self-represented, the short delay did not cause prejudice or delay the proceeding and the Response allows the Panel to fully consider the merits of this matter, the Panel will allow the late Response and take it into consideration.

(2) Respondent’s Response

Respondent rejects Complainant’s contentions. Respondent argues that it has a legitimate interest in and did not act in bad faith as he registered the domain name on January 15, 2013 before Complainant developed rights in its claimed IDAHO HOME REALTY trademark, and did so for a legitimate commercial purpose. Based on such, Respondent claims that it has prior rights in IDAHOME REALTY. Respondent also claims that the registration of the Additional Disputed Domain Names were not registered in bad faith or used in bad faith, but were part of Respondent’s legitimate commercial business purpose. Respondent maintains that it never listed the disputed domain names for sale and only offered them for sale when contacted by Complainant and its representative. Respondent also argues that there is no bad faith in selling a domain name over its out of pocket expense.

Finally, Respondent requests that the Panel make a finding that Complainant has engaged in reverse domain name hijacking (“RDNH”).

7. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names are registered and are being used in bad faith.

A. Identical or Confusingly Similar

Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See section 1.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Complainant has provided evidence that it owns a trademark registration for the IDAHOME REALTY GROUP & Design mark in the United States and for its IDAHO HOME REALTY GROUP & Design mark. Complainant also owns two pending applications for its claimed IDAHO HOME REALTY GROUP and IDAHOME REALTY GROUP word marks.

Notably, Complainant has included disclaimers in its IDAHO HOME REALTY GROUP registration and pending application. For its IDAHO HOME REALTY GROUP & Design registration, Complainant disclaimed the words “Idaho Home Realty Group,” and in its IDAHOME REALTY GROUP application Complainant disclaimed the words “Idaho Realty.” So while Complainant claims rights in IDAHO HOME REALTY alone those claimed trademark rights are limited through the registration and application that Complainant has submitted.

Complainant also claims common law rights in IDAHO HOME REALTY and IDAHO HOME REALTY GROUP through the use of such since the “summer of 2013.” In support of that claim, Complainant has provided some evidence of its use of these marks in online and print marketing and through a declaration of the owner of Complainant in which information regarding sales and advertising under these marks is provided. Based on the evidence provided, none of which is actually contested by Respondent, the Panel is satisfied that Complainant likely owns some rights in the IDAHO HOME REALTY and IDAHO HOME REALTY GROUP marks in Idaho and that Complainant acquired rights in the IDAHOME REALTY GROUP name and mark in June 2020 through an assignment of that mark and associated registration and application.

What is not evident to the Panel is when Complainant’s rights in IDAHO HOME REALTY and IDAHO HOME REALTY GROUP arose. While Complainant claims use of these marks starting in the summer of 2013, no evidence beyond the declaration of Complainant’s owner that marketing under these marks started at some point in July 2013 is provided. There are no screen shots, print materials, or other materials showing use of these claimed marks in 2013. Moreover, Complainant’s registration and pending application for the IDAHO HOME REALTY GROUP design and word marks have claimed first use dates of November 1, 2018 and July 20, 2014 respectively. Based on such, the Panel questions whether Complainant had any use of the IDAHO HOME REALTY and IDAHO HOME REALTY GROUP mark as of July 2013 as claimed in an unsubstantiated statement by the owner of Complainant.

But even if there was use of the IDAHO HOME REALTY and IDAHO REALTY GROUP names and marks that began in 2013, there are questions as to whether Complainant had any trademark rights in those names and marks at that time in light of the later disclaimers made by Complainant in its registration and application for IDAHO HOME REALTY GROUP design and word marks. Put another way, it is doubtful based on what is before the Panel that Complainant developed any trademark rights in IDAHO HOME REALTY or IDAHO HOME REALTY GROUP in 2013. At best, those rights might have started to accrue in July 2014. For purposes of this proceeding, though, the Panel is satisfied that by the time the complaint in this case was filed (and therefore also in April 2021, when Respondent registered the Additional Disputed Domain Names), Complainant had already developed some common law rights in those marks in at least Idaho in connection with its real estate services.

As the threshold for satisfying the first element is low, and panels typically find that fully incorporating the identical or a closely resembling mark in a disputed domain name is sufficient to satisfy the first element, the first element will be satisfied if a complainant’s mark is recognizable in a disputed domain name. In the instant proceeding, each of the disputed domain names fully incorporate the IDAHOME REALTY portion of Complainant’s IDAHOME REALTY GROUP mark. The disputed domain names are also closely similar to Complainant’s claimed IDAHO HOME REALTY and IDAHO HOME REALTY GROUP marks. The use of IDAHOME which is a play on “Idaho home” does not distinguish the domain names from those marks. Notably, Respondent does not contest that this is the case. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP marks in showing that the disputed domain names are identical or confusingly similar to those trademarks.

