WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Urban Home v. Technology Online LLC / Whois Privacy Service Pty Ltd.
Case No. D2012-2437
1. The Parties
Complainant is Urban Home of Oxnard, California, United States of America, represented by Cislo and Thomas LLP, United States of America.
Respondent is Technology Online LLC of Las Vegas, Nevada, United States of America / Whois Privacy Service Pty Ltd of Fortitude Valley, Queensland, Australia, represented by Rome & Associates, A.P.C., United States of America.
2. The Domain Name and Registrar
The disputed domain name <urbanhome.com> is registered with Fabulous.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2012. On December 13, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 16, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on December 17, 2012, 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 December 19, 2012. In response to a notification by the Center that the amended Complaint was administratively deficient, Complainant filed a second amended Complaint on December 28, 2012.
The Center verified that the Complaint together with the amended Complaints 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 January 8, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 28, 2013. The Response was filed with the Center on January 28, 2013.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on February 1, 2013. 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 is the owner of registration of the word trademark and service mark URBAN HOME on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4160123, dated June 19, 2012, in international class (IC) 20, covering “Home furnishings, namely, furniture”, and IC 35, covering “Retail and on-line store services featuring home furnishings and furniture”. Complainant’s application for trademark registration was dated May 12, 2011. Such application asserted first use and first use in commerce of December 1, 2000. Complainant disclaimed the exclusive right to use “HOME” apart from the mark as shown.
Complainant’s application for registration of the URBAN HOME trademark and service mark (hereinafter “trademark”) was initially refused pursuant to a USPTO office action on grounds, inter alia, that the trademark was merely descriptive of the goods and services which it referenced. To overcome this refusal Complainant submitted a signed declaration under Section 2(f) of the Lanham Act (15 USC §1052(f)) from its president, Constantino Papanicolaou, asserting personal knowledge that the trademark had become distinctive of the goods and services stated in the application through Complainant’s substantially exclusive and continuous use in commerce for at least the five years before the date of the declaration. Complainant’s other evidence of use consisted of a website printout dated May 12, 2011.
Complainant operates a commercial website at “www.shopurbanhome.com”. According to a Domain Tools WhoIs report submitted by Respondent, the record of registration of the domain name <shopurbanhome.com> was created on September 19, 2006, and the Administrative contact was listed as Constantino Papanicolaou. Respondent has submitted a record from the California Secretary of State showing a business entity named “Urban Home” with filing date of February 20, 2001, and its agent for service of process “Constantino A Papanicolaou”.
Complainant’s commercial URBAN HOME website refers to seven storefront locations in the State of California, including in Rancho Cucamonga, West L.A., Sherman Oaks, Oxnard, Valencia, Westlake Village and Simi Valley.
According to the Registrar’s verification, Respondent Technology Online LLC is the registrant of the disputed domain name. According to a Fabulous.com WhoIs record furnished by Complainant, the record of registration of the disputed domain name was created on March 30, 1998. The Registrar’s verification indicates “unsure as to the exact date” in response to the Center’s routine query to indicate, if possible “the date on which the current registrant registered (or acquired the registration of) the [disputed] domain name(s).” Respondent does not expressly state that it was the initial registrant of the disputed domain name. It has not provided direct documentary evidence regarding the date on which it registered or acquired the disputed domain name.
Respondent has provided evidence of use of the disputed domain name in connection with an active commercial website dating from as early as October 1999, and identifying a furniture store in Dallas, Texas from as early as October 2000. (Results from “web.archive.org”). An archive result from May 21, 2008 shows the disputed domain name being used in connection with a standard format link farm parking page with links, inter alia, to free credit reports and home furnishings. The earliest website screen capture showing content substantially similar to that presently at the address identified by the disputed domain name is from July 17, 2011.
