1. The Parties
The Complainant is Arcelik Anonim Sirketi of Istanbul, Turkey, represented by Grünecker Patent-und Rechtsanwälte PartG mbB, Germany.
The Respondent is Ramaswamy Sreenivasan of San Jose, California, United States of America ("United States"), self represented.
The disputed domain name <homewhiz.co> is registered with Domain.com, LLC (the "Registrar").
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 16, 2016. On June 16, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 16, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant submitted an amendment to the Complaint on June 27, 2016.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was July 18, 2016. The Response was filed in the form of an informal email with the Center on July 18, 2016.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on July 25, 2016. 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.
The Complainant states that it is a household appliances manager from Turkey founded in 1955 and active in more than 100 countries. Based on evidence supplied from the website "www.wikipedia.org", the Complainant asserts that it is the fourth largest household appliances company in Europe.
The Complainant is the owner of European Union trade mark ("EUTM") no. 14005144 for the word mark HOMEWHIZ filed on April 28, 2015 and registered on August 24, 2015 in international classes 7, 8, 9, 10 and 11. The Complainant states that it has been using this mark since September 4, 2015 in connection with an app offered by its subsidiary Grundig which connects home appliances with each other and allows the user to control each appliance remotely. The app was launched at a trade show named "IFA 2015" which the Complainant notes ran from September 4, 2015 to September 9, 2015. Material produced by the Complainant shows a trade stand at the said show featuring the brand names "GRUNDIG" and "HOMEWHIZ" in capital letters beneath which a range of white goods are displayed. The Complainant's app is made available for download on the "iTunes Store" and at the website "itunes.apple.com".
The disputed domain name was created on January 3, 2016. The Respondent states that he and his co‑founder are entrepreneurs and that they are operating a startup company in Silicon Valley. The website at the disputed domain name promotes a service whereby homeowners may select contractors and use live video to discuss potential home improvement and repair projects. It is not clear whether the website is formally launched or in a pre-launch phase but the present site claims inter alia to serve "300+ Satisfied Homeowners". The Respondent also provides an app which appears to provide the service of making a live video connection between homeowners and contractors for "Do-it-Yourself advice and instant estimates" on compatible devices. The said app is also available on the "iTunes Store" and at the website "itunes.apple.com", where a link to the website associated with the disputed domain name is provided.
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which the Complainant owns rights; that the Respondent has no rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and is being used in bad faith.
The Complainant points out that the disputed domain name consists of the Complainant's HOMEWHIZ mark in its entirety and submits that the applicable country-code Top-Level Domain ("ccTLD") ".co" may be disregarded as a technical requirement of registration.
The Complainant asserts that there is no business relationship between the Parties, that the Respondent is not licensed by the Complainant or otherwise authorised to use the Complainant's mark, that the Respondent does not hold a corresponding trademark, that the Respondent is not commonly known by the disputed domain name and that there is no evidence that the Respondent has used or made demonstrable preparations to use the disputed domain name in connection with a legitimate noncommercial use. The Complainant notes the manner in which the disputed domain name is being used, asserting that both of the Parties' apps refer to home improvement and that members of the public who are interested in the Complainant's app may visit the Respondent's website on the assumption that the Respondent is affiliated with the Complainant.
The Complainant notes that the Respondent registered the disputed domain name after the Complainant had adopted and used its HOMEWHIZ mark. The Complainant states that the Parties' respective apps are offered on the iTunes Apple Store side by side and comments that the notation of "HomeWhiz" with a capital "W" on the second word element is identical. The Complainant asserts that this indicates an awareness of the Complainant and its app at the time of registration of the disputed domain name. Finally, the Complainant submits that the Respondent is earning revenue from the disputed domain name for the services provided from the corresponding website and that the Respondent thereby has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation.
