WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
American Home Shield Corporation v. Domains By Proxy / Morris Chera
Case No. D2017-1142
1. The Parties
The Complainant is American Home Shield Corporation (“AHS”) of Memphis, Tennessee, United States of America (“United States” or “U.S.”), represented by Partridge Partners PC, United States.
The Respondent is Domains By Proxy of Scottsdale, Arizona, United States / Morris Chera of Brooklyn, New York, United States, represented by Steven Rinehart, United States.
2. The Domain Name and Registrar
The disputed domain name <americanhomeshield.reviews> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2017. On June 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 13, 2017, 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 the Complainant on June 16, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on June 16, 2017.
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 the Respondent of the Complaint, and the proceedings commenced on June 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2017. The Response was filed with the Center on July 10, 2017.
At the request of the Complainant, the administrative proceeding was suspended for settlement discussions on July 14, 2017, but subsequently reinstituted on August 11, 2017, at the request of the Complainant.1
The Center appointed William R. Towns as the sole panelist in this matter on August 23, 2017. 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, headquartered in Memphis, Tennessee, provides home warranty services under the AMERICAN HOME SHIELD trademark, used by the Complainant in commerce since as early as 1972. The Complainant currently provides its services to over 1.5 million homeowners in the United States. The Complainant holds several U.S. trademark registrations for AMERICAN HOME SHIELD, including word marks registered by the United States Patent and Trademark Office (“USPTO”) on February 20, 1996, and July 10, 2012, and word plus design marks registered by the USPTO on May 8, 2012, and October 30, 2012, as shown below.2
The Respondent registered the disputed domain name on April 14, 2017, according to the Registrar’s WhoIs records. The disputed domain name resolves to a web page at “www.americanhomeguard.com/redirect”. Although ostensibly an “error” page, the page includes a message inviting Internet visitors to “Get in touch with the site owner.” Clicking on a “Go Back Home” link directly below this message directs the visitor to the website of American Home Guard, a direct competitor of the Complainant.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s AMERICAN HOME SHIELD mark because it incorporates the Complainant’s mark in its entirety. According to the Complainant, the addition of the generic Top-Level Domain (“gTLD”) “.reviews” does not lessen the confusing similarity of the disputed domain name to the Complainant’s mark. The Complainant asserts that AMERICAN HOME SHEILD is a well-known mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant avers that the Respondent is not affiliated with the Complainant, and not licensed or otherwise authorized to use the Complainant’s AMERICAN HOME SHIELD mark. The Complainant further asserts that the Respondent is not generally known by the disputed domain name and has not acquired trademark or service mark rights relative to the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered and began using the disputed domain name long after the Complainant’s adoption and registrations of its AMERICAN HOME SHIELD mark, and that the Respondent had constructive and actual knowledge of the Complainant’s mark by reason of such long preceding trademark registrations and the fame of the AMERICAN HOME SHIELD mark. According to the Complainant, the Respondent registered and is using the disputed domain name intentionally to create a likelihood of confusion with the Complainant’s mark, by using the disputed domain name to redirect Internet visitors to the website of American Home Guard, a direct competitor of the Complainant.
B. Respondent
The Respondent submits he registered the disputed domain name in good faith intending to use the disputed domain name with a website to provide reviews of the Complainant’s insurance plans. The Respondent represents that he is in the same or similar business as the Complainant and had an interest in providing reviews of the Complainant, but never intended to impersonate the Complainant. According to the Respondent, the website would be noncommercial. The Respondent explains that the website to which the disputed domain name resolves was under his control only for a matter of days, and that the nameservers were set by default.
The Respondent maintains that his intent to use the disputed domain name with a legitimate review or criticism site is demonstrated by the registration of the disputed domain name using the “.reviews” gTLD. According to the Respondent, this presence of the gTLD “.reviews” obviates any initial interest confusion because consumers will understand that the disputed domain name, which incorporates the Complainant’s AMERICAN HOME SHIELD mark, is dedicated to reviewing the trademark holder’s products or services.
The Respondent further contends that the Complainant has no enforceable trademark rights in AMERICAN HOME SHIELD, asserting that (1) the Complainant’s mark is geographically descriptive (i.e., “American”), and (2) “Home Shield” is merely descriptive of the products or services provided by the Complainant. The Respondent submits that the mark AMERICAN HOME SHIELD is generic, or at best suggestive, and that in the latter event the Complainant has failed to provide evidence of acquired distinctiveness. The Respondent contends that even a registered trademark provides no rights under the Policy, if it is deemed descriptive or generic by a panel. The Respondent maintains he registered the disputed domain name based on its attraction as dictionary words or common terms, and not because of its confusing similarity with the Complainant’s mark, and submits that the Complainant has failed to meet its burden to prove bad faith registration and use under the Policy.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <americanhomeshield.reviews> is confusingly similar to the AMERICAN HOME SHIELD mark, in which the Complainant has demonstrated rights through registration and use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.3 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the AMERICAN HOME SHIELD mark is clearly recognizable in the disputed domain name.4
The gTLD “.reviews” does not serve to dispel the confusing similarity of the disputed domain name with the Complainant’s mark. Top-Level Domains generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.5 In this instance the disputed domain name is identical to the Complainant’s mark when disregarding the gTLD “.reviews”. See, e.g., De Beers Intangibles Limited v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-1465 (<debeers.feedback> is identical to complainant’s DE BEERS mark).
