Utopia Management, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1905001843378
Complainant is Utopia Management, Inc. (“Complainant”), represented by Rob G. Leach of Charmasson, Buchaca & Leach, LLP, California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Kingstown, St. Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <utopiarealestate.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 15, 2019; the Forum received payment on May 15, 2019.
On May 17, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <utopiarealestate.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 22, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 11, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@utopiarealestate.com. Also on May 22, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Utopia Management, Inc., uses their mark UTOPIA MANAGEMENT in connection with real estate services. Complainant has rights in the UTOPIA MANAGEMENT mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,205,587, registered Nov. 24, 1998). See Compl. Ex. 1. Respondent’s <utopiarealestate.com> domain name is confusingly similar to Complainant’s UTOPIA MANAGEMENT mark, as it fully incorporates the mark, merely adding the generic top-level domain (“gTLD”) “.com” and the generic term “real estate.”
ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant consented to Respondent’s use of the UTOPIA MANAGEMENT mark in any manner.
iii) Respondent registered and is using the disputed domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent is using the disputed domain name to divert users away from Complainant’s own website to a website that hosts links to Complainant’s competitors, thereby disrupting Complainant’s business.
B. Respondent
Respondent did not submit a response in this proceeding.
1. The disputed domain name was registered on June 9, 2005, and updated on July 5, 2018.
2. Complainant has established rights in the UTOPIA MANAGEMENT mark based on registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,205,587, registered Nov. 24, 1998).
3. The website associated with the disputed domain name displays links to services in competition with Complainant.
Paragraph 15(a) of 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 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the UTOPIA MANAGEMENT mark based upon registration of the mark with the USPTO (e.g. Reg. No. 2,205,587, registered Nov. 24, 1998). See Compl. Ex. 1. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel notes that the registration provided for the UTOPIA MANAGEMENT mark lists the registrant as Darbee Corporation dba Utopia Management Corporation, however, Complainant argues the mark has been assigned to Complainant. A complainant may still have rights in a mark that was originally registered with another entity provided the complainant provides evidence of assignment of the mark. See Golden Door Properties, LLC v. Golden Beauty / goldendoorsalon, FA 1668748 (Forum May 7, 2016) (finding rights in the GOLDEN DOOR mark where Complainant provided evidence of assignment of the mark, naming Complainant as assignee). While Complainant does not provide evidence of assignment of the mark, a TESS search for the mark shows Complainant as the current owner of the mark. The Panel therefore holds that Complainant’s registration of the UTOPIA MANAGEMENT mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues the disputed domain name is confusingly similar to the UTOPIA MANAGEMENT. Generally, the addition of generic terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Additionally, a disputed domain name which omits a portion of a mark may still be confusingly similar to a mark if the disputed domain still contains the dominant portion of the mark. See Huron Consulting Group Inc. v. David White, FA 1701395 (Forum Dec. 6, 2016) (finding that Respondent’s <huroninc.net> domain name is confusingly similar to the HURON CONSULTING GROUP and HURON HEALTHCARE marks under Policy ¶ 4(a)(i) because in creating the domain name, the respondent contains the dominant portion of the marks and appends the term “inc” and a gTLD). Here, Respondent omits the “MANAGEMENT” portion of the mark and added a gTLD and the generic term “real estate” to Complainant’s mark when registering the disputed domain name. See Compl. Ex. 1. The Panel agrees that the disputed domain name is confusingly similar to Complainant’s UTOPIA MANAGEMENT mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <utopiarealestate.com> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the UTOPIA MANAGEMENT mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record identifies the owner of the disputed domain name as “Domain Admin / Private Registrations Aktien Gesellschaft” and no information on record indicated Respondent was authorized to register a domain name with Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
The Panel notes that Complainant does not make any arguments as to Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent’s bad faith is indicated by its use of the disputed domain name to disrupt Complainant’s business by diverting users away from Complainant’s website to Respondent’s website that hosts links that directly compete with Complainant. Generally, a respondent’s use of a confusingly similar domain name to host links to websites that compete with a complainant may demonstrate bad faith under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)). Here, Complainant provides a screenshot of the website associated with the disputed domain name which displays links to services in competition with Complainant. See Compl. Ex. 4. The Panel agrees with Complainant and finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <utopiarealestate.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: June 24, 2019
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