Home Director, Inc. v. HomeDirector

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE PANEL DECISION

Home Director, Inc. v. HomeDirector

Case No. D2000-0111

1. The Domain Name and Registrar

The domain name at issue is homedirector.com. This domain name is registered

with Network Solutions, Inc.

2. The Parties

The complainant is Home Director, Inc. ("Home Director"), a Delaware

corporation with its principal place of business at 991 Aviation Parkway, Suite

880, Morrisville, North Carolina. The respondent is "HomeDirector,"

with its principal place of business at 88 Rogers Road, Suite 22, Carmel, Indiana.

3. Procedural History

The Complainant initiated this proceeding by filing a complaint with the World

Intellectual Property Organization Arbitration and Mediation Center (the "Center")

on March 1, 2000. After confirming that the Complaint satisfied the Rules for

Uniform Domain Name Dispute Resolution Policy (the "Rules"), the Center

notified Respondent of the commencement of this proceeding on March 7, 2000.

Federal Express has confirmed that the Complaint was delivered to a person at

the address provided in Respondent’s domain name registration.

Respondent did not submit any response by the March 27, 2000 deadline. Accordingly,

on March 29, 2000, the Center notified Respondent that it was in default, and

appointed David H. Bernstein as the sole panelist in this matter. The parties

have not filed any additional submissions.

4. Factual Background

Because Respondent has not answered the Complaint, the following facts are

undisputed:

In April 1996, International Business Machines Corporation ("IBM")

filed an intent to use application with the United States Patent and Trademark

Office ("USPTO") to register the mark HOME DIRECTOR for "computer

hardware and software for use in controlling electrical functions within residences

and commercial buildings, and printed instructional manuals sold as a unit."

In October 1999, the USPTO issued a Notice of Allowance for the mark. In December

1999, IBM assigned the mark and pending application to Complainant. Although

Complainant has not yet filed a statement of use, it has alleged (without challenge

from Respondent) that, through its predecessor in interest, it has used the

mark in commerce since August 1996. The Panel has independently confirmed that

the mark currently is in use at the Complainant’s website, www.home-director.com.

On November 9, 1998, Respondent registered the Domain Name homedirector.com

with NSI. In its application, Respondent provided the following ownership and

contact information:

Registrant: HomeDirector

Address: 88 Rogers Road, Suite 22

Carmel, Indiana 46032

Administrative Contact: Dom, Game,

telephone number: 317-844-0073

email: voiceagent@hotmail.com

Using this information, in January, 2000, Complainant called and wrote to Respondent

to assert its rights in the HOME DIRECTOR mark and the homedirector.com domain

name. On January 14, 2000, an individual identifying himself as "Chad F."

returned the call. Mr. "F" refused to transfer ownership of the domain

name to Complainant, notwithstanding Complainant’s offer to reimburse Respondent

for its reasonable expenses associated with such transfer. Instead, the caller,

who asked whether Complainant was part of IBM, insisted that Complainant tender

an offer for the name. Mr. "F" also provided a new email address for

further communication.

Using this new email address, on January 21, 2000, Complainant’s attorneys

wrote to the Respondent to demand once more that it transfer the domain name.

Four days later, Respondent replied via an email, stating:

Your reply has been recieved [sic] and taken as a threat to our legal and respectable

organization. You may brand us as you wish, thats [sic] your option. We have

and will remain silent about the (bona fide) use of HomeDirector.com, Inc. Your

client was informed to supply the proper trademark papers, not to make an offer

because the URL is NOT for sale. We have not recieved any legal trademarks for

HomeDirector nor for HomeDirector.com. If you wish, as mentioned to your client,

supply our organization the proper trademark papers, we would consider holding

a board meeting to discuss this matter. Please do not contact us directly again

without showing registered trademark papers.

The email was signed "CP. Folkening."

Complainant’s attorneys responded to this email by sending Respondent, via

email and certified United Stated Postal Service mail, information on Complainant’s

allowed trademark application. Respondent never replied, and the instant proceeding

followed.

5. Discussion

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (the "Policy")

provides that, in order to succeed in its claim, Complainant must prove that

each of the following three elements has been satisfied:

i. the domain name in dispute is identical or confusingly similar to a trademark

or service mark in which the complainant has rights;

ii. the Respondent has no rights or legitimate interests with respect to the

disputed domain name; and

iii. the domain name has been registered and is being used in bad faith.

A. Similarity of the Mark and Domain Name.

Complainant easily satisfies the first factor. There is little dispute but

that the domain name homedirector.com is virtually indistinguishable from Complainant’s

mark HOME DIRECTOR.

B. Respondent Has No Legitimate Interests in the Domain Name.

In the absence of a Response, it is appropriate to accept as true all allegations

of the Complaint. Talk City, Inc. v. Robertson, Case

No. D2000-0009 (WIPO Feb. 29, 2000). Accepting those allegations (including

that there is no corporate entity in Indiana called HomeDirector, the name listed

as the Registrant of the domain name), it appears that Respondent lacks any

legitimate interest or right in the domain name.

The record is devoid of any conceivable justification for Respondent’s registration

of this domain name. Although Mr. Folkening asserted in an email that he

had a bona fide use, he also said that he would "remain silent" about

that use. Given the lack of a response, it appears that he has elected to remain

silent in this proceeding as well. In these circumstances, it is fully appropriate

to infer a lack of a legitimate interest. Rule 14(b).

C. Respondent Registered and Used the Domain Name in Bad Faith.

In the January 14, 2000, telephone call, Mr. Folkening said he would entertain

an offer to purchase the domain name and asked whether Complainant was "part

of IBM." That statement, combined with the admission that the HOME DIRECTOR

mark had some connection to IBM, is itself persuasive evidence of bad faith.

Further evidence of bad faith is Respondent’s use of false or misleading information

in connection with the registration of the domain name. It is undisputed that

the administrative contract, Game Dom, is a fictitious name used by Chad Folkening

to hide his true identity. It also is undisputed that Mr. Folkening has registered

numerous domain names under various pseudonyms (such as Chad Folks, CP Folks,

CF Folks, and Chad Spar) and that some of these domain names are or were identical

to other trademarks (such as digitalpc.com). This use of false contact information

and the registration of other domain names that are confusingly similar to well

known trademarks constitutes further evidence of bad faith. See 15 U.S.C. §

43(d)(1)(B)(vi)-(viii) [1].

6. Decision

For all of the foregoing reasons, the Panel finds that the domain name homedirector.com

is identical or confusingly similar to Complainant’s trademark HOME DIRECTOR,

that the Respondent has no rights or legitimate interests in respect of the

domain name, and that the Respondent registered and used the domain name in

bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel

orders that the registration of the domain name homedirector.com be transferred

to the Complainant.

David H. Bernstein

Presiding Panelist

Dated: April 11, 2000

1. Given that both parties are United States

residents, it is appropriate to consider U.S. legal principles.