As of the initiation of this administrative proceeding, Respondent was using the disputed domain name to direct Internet users to a website identified by the heading “urbanhome” and containing content relating to the furnishing of home interiors. Subpages of the website covered subject matter such as the use of vibrant color schemes, and home decorating ideas such as blending old with new. In addition to the substantive content, the website included a limited number of links to home furnishing suppliers, including Pottery Barn, San Clemente Furniture and AMFurnitureOnline.com. The overall appearance of Respondent’s website was not that of a standard format link farm parking page. The content was well written. There are only a few links to third-party home furnishing vendors. As of February 17, 2013, there were no sponsored links appearing on Respondent’s “www.urbanhome.com” website.1
Respondent has provided evidence that Constatino Papanicolaou, listed as the administrative contact of Complainant, and as the agent of the Urban Home legal entity in California, has been the subject of several trademark infringement lawsuits resulting in judgments adverse to him. These include Jerry’s Famous Deli, Inc. v. Papanicolaou, 383 F.3d 998 (9th Cir. 2004); and Tavistock Restaurants v. Constatino Papanicolaou, SACV11-00684, Cent. Dist. Cal., Stipulated entry of permanent injunction (amended), November 10, 2011 (defendant/Complainant represented by Complainant counsel in this proceeding).
Respondent has provided evidence that the terms “urban” and “home” are widely used in a descriptive sense in connection with commercial websites and general reporting. A Google search of “urban home” conducted by the Panel on February 17, 2013 listed Complainant’s “www.shopurbanhome.com” website as the first listing. An unrelated store in Berkeley, California, “Urban Home Consignment Furniture” was listed second. Respondent’s website identified by the disputed domain name was listed 13th. A Google search of “urbanhome” showed Complainant’s business first, with a number of sub listings; Respondent was listed fifth, and the unrelated aforementioned Berkeley store sixth.
The registration agreement in effect between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it holds rights in the trademark URBAN HOME as evidenced by registration at the USPTO. Complainant contends that the disputed domain name is identical to its registered trademark.
Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because it offers pay-per-click advertisement and articles on home design on its website, and is not a bona fide offering of goods and services. Complainant refers to the content on Respondent’s website as “freely accessible articles on home design and decoration”, and asserts that Respondent is not engaged in a “meaningful offering of goods or services.” Complainant contends that Respondent is using the disputed domain name in a field of commerce overlapping Complainant’s registered trademark, that Complainant’s mark has been used since December 2000, is well known, and that Respondent should have been aware of its trademark “when it modified the urbanhome.com domain name to contain the currently displayed content.”
Complainant alleges that Respondent has not been commonly known by the disputed domain name, and has been attempting to secure income from it without having a legitimate interest. Complainant refers to the fact that the Registrar “is a leading premium service for domain name professionals, and in order to receive an invitation to the service you must have a domain portfolio that generates at least $750 per month or you must transfer over 750 domains to Fabulous.” Complainant contends that the Registrar specializes in generating pay-per-click revenues through providing relevant content and images.
Complainant contends that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name because the content and images are presented to maximize click through rates or advertisements. According to Complainant, this diverts Internet traffic from Complainant to third parties that are in direct competition with it, and this does not constitute legitimate noncommercial or fair use.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because the domain name was registered to prevent Complainant from reflecting its mark in a corresponding domain name. Complainant argues that by holding numerous domain names for profit, Respondent has prevented Complainant from using its trademark in a corresponding domain name. Complainant contends that, although the record of registration of the disputed domain name was created on March 1988, “there is no evidence that the domain was used since the creation date in good faith or at all. In fact, the last modification date of the site is July 9, 2012…, Well after Complainant’s first use of its mark, showing that content may have been added to knowingly benefit from Complainant.” Complainant suggests that because Respondent modified its registration after the date of registration of Complainant’s trademark, Respondent had at least constructive knowledge at that time of Complainant’s registered trademark, and that Respondent’s modification of its website would infringe that trademark.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith to direct Internet users to a page that offers pay-per-click advertisement and links to third-party competitors of Complainant, which is for commercial gain and disrupting Complainant’s business. According to Complainant, Respondent acquired the disputed domain name and modified its website content in bad faith to intentionally attract for commercial gain Internet users to Respondent’s website by creating confusion with Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website.