The Respondent requests that the Complaint be denied. The Respondent states that it is a Silicon Valley entity in a start-up hub. The Respondent asserts that it registered the disputed domain name in good faith, adding that it capitalized the "H" and "W" because "HomeWhiz" is a two word name. The Respondent submits that prior to receiving the Complaint it was unaware of the existence of the Complainant.
The Respondent states that its co-founders are highly qualified entrepreneurs with advanced degrees, together with a history of entrepreneurial activity. The Respondent submits that such past activities bear witness to the sincere efforts which the Respondent has undertaken in terms of time and money spent in creating an app which brings video into the home improvement space. The Respondent notes that it was shortlisted by a world renowned start-up accelerator, "Y Combinator" for an interview, adding that the shortlist rate is less than 4 per cent. The Respondent submits that the fact of the shortlisting alone should convince the Panel of the true intentions behind the Respondent's efforts.
The Respondent states that the Complainant's submissions regarding the Respondent's bad faith are speculative, undermining and disrespectful. The Respondent submits that it is not in the business of registering domain names in bad faith or extorting money for profit. The Respondent asserts that it has put in thousands of hours of sweat equity in coding, analyzing the market, validating the need, thinking about a suitable brand name and using precious resources in getting a start-up idea off the ground.
The Respondent offers to provide the Panel with Y Combinator's interview letter together with proof of the Respondent's co-founders' education and past entrepreneurial credentials if desired.
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has UDRP-relevant rights in its registered trademark HOMEWHIZ as noted in the factual background section above. Disregarding the ccTLD, which is required for technical reasons, the Panel finds that the disputed domain name is alphanumerically identical to the Complainant's mark. Furthermore, the Respondent does not take issue with any of the Complainant's submissions in this regard.
In these circumstances, the Panel finds that the disputed domain name is identical to the Complainant's trademark and that the requirements of paragraph 4(a)(i) of the Policy have been satisfied.
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy, including whether the disputed domain name has been registered and is being used in bad faith or whether the respondent has rights or legitimate interests in a domain name, will result in failure of the complaint in its entirety.
Accordingly, in light of the Panel's finding under the next head, it is unnecessary for the Panel to address the issue of the Respondent's rights or legitimate interests in the disputed domain name.
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 domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trade mark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trade mark 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 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.
It is necessary for a complainant to prove both registration and use in bad faith. Accordingly, if a complainant fails to prove that a domain name is registered in bad faith its complaint must fail.
There is widespread consensus among UDRP panels that, for registration in bad faith to be made out, a complainant must demonstrate the following on the balance of probabilities. In the first place, subject to exceptions which do not apply here, a complainant must show that the respondent is likely to have had some form of knowledge so as to have been targeting the complainant's mark when it registered the domain name concerned. Such conduct might be evident from an intent to damage or extract money from the complainant or to derive some unfair benefit on the back of the complainant's goodwill. It is therefore unlikely that a respondent ignorant of the existence of the complainant and its trademark could be said to have registered the domain name in question in bad faith (see the discussion in Kalahari, A Division Of Nasboek Ltd. (Sa) v. Host Start Internet Services, Inc., WIPO Case No. D2001-0992).
In the present case, the evidence before the Panel which would support the contention that the Respondent had prior knowledge of the Complainant, its activities or its mark is very limited. The Respondent's case on knowledge is clearly expressed in the informal Response. The Respondent denies ever having heard of the Complainant and maintains that the origin of its use of the term "HomeWhiz" in the disputed domain name, the website associated with the disputed domain name and its related app is wholly independent of the Complainant's HOMEWHIZ mark and its corresponding app.
