[Indexed as:
Meredith vs. CityHome]
[Indexed as:
countryhome.com]
WIPO Arbitration
and Mediation Center
Administrative
Panel Decision
Case No. D
2000-0223
Commenced:
29 March 2000
Judgement:
18 May 2000
Presiding Panelist: Thomas L. Creel
Domain name
Domain name dispute resolution Confusion with trademark
Legitimate
interests by Respondent No bad faith registration.
Complainant owned trademark to Country Home. Registrant registered domain name COUNTRYHOME.COM in anticipation of expansion into real estate business in rural areas. Complainant complains domain name is identical and confusingly similar, that Respondent had no rights or legitimate interests and domain was registered in bad faith.
Held, Name Not Transferred to Complainant
Complainant has to establish the following in order to have a domain name transferred: identical or confusingly similar to trademark of Complainant; no rights or legitimate interest on part of Respondent; domain registered and is being used in bad faith.
Respondent registered domain name in question expecting to enter rural home mortgage market. Respondent even had their attorney conduct a search for possible trademark conflicts. Respondent did not use domain name in question to offer goods or services for sale for eight months, nor did it usually go by the name Country Home. However, Respondent was not aware of Complainants registered trademark when the domain was registered.
Complainant approached Respondent about purchasing domain name. Respondent was interested in a trade if Complainant could acquire CityHome.com domain from a third party. When Complainant did offer to trade domains after acquiring CityHome.com, Respondent rejected the offer.
The domain name was found to be confusingly similar and identical to the Complainants registered trademark. However, Respondent had legitimate interest in the domain name. Even though the Respondent was not offering goods or services for sale on the domain in question when the complaint was filed, the Respondent was preparing to use the domain name. Also, non-use of the domain name is not determinative, and the time of non-use was appropriate to conduct research in preparation for expanding the business.
Registration of domain name was natural step in expected expansion of business to rural areas. There were at least seven United States trademark registration for Country Home. Also, the descriptive term for the Respondents services was very different from that of the Complainant. The Respondent made several name changes throughout the years to better reflect its line of business, so use of the name CountryHome was only a natural name for the expected rural home loan business.
Respondent
did not register domain name in bad faith. It was not aware of Complainants
magazine or even of the Complainant at the time of registration.
Seeking substantial money for a valuable business asset is not indicative
of bad faith; it is a reasonable business practice. The Respondent
did not intend to try to sell domain name to anyone, and was not planning
on using it in a manner that would infringe on Complainants trademark
rights. Furthermore, the Respondent did not initiate contact with
the Complainant.
Complainant
failed to prove the required elements in order to have the domain name
transferred.
Policies referred to
Uniform Domain Name Dispute Resolution Policy, adopted August 26, 1999
Panel Decision
referred to
--
Creel, Panelist: -
1. The
Parties
Complainant
is the Meredith Corp. (hereinafter "Meredith") an Iowa corporation located
and doing business at 1716 Locust Street, Des Moines, Iowa 50336, U.S.A.
Respondent is CityHome, Inc. (hereinafter "CityHome"), a corporation formed
and existing under the laws of the State of Illinois, which, according
to Complainant, has an address for mail and courier delivery at CityHome,
Inc., Suite 822, 39 South LaSalle Street, Chicago IL 60603, U.S.A. The
contact person according to the papers filed by CityHome for purposes of
this administrative proceeding is Michael White, 22 East Jackson Boulevard,
Chicago IL 60604, USA.
2. The Domain
Name(s) and Registrar(s)
The domain
name at issue is COUNTRYHOME.COM registered with Network Solutions, Inc.
3. Procedural
History
The WIPO Arbitration
and Mediation Center (the "Center") received the Complaint of Meredith
on March 29, 2000 by e-mail and on March 31, 2000 in hard copy. The Complainant
made the required fee payment. On March 30, 2000, the Center acknowledged
the receipt of the Complaint to Meredith and assigned this matter Case
No. D2000-0223.
Also on March
30, 2000, the Center requested Network Solutions, Inc. to verify the registration
data. On April 3, 2000, Network Solutions, Inc. confirmed that it is the
Registrar of the domain name registration and, inter alia, that City Home,
Inc. is the current registrant of the COUNTRYHOME.COM domain name registration.
Having verified
that the Complaint satisfies the formal requirements of ICANN Uniform Domain
Name Dispute Resolution Policy (the "Policy"), the Rules, and the Supplemental
Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental
Rules"), the Center on April 6, 2000 sent to Respondent, with a copy to
the Complainant, a notification of the commencement of the administrative
proceeding, together with a copy of the Complaint. The formal date of the
commencement of this administrative proceeding is April 6, 2000.
On April 25,
2000, the Center received the Respondent's Response, which the Center acknowledged
to the parties on April 26, 2000.
On May 4,
2000, after receiving a completed Statement of Acceptance and Declaration
of Impartiality and Independence, the Center advised the parties that it
had appointed Mr. Thomas L. Creel as a single panelist to resolve this
dispute (the "Presiding Panelist").