Complainant request the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent argues that Complainant has no trademark rights to oppose to the disputed domain name because the term “urban home” is, at best, merely descriptive, and that “generic and descriptive words will generally not be transferred to a complainant even when a complainant has a trademark.” Respondent provides dictionary definitions of “urban” and “home” and states that the “union of these terms identifies a place of residence or refuse [sic] near a city.” Respondent contends that various websites, businesses, news articles and blogs offer advice, products and services for an “urban home”. Respondent indicates that the Examining Attorney at the USPTO refused registration of Complainant’s trademark because of its merely descriptive character. Respondent contends that the term “urban home” is generic, and that Complainant has no rights in it.
Respondent states that the disputed domain name was registered in 1998, before Complainant existed, and that the disputed domain name has been used since 1998 for the marketing, advertising and sale of home furnishings and decoration, and is a news and information outlet for Internet users. According to Respondent, Complainant has no rights that supersede those of Respondent. Respondent indicates that Complainants evidence of use of its trademark submitted to the USPTO is from 2011, and that Complainant’s website address domain name was registered no earlier than September 2006. Respondent refers to use of the disputed domain name in 2003 in connection with a Dallas, Texas furniture store named “Urban Home”, and that this website preceded Complainant’s 2006 initiation of its web presence. Respondent states that it “has used the Domain to broadcast its legitimate offering of its services since registering it in 1998”, whereas Complainant’s principal domain name was registered in 2006, and has been used by Complainant since 2007 only.
Respondent contends that Complainant has not provided evidence sufficient to support secondary meaning in the generic term “urban home” despite representations to the contrary to the USPTO. Respondent indicates that the USPTO has allowed registration of various trademarks incorporating the term “urban home” in the very broad class claimed by Complainant. Respondent indicates that the USPTO required disclaimer of exclusive rights in the term “home” by Complainant, and that Complainant should not be permitted to claim rights in a term that was expressly disclaimed.
Respondent argues that it has rights and legitimate interests in the disputed domain name because Respondent is in the business of marketing, advertising and selling home furnishings and decorations, and providing related news and information; the disputed domain name was registered in 1998, and up until receiving notice from the Center of this dispute, Respondent had no knowledge of Complainant’s trademark. Respondent asserts that it has made in making legitimate fair use of the disputed domain name by providing information relating to the generic interpretation of “urban home”. Respondent indicates that it is not using the disputed domain name to misleadingly divert consumers or tarnish trademarks, but rather simply to provide information. Respondent indicates that it is not important if it is directing Internet users to competitors of Complainant, because Complainant’s mark is generic and can be used to describe any of Complainant’s competitors.
Respondent indicates that use of a domain name in connection with generating pay-per-click revenues is not illegitimate per se, but must be assessed in the context of any rights the registrant may have or otherwise. Respondent argues that there is generally no ground for a complainant if a respondent registers a wholly descriptive term and uses it solely in connection with what it describes. Complainant indicates that the preponderance of its website is made up of content regarding furnishing an “urban home’, and that this is no different than use by “Urban Home Magazine”, which is a concurrent noninfringing use.
Respondent argues that it has not registered and used the disputed domain name in bad faith, and that Complainant has not satisfied its burden of proof. Respondent states that there is no evidence that it registered or acquired the disputed domain name primarily for the purposes of selling it. Respondent indicates it has received no offers to purchase the disputed domain name. Respondent states that it has not attempted to attract Internet users to its website for commercial gain because “Any semblance of to [sic] Complainant’s mark lends itself wholly to the genericness of the mark that complainant purports to enforce its exclusive rights.” Respondent indicates that nothing on its website associates it with Complainant.
Respondent argues that many of Complainant’s allegations are unsupported by evidence, and that registering and holding multiple domain names does not constitute bad faith. Respondent contends that Complainant has made no showing that Respondent modified content on its website in response to Complainant’s registration of its trademark. Respondent contends that pay-per-click advertising is a minimal portion of its website content, and is not in bad faith. Respondent states that two precedential UDRP panel decisions cited by Complainant involved typo squatting, which is not present here.