The disputed domain name consists of a dual word portmanteau comprising the two dictionary words "home" and "whiz". The Respondent's case is effectively that it chose these words without awareness of the Complainant's mark as an apt description for its start-up service which seeks to bring home owners and home improvement contractors together in a speedy online medium. In the Panel's opinion, that is not an incredible or unreasonable contention. The combination of the two words is not so unlikely or unusual that it is more probable than not that the Respondent could have arrived at the disputed domain name without knowledge of the Complainant's mark. Although the Complainant asserts that the launch of the Complainant's app and the creation date of the disputed domain name are close in time, being around four months apart, coupled with the fairly non-distinctive nature of the term this is not, to the Panel's mind, a particularly close proximity which reasonably excludes the possibility of coincidental selection of the same term by both of the Parties. The Complainant goes on to argue that the capitalized format for each first letter of the two words "Home" and "Whiz employed by the Respondent is indicative of the Respondent's knowledge of its mark. On the contrary, in the Panel's opinion, such capitalization may be a natural format for a dual word portmanteau consistent with the Respondent's explanation and does not give rise to any reasonable inference of unfair targeting in and of itself.
There is no evidence on the present record that the Complainant and Respondent are in geographic or jurisdictional proximity to one another or in the same line of business, such that the Respondent might thereby have gained knowledge of the Complainant's mark. While the Complainant asserts that both of the Parties' apps relate to "home improvement" there is nothing to be found in the evidence which is supportive of that contention. On the contrary, the Complainant's app appears to facilitate aspects of the "Internet of things" or the "networked home". The Panel does not consider that such aspects are directly connected to the concept of "home improvement" in the same sense as that apparently intended by the Respondent's app which is targeted to home repairs, upgrades and the relative instruction of contractors.
It has been noted in previous cases under the Policy that a lack of geographic or jurisdictional proximity is not determinative of the issue of a respondent's potential knowledge of a complainant's mark and that there may be greater significance to be found in the substance of the complainant's online presence. A substantial online presence might give rise to a reasonable inference that a complainant's activities are likely to have come to the notice of a respondent regardless of the latter's location (see for example the discussion in Fakir Elektrikli EV Aletleri Diş Ticaret Anonim Şirketi v. Development Services, Telepathy, Inc., WIPO Case No. D2016-0535). In the present case, however, there is no evidence before the Panel that the Complainant has established any notable online presence of substance for its HOMEWHIZ mark, with the exception of the existence of its app on the iTunes Store. Nor is there any evidence before the Panel as to the popularity of that app or the (geographic) spread of its user base. What is more, there is no information before the Panel as to whether the Complainant's or the Respondent's app was first to be uploaded to the app store, this being a matter which is not necessarily determined by the public launch date of the Complainant's app or, in the case of the Respondent's app, by the creation date of the disputed domain name.
With regard to the question of intent to target, again, the evidence before the Panel falls short of demonstrating any probable intent on the Respondent's part to target the Complainant's mark. The Respondent has sought to explain its selection and use of the name "HomeWhiz" and indeed the business concept set out on the website associated with the disputed domain name is self-explanatory and a plausible use which does not necessarily imply any targeting of the Complainant's activities. There is no evidence before the Panel that the website and disputed domain name are not that of a genuine start-up company. For its part, the Complainant merely notes that the Parties' apps appear side by side on the iTunes Store. It has not however produced any screenshot to evidence that fact. In any event, it is not reasonable in the Panel's mind to infer targeting purely from the fact that the apps appear together, even if suitable evidence had been provided to that effect. Two apps of the same name would logically be placed side by side in an alphabetical listing, for example, whether or not one app (and a corresponding domain name) had been created to target the rights in the name of the other app or whether the developers of each app had arrived at the same name independently, as is asserted by the Respondent. There is no suggestion other than in similarity of name that the Respondent has set out to generate confusion. For example, there is no suggestion that the Respondent is making use of similar marketing copy, logo or color scheme to those employed by the Complainant, whether on the website associated with the disputed domain name or the iTunes Store.
In these circumstances, the Complainant's case that the disputed domain name has been registered in bad faith fails and the Panel therefore finds that the Complainant has failed to make out its case in terms of paragraph 4(a)(iii) of the Policy. To the extent that the Complainant feels it has any claim under applicable trademark laws, it is of course able to pursue those in an appropriate judicial forum.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Sole Panelist
Date: August 8, 2016