4. Factual
Background
Complainant
is the owner of the following U.S. Trademark Registrations:
- Registration
No. 1,663,395 of the mark COUNTRY HOME, in Class 16, for "magazines and
books on a variety of subjects," which issued November 5, 1991, stating
a date of first use anywhere and in interstate commerce of October 1950;
- Registration
No. 1,559,806 of the mark COUNTRY HOME, in Class 16, for "printed materials;
namely, posters, calendars, note cards, Christmas cards, post cards, house
plans, house study plans, gazebo plans and seed collection packets," which
issued October 10, 1980, stating a date of first use anywhere and in interstate
commerce of February 16, 1988; and
- Registration
No. 2,199,088 of the mark COUNTRY HOME, in Class 31, for "flower, vegetable
and grass seed," which issued October 20, 1998, stating a date of first
use anywhere and in interstate commerce by Complainants predecessor in
interest of November 3, 1997.
Respondent
CityHome Inc. was incorporated in July, 1995. It is in the business of
building construction and repair, real estate loan financing and real estate
investment. From its incorporation until late 1997, it conducted its business
in the real estate investment industry with an urban emphasis. In late
1997, Respondent first considered expanding the scope of its business to
rural communities. It decided at that time that it needed a new name under
which to conduct this new portion of its business. Accordingly, in January
1998, it registered a domain name reflecting its then current emphasis
and corporate name, "CITY-HOME.COM" and also the domain name "COUNTRYHOME.COM."
The latter was done in anticipation of Respondent's expansion of the real
estate business to rural areas. At about this same time, Respondent incorporated
affiliated entities under other names e.g. CityHome Property L.L.C. 1997
and CityHome Construction LLC.
At about the
same time, Respondent requested a trademark search for the proposed mark
Country Home, Inc. to be used in connection with a mortgage banking business.
On January 22, 1998 (shortly after registration of the COUNTRYHOME.COM
domain name on January 8, 1998) its then counsel provided CityHome with
the results of a preliminary trademark search for this mark. In the cover
letter, the attorney stated that she was enclosing the search for this
mark to be used in connection with a mortgage banking service and that
she had highlighted the marks which appeared most likely to pose a risk
of potential conflict, for CityHome's review. Only the cover letter was
produced in this proceeding. The trademark search report itself was not.
Network Solutions,
Inc. placed the COUNTRYHOME.COM domain name on hold on September 4, 1998.
Between the registration of the domain name on January 8, 1998 until it
was placed on hold eight months later, Respondent never commenced use of
the domain name COUNTRYHOME.COM in connection with actual offering of any
goods or services. There is no evidence that Respondent is commonly known
by the term COUNTRY HOME, nor that it is currently using this domain name.
Respondent
"submits that it was not aware of a magazine named Country Home at the
time it registered the domain name and requested the trademark search and,
indeed, was not aware of the magazine or Complainant until Complainant
contacted them after the subject domain name was registered and the search
was performed."
Meredith approached
CityHome about the COUNTRYHOME domain name. Complainant asserts that during
the negotiations Complainant was told by Respondent that if Meredith would
obtain the domain name CityHome.com from a third party, Respondent would
consider a trade. In April 1999, Complainant acquired that domain name
from a third party registrant for $2,500. At that same time, Complainant
offered to transfer the purchased CityHome.com name to Respondent in even
exchange for transfer of the COUNTRYHOME.COM mark. Complainant asserts
that Respondent rejected that offer and informed Complainant they would
only be willing to sell COUNTRYHOME.COM for $225,000. Thereafter, in about
September, 1999, Complainant offered Respondent $5,000. CityHome countered
with an offer of $175,000 for the assignment of COUNTRYHOME.COM.
5. Parties
Contentions
Complainant
has requested that the domain name be transferred to Complainant because:
(1)
the domain name COUNTRY HOME.COM is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(2) Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the domain
name was registered and is being used in bad faith.
Respondent contends
that Complainant has failed to demonstrate the elements required by Paragraphs
4.a.(ii) and (iii) of the Policy.
6. Discussion
and Findings
Paragraph
4 of the Policy states that Complainant must prove each of three elements:
(i)
that the domain name is identical or confusingly similar to the trademark
or service mark in which the complainant has rights;
(ii) Respondent
has no rights or legitimate interests in respect of the domain name; and
(iii) the
domain name has been registered and is being used in bad faith.
Each of these
three elements will be considered separately below.
The Domain
Name
The evidence
presented by the parties demonstrates that the domain name COUNTRYHOME.COM.
is identical or confusingly similar to Complainant's registered trademarks.
Therefore, the requirement of Paragraph 4.a.(i) is met.
Rights or
Legitimate Interests in Respect of the Domain Name
The evidence
presented by the parties demonstrates that Respondent did have rights or
legitimate interests in respect to the domain name at issue.