Respondent contends that while it might be deemed to be on constructive notice of Complainant’s trademark, in fact it had no knowledge of that trademark, particularly as the disputed domain name was registered well before the trademark was registered and used in commerce. Respondent argues that registration of multiple domain names is not evidence of bad faith, even if those domain names are held for profit.
Respondent argues that Complainant has acknowledged the 1998 registration date for the disputed domain name, which was years before Complainant’s first use of its trademark, which establishes that Respondent did not register the disputed domain name in bad faith, and that Complainant has the burden to show bad faith. According to Respondent, it is not its burden to demonstrate “good faith” where Complainant has failed to carry its burden. Respondent argues that if doubts remain in light of the evidence, Complainant should not succeed. Respondent argues that allegation without proof does not establish bad faith.
Respondent asks that the Panel make a finding of reverse domain name hijacking against Complainant. Respondent argues that Complainant “empowered by its counsel, have made it a practice to infringe on proprietary rights”. In this regard, it refers to trademark litigation in which a principal of Complainant has been found to have infringed trademark rights, and/or has consented to permanent injunction to resolve the alleged infringement. Respondent argues that in this proceeding Complainant, its agent, and its trademark counsel “endeavor to usurp a domain which legitimately belongs to and is used by Respondent”.
Respondent argues that the Complaint is “replete with unwarranted assumptions and unsupported allegations”, and that Complainant has distorted facts. According to Respondent, Complainant would have that any subscriber to Fabulous.com would be liable for bad faith. Respondent says that it has thoroughly set forth its rights and documented its evidence, in the face of a groundless Complaint. Respondent argues that this proceeding was initiated primarily to harass the domain name holder. Respondent argues that Complainant’s counsel has engaged in reprehensible conduct.
Respondent concludes that if the case is a close one, the Panel should lean towards Respondent’s view.
Respondent requests the Panel to reject the Complaint and to make a finding of reverse domain name hijacking against Complainant.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to the Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified the Complaint to Respondent and Respondent filed its Response in a timely manner. The Panel is satisfied that Respondent was notified of the Complaint and was afforded a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of registration of the trademark and service mark (hereinafter “trademark”) URBAN HOME on the Principal Register of the USPTO, and evidence of use of that trademark in commerce in the United States. Registration on the Principal Register establishes a presumption of validity under the Lanham Act, though such presumption is subject to challenge (15 U.S.C. § 1115(a)) (see generally Park 'N Fly v. Dollar Park and Fly, 469 U.S. 189 (1985)).2 In a proceeding alleging trademark infringement, the accused infringer is entitled to establish that the owner of registration does not enjoy trademark rights.
In this proceeding, Respondent first has alleged that the trademark term at issue, URBAN HOME, is generic for a place of residence or refuge near a city. By “generic”, Complainant means that the term refers to a genus or class of thing, and that exclusive trademark rights may not be established in respect to the genus or class of thing to which it refers. See Park 'N Fly v. Dollar Park and Fly, 469 US 189, 194; see also Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH, WIPO Case No. D2012-2211.
In support of this contention, Respondent has submitted independent Wikipedia entries for the terms “urban” and “home”, as well as news and information stories using “urban home” to refer to a residence or dwelling in a city, and Internet search results showing some businesses other than those of Complainant using the term “urban home” in their names.
The Panel concurs with Respondent’s view that the term “urban home” may be generic for a residence in a city. However, Complainant has not secured trademark registration for the term “urban home” in connection with residences located in cities. It has, instead, secured trademark registration for use of the term in connection with home furnishings, namely furniture, and services featuring home furnishings and furniture (see Factual Background, supra). URBAN HOME is not being used by Respondent to identify a city dwelling, but rather to identify furniture and related services. For this reason, the Panel does not consider Complainant’s trademark invalid or unenforceable because it is generic, and rejects Respondent’s argument that Complainant therefore lacks enforceable rights in a trademark.
Alternatively, Respondent argues that Complainant’s trademark is merely descriptive, by which it means that Complainant purports to own rights in a descriptive term for which it has not established the requisite consumer association or secondary meaning.