B. Rights or Legitimate Interests

Given that Complainant has not established the third element of bad faith registration as to the disputed domain name, as discussed below, the Panel does not need to address the issue of whether Respondent has rights or a legitimate interest in that disputed domain name. As to the Additional Disputed Domain Names, the Panel must now consider whether Respondent has rights or legitimate interests in these disputed domain names.

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Here, the evidence submitted shows that Respondent registered the Additional Disputed Domain Names a few days after Respondent’s communications with a GoDaddy Broker for a purchase of the disputed domain name for USD 6,000 came to a close in mid-April 2021. When Complainant’s representative contacted Respondent on April 28, 2021, Respondent then advised that he owned the Additional Disputed Domain Names. Respondent ultimately linked all of the Additional Disputed Domain Names to a sale of the disputed domain name for the increased price of USD 30,000. It thus seems more likely than not that Respondent registered the Additional Disputed Domain Names as a way of obtaining leverage for an increased price for the disputed domain name and not for some legitimate business purpose.

Indeed, in his Response, Respondent provides no evidence or explanation regarding the planned use of the Additional Disputed Domain Names, apart from conclusory statements that the registration of the Additional Disputed Domain Names was legitimate and not in bad faith. It appears to the Panel that Respondent is claiming that his registration of the Additional Disputed Domain Names in April 2021 was legitimate because Respondent had developed prior rights in IDAHOME REALTY through the registration and use of the disputed domain name in 2013. The evidence before the Panel, though does not support that claim.

While Respondent registered the disputed domain name in January 2013 and made some limited use of that disputed domain name in 2013 with a website and social media pages promoting Respondent’s real estate services, Respondent provided no evidence that he has made any use of IDAHOME REALTY with real estate services, or as a trademark owned by Respondent, at any time since 2013. Indeed, the evidence provided by Complainant shows that Respondent is no longer in the real estate business, no longer offers real estate services, and has been out of that field since at least as early as 2017 if not earlier. Thus, based on the evidence submitted, the Panel concludes that Respondent did not have any rights in IDAHOME REALTY in April 2021.

Given Respondent’s lack of rights in IDAHOME REALTY in April 2021, the registration and use of multiple domain names based on IDAHOME REALTY relating to real estate seems suspect. This is particularly so given that Respondent allowed the disputed domain names to be used with parked pages full of real estate related links offering various real estate services, some of which compete with Complainant. Moreover, given Respondent’s ready willingness to sell all of the Additional Disputed Domain Names with the disputed domain name four days after registering them, further underscores the lack of any legitimate interest in or claimed planned bona fide use of these disputed domain names.

It also appears to the Panel from the evidence submitted by the parties that Respondent was more than likely aware of Complainant’s use of IDAHO HOME REALTY in connection with its real estate services and of Complainant’s acquisition of the IDAHOME REALTY GROUP trademark registration and pending application in 2020. It thus does not appear that Respondent has a legitimate interest in the Additional Disputed Domain Names and merely registered them for purposes of profiting from them by targeting a sale to Complainant.

Given that Complainant has established with sufficient evidence that it owns rights in the IDAHOME REALTY GROUP mark and the IDAHO HOME REALTY and IDAHO HOME REALTY GROUP marks, and given Respondent’s above noted actions, the Panel concludes that Respondent does not have a right or legitimate interest in the Additional Disputed Domain Names and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.

C. Registered and Used in Bad Faith

Based on Respondent’s actions noted above and lack of rights in IDAHOME REALTY in April 2021, it is easy for the Panel to conclude that Respondent’s registration and use of the Additional Disputed Domain Names in April 2021 was done in bad faith and for purposes of profit. The more difficult issue is whether Complainant has proven that Respondent registered and used the disputed domain name in bad faith. The Panel does not believe that Complainant has sustained its burden in that regard,

Here, the undisputed evidence shows that Respondent registered the disputed domain name in January 2013 and was using such by early June 2013 for a website promoting real estate services offered by Respondent at that time. The evidence also shows that Complainant had no trademark rights in its claimed IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP marks in January 2013 when Respondent registered the disputed domain name. Indeed, Complainant had not even commenced use of any of those marks at that time or in June 2013 when Respondent used the disputed domain name with his real estate related website. There is also no evidence before the Panel that conceivably could suggest that Respondent was acting in bad faith in January 2013 when he registered the disputed domain name, such as evidence that would show that Respondent was making some sort of anticipatory registration of the disputed domain name to take advantage of possible rights Complainant might develop in the future in the IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP, such as by way of example public announcements by Complainant or news articles regarding Complainant’s plans.