Complainant
proffered evidence on this element includes that Respondent never commenced
use of the domain name from the time it was registered on January 8, 1998
to the time that it was placed on "hold" by Network Solutions, Inc. eight
months later on September 4, 1998. It also asserts that during negotiations,
Respondent never provided Complainant with any evidence of demonstrable
use of the domain name COUNTRYHOME in connection with a mortgage banking
subsidiary, which usage CityHome was alleging at that time. Also, Complainant
asserts that Respondent is not commonly known by the COUNTRY HOME.COM domain
name.
Paragraph
4.c.(i) of the Policy instructs that evidence of use or demonstrable preparations
to use with a bona fide offering of goods or services prior to notice of
dispute is sufficient to establish rights or legitimate interests as referred
to in paragraph 4.a.(ii). Respondent had used the term City-Home for its
urban real estate services since 1995. When Respondent contemplated expanding
into the rural real estate market, the registration of CountryHome in 1998
was a natural and legitimate preparation to extend its then name, "CityHome"
to reflect this new business area. It has shown demonstrated preparations
to use the domain name. Moreover, the non-use of the domain name for eight
months is not determinative. This seems a reasonable time for Respondent
to engage in research and development of its rural expansion plan.
Respondent
also notes that there are at least seven United States trademark registrations
for Country Home by others for diverse uses and "hundreds" for common variations
thereof, e.g., Home Country. Furthermore, Complainant's trademark registrations
are in classes 16 and 31 for such things as printed materials, magazines
and seed. On the other hand, Respondent's potential use in connection with
real estate and mortgage services would be in International Classes 35
and 36. Additionally, to use the name CountryHome for real estate services
is possibly descriptive of such services. On the current record, Respondent
has the right to use such a possibly descriptive term for services quite
different from the goods for which Complainant owns trademark registrations.
It is also
noted that Respondent, as part of its business practice, has at other times
modified its name to reflect expanded areas of business, e.g., to City
Home Property 1997 LLC and City Home Construction LLC. This also tends
to confirm a legitimate interest in use of CountryHome as an extension
of Respondent's then-existing urban business.
Therefore,
the requirement of paragraph 4.a.(ii) has not been proved by Complainant.
Bad Faith
The third
element Complainant must prove is in the conjunctive: the domain name "has
been registered" and "is being used in bad faith." The evidence presented
by the parties demonstrates that the Respondent did not register and use
the domain name in bad faith.
As to the
original registration, Complainant has not shown that the registration
was made in bad faith. It states that Respondent had "constructive notice"
of Complainant's claim of ownership and that, therefore, under the circumstances
"it is clear that Respondent registered the domain name with full knowledge
of Complainant's rights and primarily for the purpose of selling or otherwise
transferring the domain name registration to Complainant for valuable consideration
well in excess of Respondent' s out-of-pocket costs directly related to
the domain name." Constructive notice does not support a finding of bad
faith at the time of registration. Indeed, Respondent has stated it was
not aware of Complainant's magazine or Complainant at that time.
Likewise,
considering all of the evidence, I do not find that Complainant has shown
that Respondent is using the domain name in bad faith. The fact that Respondent
is seeking substantial money for what it believes to be a valuable asset
is not tantamount to bad faith. Rather, it tends to show a reasonable business
response to an inquiry about purchasing a business asset where Respondent
had already expended time and money to develop a new part of its business,
including the sums it spent on an outside law firm to search the possible
trademark and in obtaining the domain name registration. Respondent was
naturally reluctant to sell its domain name at that stage of its planning.
Nor is the fact that Complainant acquired the domain name CityHome.com
for $2,500.00 evidence of bad faith. While it is unfortunate that Complainant
acquired the domain name from a third party, according to Complainant's
own words in the Complaint, Respondent only said that it would "consider"
the trade.
Respondents
proffered evidence is persuasive of lack of bad faith. It shows that concurrently
with registering the subject domain name, respondent also ordered a trademark
search on Country Home, Inc. This is strong evidence of good faith in preparing
to use this name in Respondent' s business. Furthermore, Respondent has
not attempted to "shop" this domain name to anyone, has not attempted to
use the name in anyway that would be construed as an infringement of Complainant's
trademark registrations, nor otherwise in a manner which is detrimental
to Complainant's trademark rights and it never contacted Complainant seeking
any remuneration. As noted above, the non-use of the name for eight months
is not an unduly long time for a new business in the planning stage of
expansion.
Therefore,
the requirement of paragraph 4.a.(iii) has not been proved by Complainant.
7. Decision
Claimant has
failed to prove the necessary elements that the Respondent has no rights
or legitimate interests in the domain name and that Respondent registered
the domain name in bad faith and is using it in bad faith. Therefore, the
remedies requested by Complainant are denied. Respondent should not be
required to transfer to Complainant the domain name COUNTRY HOME.COM. Rather,
the dispute involves the competing rights and legitimate interests of two
parties in the domain name COUNTRYHOME.COM. Given the nature of this dispute,
it is properly resolved by a mediation or arbitration before this Center
or elsewhere or by litigation in a forum of competent jurisdiction.
Name not Transferred