In response to an initial refusal by the USPTO examiner of registration for URBAN HOME on grounds of mere descriptiveness, Complainant provided two forms of evidence. The first was a declaration by its president attesting to his personal knowledge that the trademark had been in substantially exclusive and continuous use in commerce for a period of five years preceding the date of the declaration. The second was a printout of its website dated May 12, 2011.
The trademark examiner accepted the affidavit and printout submitted by Complainant as sufficient to establish secondary meaning for purposes of registering Complainant’s URBAN HOME trademark. The affidavit of the president is just that. It is a personal representation (subject to penalty for willful false claims). See USPTO Trademark Manual of Examining Procedure, October 2012, at §§611.03(a), 804.01(b) & 1212.05(d). In a litigation to enforce a trademark, the trademark registration owner may yet need to provide additional evidence of use of the trademark in commerce.
In the present administrative proceeding, Respondent has challenged the length of use of the URBAN HOME trademark asserted by Complainant, and has provided its own evidence suggesting that significant use by Complainant has taken place substantially more recently than asserted by Complainant. However, Respondent has conceded that Complainant in 2006 registered the domain name principally associated with its URBAN HOME online presence, “www.shopurbanhome.com”, and has provided evidence (in the form of a web archive printout) that Complainant maintained an online presence as URBAN HOME as of March 2007. Given the evidence that Complainant has established a number of URBAN HOME retail outlets in California, the Panel is inclined to accept that Complainant has used its trademark in commerce for at least several years.
In its application for trademark registration, Complainant asserted first use and first use in commerce of URBAN HOME in 2000, but assertions of first use do not establish any evidentiary presumption (see Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033), and there is little or no evidence on the record of this proceeding to suggest that Complainant used the URBAN HOME trademark in commerce to identify home furnishings and related services as early as 2000 (although it did establish a business entity with the name Urban Home in California in February 2001).
The Panel considers that Respondent has failed to overcome the presumption that Complainant owns rights in the trademark URBAN HOME by having acquired distinctiveness or secondary meaning in that term in connection with home furnishings, in particular furniture, and services relating thereto. Pursuant to the Lanham Act (15 U.S.C. §1057(c)), the filing date of an application for registration constitutes constructive use of the mark, conferring a nationwide right of priority, contingent on registration of the mark. See Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033. Complainant submitted its application for trademark registration to the USPTO on May 12, 2011. The Panel will otherwise revert to “when” Complainant established trademark rights in its discussion of the element of bad faith.
The disputed domain name, <urbanhome.com>, is for purposes of the Policy identical to Complainant’s URBAN HOME trademark.
Complainant has established that it owns rights in the URBAN HOME trademark, and that the disputed domain name is identical to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 a 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.” (Policy, paragraph 4(c))
Complainant has argued that Respondent lacks rights or legitimate interest because: (1) Respondent has not made a bona fide offering of goods or services prior to notice of this dispute in that, among other things, Respondent is using Complainant’s trademark to divert Internet users to competing third-party providers of goods and services in order to earn pay-per-click revenues; (2) Respondent has not been commonly known by the disputed domain name, and; (3) Respondent has not made a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers, in that its use of the disputed domain name to divert Internet users to competitors of Complainant does not constitute fair use, and because the content of Respondent’s website is designed to attract Internet users for advertising purposes, and does not represent legitimate noncommercial or fair use. Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent consistently refers to the initial registration date of the disputed domain name in 1998 as the basis for establishing its rights or legitimate interests in the disputed domain name. Nowhere in its Response does Respondent indicate when it acquired the disputed domain name, and its Registrar has not furnished that information. It appears from the evidence submitted by Respondent that other parties owned registration of the disputed domain name when it was initially registered and for some time thereafter since Respondent has not suggested any relationship to the businesses (such as a furniture store in Dallas, Texas) that were earlier identified by the disputed domain name. Had Respondent been associated with those prior registrants, Respondent presumably would have provided that information in light of the importance of such facts to this proceeding.
