WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Hoopers Estate Agents v. John Hooper
Case No. D2011-0328
1. The Parties
The Complainant is Hoopers Estate Agents of London, United Kingdom of Great Britain and Northern Ireland, represented by Hamlins LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Hooper of Minnesota, United States of America.
2. The Domain Name and Registrar
The disputed domain name <hoopersestateagents.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 17, 2011. On February 18, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 18, 2011, GoDaddy.com, Inc. 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 February 23, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 16, 2011.
The Center appointed Cherise M. Valles as the sole panelist in this matter on March 23, 2011. 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 relatively small, independent real estate agency “Hoopers Estate Agents”. The owner is Mr John Hooper who has practiced as a professional real estate agent since 1978. The Complainant’s business was established in 1984 and was registered for VAT purposes with HM Customs and Classification on April 1, 1984. It currently has seven full-time employees in two offices in north-west London. The Complainant has used its trade name since 1984. It handles dozens of property transaction annually and has published several corporate brochures. It is a member of the National Association of Real Estate Agents and is listed on “www.naea.co.uk”. It first registered its domain name <hoopersrealestateagents.co.uk> in August 2003 and has actively used this website to advertise properties. The Complainant has not registered its trademark, but relies on its common law trademark rights.
A person named John Hooper of Minnesota is listed as the registrant of the disputed domain name <hoopersestateagents.com>. The disputed domain name was first registered on July 13, 2008 and is currently due to expire on July 14, 2011.
5. Parties’ Contentions
The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, in its Complaint filed on February 17, 2011, the Complainant asserts that:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name is identical or confusingly similar to the unregistered trademark of the Complainant. The disputed trademark differs only from the trade name of the Complainant in its TLD, which is “.com” as compared to “.co.uk”.
The Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. There is no available evidence of bona fide use of the disputed domain name by the Respondent. The Complainant’s Internet searches indicate that there is no property business operating in the United States under the name “Hoopers Real Estate”.
The disputed domain name has been registered and used in bad faith.
The Complainant asserts that the disputed domain name should be considered as having been registered in bad faith. The screen-shot of the home page (and only page) of the website indicates the word LOSERS followed by “coming Soon […] a long list of unhappy customers”. The colors used on this page are the same as those used on the Complainant’s website. The Complainant asserts that the disputed domain name is being used for the sole purpose of disrupting and causing serious harm to the Complainant’s legitimate business.
The Complainant requests the Panel to issue a decision finding that the disputed domain name <hoopersestateagents.com> be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.
The Respondent did not provide a formal reply to the Complainant’s contentions in these proceedings.
6. Discussion and Findings
The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (the complainant) establishes each of the following elements:
(a) the disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights;
(b) the respondent has no rights or legitimate interests in respect of the disputed domain name; and,
(c) the disputed domain name was registered and is being used in bad faith.
The Complainant has the burden of proof in establishing each of these elements.
The Respondent has failed to file a formal reply in these proceedings and is therefore in default and the Panel shall draw such appropriate inferences therefrom.
A. Identical or Confusingly Similar
To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.
The Complainant has not registered HOOPERS ESTATE AGENTS as a trademark. Even though it is an unregistered trademark, the Complainant is asserting its common law rights to this name. The Complainant has asserted that it has built up significant goodwill in the name of the business over the past 27 years and through its domain name over the past 8 years. The Complainant has not provided any argument with respect to the legal standard required to establish common law trademarks rights. The Panel understands that to make a prima facie showing of common law trademark rights, the Complainant must show that HOOPERS ESTATE AGENTS has achieved secondary meaning or association with the Complainant. Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784. It is undisputed that the Complainant has used the name at issue in identifying itself in its brochures and on its website and in conducting its business over the past 27 years. Thus, the Panel is satisfied that
HOOPERS ESTATE AGENTS has achieved sufficient secondary meaning in association with the Complainant and the Complainant’s services to establish common law trademark rights. Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786.
In the light of the foregoing, the Panel finds that the disputed domain name is identical (with the sole exception of the TLD) to a trademark in which the Complainant has rights and that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.
Paragraph 4(c) of the Policy enumerates three, non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
The Respondent did not submit a formal Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate.
The Panel finds that the Respondent, at the time of registration of the disputed domain name, most likely knew or should have known of the existence of the Complainant’s business name. See, Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021. The Complainant has not authorized, licensed, permitted or otherwise consented to the Respondent’s use of the mark in the disputed domain name.
The Respondent has not attempted to make any bona fide or legitimate noncommercial or fair use of the disputed domain name. Instead the evidence suggests that the Respondent has intentionally chosen a domain name identical to the Complainant’s business name and mark in order to disparage the Complainant. In the circumstances, the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests, and the Respondent has failed to demonstrate such rights or legitimate interests. The Respondent has made no argument that it is exercising its right to free speech and commentary and thus the Panel cannot comment thereupon.
Accordingly, the Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
(ii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its website or location.
The Complainant has demonstrated that its business name is well-known and that the disputed domain name incorporates in full the business name in which the Complainant has common law trademark rights (with the sole exception of the TLD) and that the Respondent has no relationship to the Complainant. The Complainant has provided evidence to the Panel that the website associated with the disputed domain name contains one page that refers to “LOSERS […]coming soon ... a long list of unhappy customers”. There is no evidence on record that Mr. John Hooper of Minnesota is a competitor of the Complainant. However, the content of the website associated with the disputed domain name indicates that it is intended to disrupt the business of the Complainant by suggesting that its clients would be “unhappy customers”. Here again the Respondent has made no argument that it is exercising its right to free speech and commentary and thus the Panel cannot comment thereupon.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraphs 4(a)(iii) and 4(b) of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <hoopersestateagents.com> be transferred to the Complainant.
Cherise M. Valles
Dated: April 6, 2011