WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
PN II, Inc. v. Tunde Ajetomobi
Case No. D2021-2048
1. The Parties
The Complainant is PN II, Inc., United States of America (“United States”), represented by Adams and Reese LLP, United States.
The Respondent is Tunde Ajetomobi, Nigeria.
2. The Domain Name and Registrar
The disputed domain name <buildwithpulte.com> 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 28, 2021. On June 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 30, 2021, 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 July 1, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 1, 2021.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 7, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 27, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2021.
The Center appointed Steven A. Maier as the sole panelist in this matter on August 9, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a corporation registered in Nevada, United States and headquartered in Atlanta, Georgia, United States. It trades under the name and trademark PULTE and offers homebuilding, real estate, mortgage lending and related services under that mark.
The Complainant is the owner of trademark registrations including the marks PULTE, PULTEGROUP and PULTE HOMES. Those registrations include, for example, United States trademark number 3676026 for the word mark PULTE, registered on September 1, 2009 and United States trademark number 1942626 for the word mark PULTE HOMES, registered on December 19, 1995 for “residential home construction services” in International Class 37.
The Complainant owns and operates domain names including <pulte.com> and <pultehomes.com>.
The Complainant was the owner of the disputed domain name until 2013 or later, but allowed that registration to lapse.
The disputed domain name has resolved to a website at “www.buildwithpulte.com”. The website offers information concerning the Complainant and a links to: “Become a Pulte Trade Partner”. The website also features advertising and links to various real estate builders and related services. The website includes the statement at the bottom of its homepage: “Build With Pulte We are not affiliated with the Pulte Group Inc.”
5. Parties’ Contentions
The Complainant states that it is the largest homebuilding company in the United States, that it has used the PULTE mark continuously and extensively since 1969 and that it spends significant funds every year on such promotion through print media, advertising and promotional campaigns and online.
The Complainant submits that the disputed domain name is confusingly similar to its PULTE trademark. It states that the trademark is the dominant element of the name and that its combination with the generic words “build with” do not prevent it from being confusingly similar to that trademark. The Complainant contends that the words “build with”, which refer to the Complainant’s services, add to rather than diminish that likelihood of confusion.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It states that it has never licensed or authorized the Respondent to use its PULTE or other trademarks, that the Respondent has not been known by that name and that the Respondent is not making bona fide commercial use of the disputed domain name. Instead, the Complainant submits that the Respondent is using the disputed domain name to lure Internet users to its website in the belief it is connected with the Complainant, and to generate revenue from those visitors by way of advertising services and links to companies which include the Complainant’s competitors.
The Complainant submits that the disputed domain name was registered and is being used in bad faith. It contends that the Respondent was obviously aware of the Complainant when it registered the disputed domain name because the Complainant was the previous owner of that name. Furthermore, the Complainant submits that Respondent’s website includes information about the Complainant, including the contents of one of the Complainant’s own press releases dated 2008.
The Complainant states that it operates a trade partners program and that both the disputed domain name and the contents of the Respondent’s website, including links to “Become a Pulte Trade Partner” are intended by the Respondent to misrepresent some official connection with that scheme.
The Complainant submits that the Respondent is using the disputed domain name to attract Internet users to its website, in the mistaken belief that it is operated by or affiliated with the Complainant, in order to generate revenue from the advertising and links contained on that website. The Complainant submits that the advertisers on that website include its direct competitors in the homebuilding sector.
The Complainant submits that the Respondent’s disclaimer is not effective to address the confusion caused by the disputed domain name and the material on the Respondent’s website, since relevant Internet users will already have been misled before seeing that disclaimer. The Complainant contends that the disclaimer is merely a gratuitous attempt to absolve the Respondent of bad faith registration and serves only as an admission by the Respondent that confusion is likely.
The Complainant also offers evidence that the Respondent has offered the disputed domain name for sale at a prince of USD 1,100, which the Complainant contends is significantly in excess of the out-of-pocket expenses properly associated with its registration.
Finally, the Complainant submits that the Respondent is engaged in a pattern of bad-faith registrations of domain names representing well-known third-party trademarks, including <globacom.xyz> (Globacom being a Nigerian telecommunications company) and <whatsappforbusiness.org>.
The Complainant requests the transfer of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established that it is the owner of registered trademark rights in the name and mark PULTE. The disputed domain name, <buildwithpulte.com>, incorporates that trademark preceded by the words “build with”. The inclusion of these dictionary words does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark and the Panel therefore determines that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds the Complainant’s trademark PULTE to be distinctive and to be widely recognized in the United States in connection with homebuilding and related services.
While the Respondent is located in Nigeria, there can be no doubt that the Respondent was aware of the Complainant trademark and business at the date it registered the disputed domain name and that it did so with the express intention of representing a connection with the Complainant. These conclusions follow from the contents of the Respondent’s website, which extensively references the Complainant and its business, and which are in fact copied from the Complainant’s own 2008 press release.
The Panel accepts the Complainant’s contentions that the disputed domain name and the contents of the Respondent’s website are liable, in particular, to mislead Internet users into believing there to be a connection between the disputed domain name and the Complainant’s trade partners program. The Panel finds the Respondent’s disclaimer to be ineffective in dispelling the confusion caused by the disputed domain name and website content, and notes that Internet users will in any event have been enticed to the Respondent’s website, including the advertising that it contains, before seeing that disclaimer.
The Panel accepts the Complainant’s submission that the Respondent is likely to benefit financially from the advertising and links contained on its website, including links to the Complainant’s competitors. The Panel therefore finds that, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy).
The Panel also notes the Complainant’s additional submissions as to evidence of bad faith, which are uncontradicted by the Respondent.
The Panel therefore finds that the disputed domain name has been registered and is being used in bad faith.
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, <buildwithpulte.com>, be transferred to the Complainant.
Steven A. Maier
Date: August 23, 2021