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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Meritage Homes Corporation v. Karen Mathew

Case No. D2011-0727

1. The Parties

The Complainant is Meritage Homes Corporation of Scottsdale, Arizona, United States of America, represented by Knobbe, Martens, Olson & Bear, LLP, United States of America.

The Respondent is Karen Mathew of Kochi, Kerala, India.

2. The Domain Name and Registrar

The disputed domain name <meritagehomes.net> is registered with Net 4 India Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2011. On April 27, 2011, the Center transmitted by email to Net 4 India Limited a request for registrar verification in connection with the disputed domain name. On April 29, 2011, Net 4 India Limited 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 May 2, 2011. The Center suspended the Administrative Proceedings following a Notification of Settlement Negotiations and Request for Suspension from the Complainant on May 3, 2011. The Administrative Proceedings were suspended until June 4, 2011. The Center then received a Request for Extension of Suspension from the Complainant on June 1, 2011 which extended the suspension the Administrative Proceedings until July 4, 2011. On June 28, 2011, the Center received another request from the Complainant for an extension of the suspension. The suspension of the Administrative Proceedings was extended again until August 1, 201. Finally, the Complainant requested a further extension to the suspension to the Administrative Proceedings on July 27, 2011. The suspension was extended a final time until August 28, 2011. On August 26, 2011, the Complainant requested the re-institution of the proceedings, which was notified by the Center on August 29, 2011.

In accordance with the Rules, paragraph 5(a), the due date for Response was reset to September 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2011.

The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on October 4, 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 Meritage Homes Corporation, a real-estate developer and home builder that is listed as a Fortune 1000 company. The Complainant’s business involves designing and building houses in the Southern and Western United States of America. Based in Scottsdale, Arizona, in the United States of America, the Complainant has been in this business for almost 25 years and has built more than 65,000 houses across the Southern and Western United States in this time.

The Complainant is the owner of several trade marks for or incorporating MERITAGE or MERITAGE HOMES, which are registered in the United States of America.

The Complainant uses the domain name <meritagehomes.com> for its main website.

The Complainant has been operating under the MERITAGE brand since 1988 when the company was incorporated, although it is not clear from the documentary evidence provided how long the Complainant has been using the MERITAGE or MERITAGE HOMES brand on its website. However, the use of the MERITAGE brand since 1988, and the registration of the MERITAGE and MERITAGE HOMES trade marks predates the registration of <meritagehomes.net> (hereafter the Disputed Domain Name).

5. Parties’ Contentions

A. Complainant

Identical or Confusingly Similar

The Complainant contends that the Disputed Domain Name is identical and confusingly similar to its trade marks in that it incorporates the Complainant’s trade marks MERITAGE HOMES and MERITAGE in their entirety.

Rights or Legitimate Interest

The Complainant submits that the Respondent has no rights or legitimate interests in the Disputed Domain Name, and is not making a legitimate noncommercial or fair use of the Disputed Domain Name. In support of this, the Complainant relies on the following facts:

1) the Complainant has found no evidence to suggest the Respondent has ever been commonly known or identified by the Disputed Domain Name;

ii) the Complainant has found no evidence that the Respondent has used the Disputed Domain Name for any purpose other than for commercial gain by misleadingly diverting customers to the Complainant’s competitors;

iii) the Complainant has not authorized the Respondent’s use of the MERITAGE HOMES or MERITAGE trade marks in connection with the Disputed Domain Name and the Respondent is not related to the Complainant in any way;

iv) the Complainant has found no evidence to suggest the Respondent is using the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services;

v) the Respondent has not provided any disclaimers of affiliation or disclosure of the fact that the Complainant and Respondent do not have a relationship, but instead encourages a belief that such a relationship exists through prominent use of the Complainant’s trade marks.

