National Arbitration Forum
DECISION

  KB Home v. RegisterFly.com- Ref# 9323034 c/o Whois Protection Service- ProtectFly.com

   Claim Number: FA0506000506771

 PARTIES  

Complainant is KB Home (“Complainant”), represented by Mary Kathryn Sammons, of Susman Godfrey LLP, Suite 5100, 1000 Louisiana, Houston, TX 77002-5096.  Respondent is RegisterFly.com- Ref# 9323034 c/o Whois Protection Service- ProtectFly.com (“Respondent”), represented by John Glenn Meazell, of Law Offices of John Meazell, P.C., 5608 West Plano Parkway, Suite 300, Plano, TX 75093.

REGISTRAR AND DISPUTED DOMAIN NAME   

The domain name at issue is , registered with Enom, Inc. 

PANEL 

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding. 

Honorable Karl V. Fink (Ret.) as Panelist. 

PROCEDURAL HISTORY  

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on July 13, 2005. 

On May 31, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name.  Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”). 

On July 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 2, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to This e-mail address is being protected from spam bots, you need JavaScript enabled to view it by e-mail. 

A late Response was received on August 3, 2005.

All submissions were considered by the Panel. 

On August 17, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist. 

An Additional Submission was submitted by Complainant on August 26, 2005 and was determined to be deficient.  The Panel has chosen to consider this Additional Submission in its Decision. 

RELIEF SOUGHT  

Complainant requests that the domain name be transferred from Respondent to Complainant.  

PARTIES’ CONTENTIONS 

A.     Complainant 

The disputed domain name includes the Complainant’s registered KB HOME mark.  NAF and WIPO panels have held repeatedly that a domain name that combines a mark with common terms, including potentially pejorative terms, may be confusingly similar to the mark itself.  Confusion in such cases is especially likely where the mark holder has significant numbers of international or non-English speaking customers. 

Complainant has registered its mark on the Principal Register of the United States Patent and Trademark Office.  Complainant widely promotes and uses its mark in commerce.  A Fortune 500 company, KB Homes built over 31,000 homes and earned revenues of over seven billion dollars in its 2004 fiscal year. 

Respondent has not used the disputed domain name in connection with the bona fide offering of goods or services.  The web site does resolve to a live web site, but no goods or services are offered for sale on the site, except for t-shirts bearing the same domain name.  To the best of Complainant’s knowledge, Respondent has not come to be commonly known by the domain name in any capacity. 

Respondent does operate a site at that is stridently critical of Complainant.  However, Respondent’s operation of the site is not a “legitimate noncommercial fair use of the domain without intent for commercial gain.” 

Respondent created the site in the course of a dispute with Complainant over the purchase of a new home, which Respondent claimed was defective.  From its inception, Respondent has used the site as a bargaining chip in this dispute. 

Later, when Respondent began threatening legal action against Complainant, Respondent offered to sell the domain name to Complainant in conjunction with settling all other issues for a total payment of $2 million dollars, an amount far in excess of Respondent’s asserted damages. 

Respondent’s use of and offers to sell the domain name are probative of Respondent’s intent in registering or acquiring the domain name.  Respondent has repeatedly offered to transfer to Complainant for consideration in ever-escalating amounts far in excess of Respondent’s potential out-of-pocket costs related to the domain name.  Respondent’s creation of the site in connection with a dispute with Complainant and use of the site as a bargaining chip from the early stages of negotiations is further evidence of his bad-faith intent to profit from registration of the site.

Further proof of bad-faith purpose is Respondent’s use of an identity masking service for the registration information for .  Bad faith is further shown by the Respondent’s apparent use of a proxy to register and park several similar domain names. 

B.     Respondent 

The parties to this Complaint are currently litigating the issues that gave rise to Respondent acquiring and ownership rights to said domain name. 

Mr. and Mrs. Zaltsberg entered into a contract with Complainant for the construction of a new home.  During the course of negotiations to enter into said contract, Complainant made numerous representations regarding the quality of the workmanship and the warranty and when Complainant would begin construction on the house.

After closing on the home, the Zaltsbergs moved into the house and began noticing substantial defects in the home.  As a result of Complainant’s unwillingness to correct the defects, the Zaltsbergs moved out of the home.  Mr. Zaltsberg set up a web site having the domain name to express his disgust with Complainant.  This was Respondent’s reason for acquiring the domain name.

The web site contains streaming video and audio, numerous photographs by complaining homeowners as to defective workmanship, interviews with former employees of Complainant who specify predatory and fraudulent practices sanctioned on a corporate wide level, a chat room, news articles and much more.  Respondent’s efforts have further been magnified by numerous defamatory and threatening e-mails from Complainant’s corporate servers and a desire to prevent Complainant from misrepresenting its goods and services to unsuspecting home purchasers.

It was Complainant who first approached Respondent about acquiring the domain name.  An offer in settlement negotiations made by an attorney for the domain name owner to sell the domain name of the trademark owner does not evidence bad faith. 

Obtaining a domain name that is identical or confusingly similar to that owned by a trademark owner for the purpose of airing a bona fide dispute does not evidence a bad faith intent to profit.

Respondent did not acquire, and is not using the domain name, with the intent for commercial gain.  Respondent makes no money from operation of the website.  Furthermore, Respondent does not have the intent to misleadingly divert customers from KB Home.  The content contained in the site is factual, drawn from news sources or posted by the public. 