Simply put, Complainant has provided no evidence and has not established that Respondent registered the disputed domain name in bad faith. Accordingly, as Complainant needs to prove by a preponderance of the evidence the conjunctive requirement of bad faith registration and use, the Panel concludes that Complainant’s Complaint regarding the disputed domain name fails under the third element.

D. Reverse Domain Name Hijacking

Respondent has requested that the Panel make a finding that Complainant has engaged in RDNH.

As Complainant has prevailed as to the Additional Disputed Domain Names, there is no basis for a request for RDNH as to those disputed domain names. As Complainant did not prevail as to the the disputed domain name, the Panel considers whether the Complainant has engaged in RDNH as to that disputed domain name.

Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at RDNH or was brought primarily to harass the domain name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” Moreover, under Paragraph 1 of the Rules RDNH is defined as “using the Policy in bad faith to attempt to deprive the registered domain name holder of a domain name.”

To be sure, when a complaint has failed, such does not automatic result in a finding of RDNH. The touchstone under Rule 15(e) is for a panel to determine whether the complaint constitutes an abuse of the administrative proceeding.

Here, there can be no doubt that Complainant knew at the time it filed its Complainant that Respondent had registered the before Complainant began any use of if its claimed IDAHO HOME REALTY and IDAHO HOME REALTY GROUP marks. Complainant was thus well aware that it had no trademark rights in those marks or in IDAHOME REALTY GROUP (a mark Complainant acquired in June 2020) in January 2013 when Respondent registered the disputed domain name. Notably, Complainant and its counsel fully knew that Respondent claimed to have registered and used the disputed domain name in 2013 given that (i) there were a number of communications between Respondent and Complainant’s representatives concerning the disputed domain names between April and July 2021 in which Respondent claimed rights in the disputed domain name since 2013, (ii) Complainant provided a draft of its UDRP complaint in May 2021 that Respondent rejected and again reiterated on June 2, 2021 that “I have owned the domain name since 2013, which I owned and operated a business under,” and (iii) Complainant’s counsel provided a declaration with an archival screen shot from Respondent’s website at the disputed domain name from June 7, 2013.

What is telling here is that Complainant and its counsel, who essentially claimed in communications with Respondent to be well versed in the UDRP as he claimed to have “won many of them,” failed to submit any documentary evidence establishing that Complainant had trademark rights in IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, or IDAHOME REALTY GROUP in January 2013 when Respondent registered the disputed domain name. Indeed, Complainant not only failed to put in evidence establishing the existence of such rights in January 2013, but claimed common law rights in IDAHO HOME REALTY going back to the “summer of 2013” that were unsupported by any evidence beyond an unsubstantiated statement from Complainant’s owner that marketing under that mark commenced “since obtaining my license in July 2013.” Given the June 7, 2013 archival screenshot Complainant’s counsel provided for the website at the disputed domain name, it seems implausible that Complainant and its representative were not aware that Respondent had registered that disputed domain name well before Complainant had acquired any trademark rights in the IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP marks.

Given Complainant’s lack of rights in IDAHO HOME REALTY, IDAHO HOME REALTY GROUP, and IDAHOME REALTY GROUP marks when Respondent registered the disputed domain name or its use with a website in June 2013 Complainant and its counsel were, or should have been aware, that Complainant did not have sufficient rights in those marks to succeed in a UDRP proceeding concerning the disputed domain name. Complainant and its counsel ought to have known that it could not succeed under any fair interpretation of the facts reasonably available prior to the filing of the Complaint as against the disputed domain name and that basing its Complaint as to that disputed domain name on the barest of allegations without any supporting evidence was doomed to fail and an abuse of the UDRP process (WIPO Overview 3.0, section 4.16).

Accordingly the Panel finds that the Complainant has abused the administrative proceeding and engaged in RDNH with respect to the disputed domain name while recalling equally that Respondent has engaged in bad faith by registering the Additional Disputed Domain Names.

8. 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 names , , , , , , , , , are transferred to Complainant:

As to the disputed domain name , the Complaint is denied for the aforementioned reasons.

Georges Nahitchevansky
Sole Panelist
Date: November 18, 2021

1 While Complainant referenced its federal registrations and applications for its claimed trademarks in its Complaint, no printouts of these registrations or applications were provided. The Panel reviewed the details of such registrations and applications on the publicly available database of the United States Patent and Trademark Office.

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