Respondent furnished a website printout addressed by the disputed domain name from May 21, 2008 showing a standard format link farm parking page. The first archive printout showing a website substantially similar to that operated by Respondent as of the date this proceeding is dated July 17, 2011, with a copyright notice date of 2011. In the absence of additional evidence from Respondent concerning the date on which it acquired the disputed domain name, the Panel draws the inference that Respondent acquired the disputed domain name some time at or about July 17, 2011, and began to use the disputed domain name in connection with its commercial website at or about that time.
Complainant provides evidence that the professional service, Fabulous.com, through which Respondent registers the disputed domain name, has established a business model of providing content to domain name registrants intended to attract pay-per-click advertising revenues. This business model is explicitly described in the About Us and Information Center at Fabulous.com. As noted in the Factual Background, supra, the content provided on Respondent’s website is well written and consistent with providing information to consumers regarding design and furnishing of urban residences. The content pages also include links to sellers of home furnishings, including furniture, that are in direct competition with Complainant.
Respondent appears to be operating a new model of sophisticated link farm using “better than average” content to attract Internet users to its pay-per-click advertisers. The Panel draws this inference in light of the explicit explanation of this business model by Respondent’s professional service provider, Fabulous.com.
In this respect, the Panel has been tasked with deciding whether a business model using a descriptive trademark term with website content reasonably associated with that term, and directing Internet users to third-party competitors of the trademark owner, constitutes fair use of the trademark term.
From the standpoint of the Panel, the key element here is that the website associated with the disputed domain name is advertising and providing links to businesses directly competitive with those of Complainant, the trademark owner. As noted earlier, the trademark URBAN HOME may be generic for a residence in a city, but it is not generic for home furnishings. If Respondent had used the trademark term to advertise houses or condominiums located in cities, the Panel might well determine that Respondent had rights to use that generic term in the disputed domain name in connection with that genus or class of thing.
URBAN HOME does not describe furniture, or services in connection with furniture. Respondent is not using that trademark term in a directly descriptive sense. It is instead using Complainant’s unique trademark identifier to direct Internet users to third-party advertisers competitive with the home furnishing business of Complainant. In the view of the Panel, this does not constitute fair use of Complainant’s trademark term.
The Panel has inferred that Respondent acquired the disputed domain name on or about July 17, 2011. Complainant submitted its application for trademark registration for URBAN HOME on May 12, 2011. The USPTO electronically publishes information regarding applications for trademark registration shortly after filing. The USPTO database is easily searched. The Panel considers that Respondent had at least constructive notice of Complainant’s trademark when it acquired the disputed domain name, and should have anticipated a dispute. Moreover, the Panel determines that Complainant has not made a bona fide offering of goods and services at the website identified by the disputed domain name.
There is no evidence that Respondent had been known by the disputed domain name at the time it acquired it.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is using Complainant’s distinctive trademark term to operate a commercial website directing Internet users to third-party providers of goods and services competitive with those of Complainant.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These are “(i) circumstances indicating that [the respondent has] registered or [the respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain name; or (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; or (iii) [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 [the respondent’s ] web site 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 [the respondent’s] web site or location.”
There is little or no evidence to support a finding in this proceeding that Respondent registered the disputed domain name for the purpose of selling, renting or otherwise transferring it to Complainant or a third party for valuable consideration in excess of its out-of-pocket expenses in connection therewith. There is similarly little or no evidence that Respondent registered or used the disputed domain name for the purpose of disrupting Complainant’s business.
Complainant has argued that Respondent has engaged in a pattern of registering the trademarks of third parties to prevent those third parties from registering their trademarks in corresponding domain names. But, aside from noting that Fabulous.com operates a business model which encourages ownership of registration of substantial quantities of domain names, Complainant has provided no evidence that Respondent has registered any domain name other than the disputed domain name incorporating the trademark of a third party.
Respondent appears, however, to be using the disputed domain name for commercial gain by attempting to attract Internet users to its website by creating a likelihood of confusion with Complainant’s trademark as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website. Respondent appears to be using the URBAN HOME trademark of Complainant in the disputed domain name in the expectation that Internet users will visit Respondent’s website, and thereupon links on Respondent’s website will divert those Internet users to third-party competitors of Complainant.