An exercise of free expression enjoys the protection of the fair use exception to ICANN’s Domain Name Policy , Section 4(c)(iii).  From a review of the website, it is clear that Respondent is exercising his free speech rights to complain about Complainant, to offer a forum for others to express their displeasure and difficulties with Complainant, and to publish news articles about Complainant. 

 A respondent has a legitimate interest if he is using a domain name containing a confusingly similar or identical mark to detail disputes with the trademark owner. 

The website is one of the most prolific gripes on the world wide web being featured in Business Week Magazine, People Magazine, and Builder Magazine and many other media sources have recognized the site.  The website at the domain name was nominated by Forbes.com as the number one consumer complaint site in the world. 

Both common sense and a plain reading of the Policy support the view that a domain name combining a trademark with the work “sucks” cannot be considered confusingly similar to the mark.  The use of the “sucks.com” suffix attached to a company name has become a standard formula for Internet sites protesting the business practices of a company. 

Complainant’s purpose of this ICANN action is to squelch criticism of its company.  Complainant has acquired a number of domain names that are critical such as and . 

FINDINGS
For the reasons set forth below, the Panel finds Complainant has not proven that the domain name should be transferred. 

DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” 

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)    the domain name has been registered and is being used in bad faith. 

Identical and/or Confusingly Similar

Respondent asserts, and the Panel finds, that the addition of the term “sucks” to the   domain name “eliminates the possibility of confusion.”   See Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan. 26, 2001) (finding that common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore and cannot be considered confusingly similar to LOCKHEED MARTIN); see also Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that is not identical or similar to Wal-Mart's marks); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (suggesting in dicta that the addition of sucks or other identifier to a famous mark would be sufficient to defeat a claim that the domain name is confusingly similar). 

The Panel also finds that the domain name is not confusingly similar to Complainant’s KB HOME mark because no reasonable person would conclude that a real estate developer would have any relationship with a domain name that adds the word “sucks” to its mark.  See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (noting that using a negative domain name for the purposes of criticism, such as , does not create confusion with the service mark of complainant); see also Royal Bank of Scotland Group v. natwestfraud.com, D2001-0212 (WIPO June 18, 2001) (finding that was not confusingly similar to complainant’s NATWEST mark because the term “fraud” is a common English term with a pejorative meaning and therefore, distinguishes the domain name from complainant’s mark). 

Complainant has not proven this element. 

Rights or Legitimate Interests  

Respondent asserts that it has rights and legitimate interests in the domain name because the First Amendment provides for freedom of speech and Respondent’s use of the domain name is an exhibition of freedom of speech.  The Panel finds that Respondent has rights or legitimate interests in the domain name because it is making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding that the respondent has rights in the domain name where she was using the domain name in connection with a noncommercial purpose; see also Baja Marine Corp. v. Wheeler Tech., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that Respondent has rights and legitimate interests in the domain name where Respondent made a non-commercial use of BAJABOATS.COM and received no funds from users of the site connected to the domain name); see also Britannia Bldg. Soc'y v. Britannia Fraud Prevention, D2001-0505 (WIPO July 6, 2001) (finding legitimate interests in the respondent's favor because "[t]he goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain"); see also Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (“[T]he goals of the Policy are limited and do not extend to insulating trademark holders from contrary and critical views when such views are legitimately expressed without an intention for commercial gain.”).

Complainant has not proven this element. 

Registration and Use in Bad Faith   

Respondent argues that Complainant has failed to meet its burden in proving bad faith registration and use pursuant to Policy ¶ 4(a)(iii) because Complainant has failed to provide particular facts and circumstances supporting its allegations.  See Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith); see also White Pine Software, Inc. v. Desktop Consulting, Inc., D2000-0539 (WIPO Aug. 31, 2000) (declining to transfer the domain name where a full factual record has not been presented to the panel such that a conclusive determination can be made regarding the parties’ respective claims to the contested domain name). 

The Panel finds that a mere offer to sell a domain name registration is not evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  Respondent did not register the domain name primarily for the purpose of selling it.  See Mark Warner 2001 v. Larson, FA 95746 (Nat. Arb. Forum Nov. 15, 2000) (finding that considering or offering to sell a domain name is insufficient to amount to bad faith under the Policy; the domain name must be registered primarily for the purpose of selling it to the owner of a trademark for an amount in excess of out-of-pocket expenses); see also LifePlan v. Life Plan, FA 94826 (Nat. Arb. Forum July 13, 2000) (“[T]he mere offering [of the domain name for sale], without more, does not indicate circumstances suggesting that Respondent registered the domain name primarily for the purpose of selling, renting, or transferring the domain name to the Complainant as required under [Policy ¶ 4(b)(i)].”). 

Since Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), the Panel finds that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Lee Procurement Solutions Co. v. getLocalNews.com, Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) ("Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii)."); see also Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) ("Because the Panel has found that Respondent has rights and interests in respect of the domain name at issue, there is no need to decide the issue of bad faith.").

Complainant has not proven this element.

DECISION  

Complainant having failed to establish all three elements required under the ICANN Policy, the Panel orders that relief shall be DENIED. 

Honorable Karl V. Fink (Ret.), Panelist
Dated: August 30, 2005