The Panel finds unpersuasive the Respondent’s assertion that the AMERICAN HOME SHIELD mark is either generic or merely descriptive of the Complainant’s goods and services. The Complainant’s mark is entitled to a presumption of validity by virtue of its registration with the USPTO. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. While the AMERICAN HOME SHIELD mark registrations include a disclaimer of the Complainant’s exclusive rights to use “American Home” apart from marks as shown, the disputed domain name is not comprised solely of the disclaimed language. Instead, the Respondent has appropriated in its entirety the Complainant’s AMERICAN HOME SHIELD mark. The AMERICAN HOME SHIELD mark is clearly recognizable in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the AMERICAN HOME SHIELD mark. Regardless, the Respondent registered the disputed domain name, which is confusingly similar if not identical to the Complainant’s AMERICAN HOME SHIELD mark. The Respondent is using the disputed domain name to divert Internet users to the website of American Home Guard, a direct competitor of the Complainant. The Respondent acknowledges that he is a competitor of the Complainant.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the Respondent has been commonly known by the disputed domain name, even if he has acquired no trademark or service mark rights; or
(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent claims that he registered the disputed domain name intending to launch a noncommercial website containing reviews of the Complainant. Paragraph 4(c)(iii) of the Policy provides that a respondent may demonstrate rights or legitimate interests in a domain name by providing evidence of “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the [complainant’s] trademark or service mark”.
An assessment of a claim of fair use under paragraph 4(c)(iii) of the Policy entails consideration of the nature of the domain name, as well as circumstances beyond the domain name itself, and issues of commercial activity. The correlation between a disputed domain name and the complainant’s mark often is a central inquiry; the respondent’s use of a domain name is not “fair” in circumstances where the domain name falsely suggests affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. Eli Lilly and Company and Novartis Tiergesundheit AG v. Manny Ghumman / Mr. NYOB / Jesse Padilla, WIPO Case No. D2016-1698. The domain name must not be used as a pretext for commercial gain or other purposes inuring to the respondent’s benefit. See WIPO Overview 3.0, section 2.5 and cases cited therein.
After thorough review of the attendant facts and circumstances, the Panel concludes that the Respondent has not demonstrated that he is making a legitimate noncommercial or fair use of the disputed domain name within the contemplation of paragraph 4(c)(iii) of the Policy. The Respondent plainly was aware of the Complainant and the Complainant’s AMERICAN HOME SHIELD mark when registering the disputed domain name, which appropriates the Complainant’s mark in its entirety. The Respondent has made no effort to use the disputed domain name in any manner that conceivably could be considered a legitimate noncommercial or fair use. Rather, the Respondent’s only use of the disputed domain name has been to divert Internet users to the website of American Home Guard, a home warranty company with whom the Respondent likely is associated, through the creation of Internet user confusion. Internet visitors redirected to the American Home Guard website easily could be confused whether the website they have arrived at is affiliated with, sponsored or endorsed by the Complainant.
Having regard to the foregoing, the Panel finds the Respondent’s claim to have registered the disputed domain for a legitimate noncommercial purpose to be pretextual. The Respondent is using the disputed domain name to exploit and profit from the Complainant’s rights in its AMERICAN HOME SHIELD mark, by misleadingly diverting Internet users to the American Home Guard website. The Respondent has provided no credible evidence of use or preparations to use the disputed domain name for any legitimate purposes, and in the attendant circumstances it would appear that the Respondent registered the disputed domain name for purposes of disrupting the business of a competitor.
Further, there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, or evidence that the Respondent has been commonly known by the disputed domain name. In short, the Respondent has not brought forward any credible evidence to support a claim of rights or legitimate interests in the disputed domain name within the meaning of paragraph 4(c) of the Policy.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. 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 and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed 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 the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed 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) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is evident that the Respondent was aware of the Complainant’s AMERICAN HOME SHIELD mark when registering the disputed domain name. As discussed above, the Respondent intentionally has used the disputed domain name to misleadingly divert Internet users to the American Home Guard website. The Respondent by his actions has clearly demonstrated that his primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights for commercial gain, and in all likelihood to disrupt the business of the Complainant, including the use of bait and switch tactics.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) 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 <americanhomeshield.reviews> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: September 3, 2017
1 On July 10, 2017, the same day the Response was submitted to the Center, the Respondent by email to the Center explained he had been overseas. The Respondent stated the disputed domain name was acquired by an employee without the Respondent’s knowledge and that he would not have “authorized a purchase of anything remotely close to a competitor[’]s name.” The Respondent further indicated he would like to settle the dispute by forfeiting the disputed domain name. The administrative proceeding thereafter was suspended by the Center on July 14, 2017, at the request of the Complainant, and subsequently reinstituted on August 11, 2017, at the request of the Complainant, after the Parties were unable to reach an agreement.
2 The Complainant did not submit copies of the registration certificates for the AMERICAN HOME SHIELD trademarks it relies upon (hereinafter referred to as the “AMERICAN HOME SHIELD mark”). The Panel has reviewed the trademark registrations on the USPTO’s publicly available Trademark Electronic Search System (TESS). Each of the Complainant’s subsisting AMERICAN HOME SHIELD registrations includes a disclaimer of any exclusive rights to “American Home” apart from the mark as shown. The Complainant did not disclose the disclaimers in the Complaint.
3 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
4 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
5 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein. See also WIPO Overview 3.0, section 1.8.