This brings the Panel to the jurisprudential crux of this proceeding. Namely, whether Respondent registered the disputed domain name at a time when Complainant owned rights in its URBAN HOME trademark? Further to substantial precedent of panels rendering decisions under the Policy, including this Panel, a respondent may not be found to act in bad faith to register a domain name prior to the complaining party having established rights in its trademark (with some potential narrow exceptions not relevant here). See generally Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609.
Respondent is represented by sophisticated counsel. In its Response, Respondent consistently relies on the initial registration of the disputed domain name on March 30, 1998. By any of Complainant’s own accounts, that 1998 initial registration took place prior to Complainant’s establishment of rights in the URBAN HOME trademark. And, if that initial registration had been undertaken by Respondent (or a party affiliated by ownership with Respondent), it would be exceedingly problematic for Complainant to succeed on its claim that Respondent registered and is using the disputed domain name in bad faith.
In its Response, Respondent studiously avoided any explicit statement regarding the date on which it acquired the disputed domain name, even though it presented substantial evidence from which it may be inferred that Respondent was not the initial registrant. It is the view of this Panel that if Respondent was in a position to have established that it acquired the disputed domain name prior to Complainant having establishing trademark rights, Respondent would have done that.
The best information available to the Panel suggests that the disputed domain name was acquired by Respondent on or about July 17, 2011. That date is subsequent to the priority of Complainant’s rights in its trademark, which date back at least to the filing date of its application for registration, May 12, 2011. Even if that sequencing is imperfect in terms of the date on which Respondent acquired the disputed domain name, Complainant has submitted evidence of use in commerce of what would have been an unregistered or common law trademark dating back at least several years prior to its application for trademark registration. The Panel does not consider it necessary to establish a precise date on which Complainant may have established common law trademark rights.
The Panel considered going back to Respondent for additional evidence regarding the date at which Respondent acquired the disputed domain name. However, it appears to the Panel that Respondent (as represented by counsel) should have been well aware of the importance of establishing that date for purposes of this proceeding, and the fact that it did not do that implies that it acquired the disputed domain name relatively recently.
As noted by this Panel in Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609, there is recent precedent in the Ninth Circuit Court of Appeals of the USA (see GoPets v. Hise, 657 F.3d 1024 (9th Cir. 2011)), suggesting that, at least under the Anticybersquatting Consumer Protection Act (ACPA), a domain name which is initially registered prior to the existence of trademark rights may be transferred between unrelated parties without considering the circumstances under which it has been acquired by the transferee. The Panel refers to its decision in Diet Center Worldwide, supra, for discussion and analysis of this jurisprudence. As explained in that decision, this Panel, however, considers that the transferee of a domain name unrelated to the initial registrant engages in a new registration upon the transfer. The new registration incorporates the terms of the Policy and the contract representations of the registrant. This does not mean that a transferee may not under appropriate circumstances legitimately acquire a domain name which incorporates terms in which a third party holds trademark rights. It does mean that the new registration is tested under the terms of the Policy.
The Panel determines that Respondent acquired and registered the disputed domain name after Complainant acquired trademark rights in URBAN HOME, and that Respondent is using the disputed domain name for commercial gain to attract Internet users to its website location by creating confusion as to Complainant acting as source, sponsor, affiliate or endorser of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy. Respondent registered and is using the disputed domain name in bad faith.
The Panel will direct the Registrar to transfer the disputed domain name to Complainant.
The Panel does not make a finding of reverse domain name hijacking against Complainant.
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 <urbanhome.com> be transferred to Complainant.
Frederick M. Abbott
Date: February 18, 2013
1 Panel visit of February 17, 2013.
2 The elements subject to challenge vary depending, inter alia, on whether the owner of registration has filed an affidavit of incontestability. Because registration of the URBAN HOME trademark was granted in 2012, Complainant’s trademark is not yet eligible for incontestable status. See generally regarding incontestability, Diet Center Worldwide, Inc. v. Jason Akatiff, WIPO Case No. D2012-1609.