Registered and Used in Bad Faith

The Complainant contends that the Disputed Domain Name was registered, and is being used in bad faith on the basis that:

i) the Disputed Domain Name is being used, for commercial gain, to create a likelihood of confusion with the Complainant’s mark as to source, affiliation or endorsement of the Respondent’s goods at that website;

ii) the website at the Disputed Domain Name claims in writing that it contains sponsored links related to <meritagehomes.net> and provides links to Complainant’s competitors for its own financial gain;

iii) the Respondent has not provided a substantive response to a cease and desist letter sent by the Complainant requesting that the Disputed Domain Name be transferred.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions in the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant has rights in trade marks registered for MERITAGE and MERITAGE HOMES and substantial goodwill in the domain name <meritagehomes.com>.

The Disputed Domain Name incorporates the MERITAGE and MERITAGE HOMES trade marks in their entirety, and in fact the Disputed Domain Name is identical to the MERITAGE HOMES trade mark. The Disputed Domain Name does not contain any distinctive elements or any other words that would distinguish it from the MERITAGE HOMES trade mark so as to avoid confusion.

The top-level suffix <.net> is disregarded for the purposes of applying the “identical or confusingly similar” test as it is a technical requirement of the registration. As the MERITAGE HOMES trade mark and the Disputed Domain Name are identical, it is possible to conclude that these would be likely to lead to confusion on the part of consumers.

Accordingly, the Panel finds that the Complainant has satisfied the first element under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel has observed, through limited investigations which it is entitled to undertake (Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038) that the Disputed Domain Name is no longer in operation. However, from the evidence of use of the Disputed Domain Name provided by the Complainant, the Respondent’s use of the Disputed Domain Name was clearly for commercial purposes. The intention behind the featured “sponsored links” of the Disputed Domain Name was obviously to generate revenue through advertising and “pay-per-click” revenue; no actual products or services were offered via the Disputed Domain Name. The only function of the site was to misleadingly attract consumers and then redirect them to the websites of other construction companies and home builders. These other companies are essentially the Complainant’s competitors; this indicates a use of the Disputed Domain Name which cannot be considered “fair use” or bona fide.

The Respondent has not challenged the Complainant’s submission that there is no evidence that the Respondent has ever been commonly known or identified by the Disputed Domain Name or by the Complainant’s trade marks. Nor does the Respondent challenge the Complaint’s assertion that the Respondent has not been licensed or otherwise authorized to use the Complainant’s trade marks and that there is no relationship between the Complainant and Respondent. Prima facie, this is enough to establish for the purposes of the Policy that the Respondent has no rights or legitimate interest in the Disputed Domain Name. The Respondent has not rebutted the Complainant’s prima facie case.

Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The trade mark MERITAGE HOMES was registered by the Complainant four years before the Disputed Domain Name was registered. At the time the Respondent registered the Disputed Domain Name, the Respondent was most probably aware of the Complainant’s website, and so chose a domain name based on this web address and trademarks with the intention to attract consumers to the Disputed Domain Name by creating a likelihood of confusion, for the purposes of commercial gain. The Disputed Domain Name features no links or references to the Complainant’s business, only links to competitors of the Complainant and therefore it can only be concluded that the choice to register the Disputed Domain Name was made in bad faith. The fact that the Disputed Domain Name has been used to misleadingly attract consumers and then redirect them to the websites of the Complainant’s competitors is clear evidence of registration and use in bad faith, according to paragraph 4(b)(iv) of the Policy.

Moreover, evidence has been submitted to the Panel to show that the Complainant and Respondent, at the Respondent’s request, attempted to enter into negotiations for the transfer of the Disputed Domain Name. The proceedings were temporarily suspended as a result, in the hope an agreement could be reached. It appears, although the correspondence connected with these negotiations is not complete, that the negotiations were aborted due to the Respondent’s request that USD 1,500 be paid by the Complainant to the Respondent in consideration for the transfer of the Disputed Domain Name. These failed negotiations, and the apparent consideration requested by the Respondent, would demonstrate the Respondent’s attempt to transfer the Disputed Domain Name to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs. This would be a further indication of bad faith, according to paragraph 4(b)(i) of the Policy.

Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) of the Policy.

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 <meritagehomes.net> be transferred to the Complainant.

Charters Macdonald-Brown
Sole Panelist
Dated: October 18, 2011

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