Kings Point Recreation Corporation, Inc. v. Marty Koitz / martin koitz
Claim Number: FA2107001957570
Complainant is Kings Point Recreation Corporation, Inc. (“Complainant”), represented by Meaghan H. Kent of Venable LLP, District of Columbia, USA. Respondent is Marty Koitz / martin koitz (“Respondent”), represented by The Concept Law Group, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <kingspointgolfandcountryclub.com>, <kingspointgolfandcountryclub.net>, and <ilovekingspoint.com> domain names, registered with FastDomain Inc.; GoDaddy.com, LLC.
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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 30, 2021; the Forum received payment on July 30, 2021.
On July 30, 2021; August 2, 2021, FastDomain Inc.; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kingspointgolfandcountryclub.com>, <kingspointgolfandcountryclub.net>, and <ilovekingspoint.com> domain names are registered with FastDomain Inc.; GoDaddy.com, LLC and that Respondent is the current registrant of the names. FastDomain Inc.; GoDaddy.com, LLC has verified that Respondent is bound by the FastDomain Inc.; GoDaddy.com, LLC 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 August 4, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 24, 2021 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@kingspointgolfandcountryclub.com, postmaster@kingspointgolfandcountryclub.net, postmaster@ilovekingspoint.com. Also on August 4, 2021, 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.
A timely Response was received and determined to be complete on August 24, 2021.
On August 30, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman as Panelist.
On September 1, 2021, Complainant filed an Additional Written Statement pursuant to the Forum’s Supplemental Rule 7.
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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant operates a residential community for persons over the age of 55, consisting of 7,200 homes in Delray Beach, Florida. It offers it residents the use of swimming pools, restaurants and other amenities such as golf and tennis. Complainant first started using its mark KINGS POINT at least as early as 1973 and has common law rights in the KINGS POINT mark given the fact that it has been using the KINGS POINT mark for nearly 50 years.
Complainant has rights in the KINGS POINT GOLF AND COUNTRY CLUB mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 6,254,264, registered Jan. 26, 2021). According to the Registration Certificate, the trademark was filed on August 30, 2019 and has a “first use date in commerce” on August 5, 2019. A copy of the Registration Certificate was attached to the Amended Complaint as Annex G.
Complainant markets its services through its website www.kingspointdelray.com, video, magazines, newspapers, golf promotions, social media, etc. Complainant registered the kingspointdelray.com website in 1999. In 2012, Complainant’s living community was the subject of a documentary entitled “Kings Point”, which won a number of awards and was nominated for Best Documentary at the 2013 Academy Awards. The film received extensive press coverage and was featured in The New York Times, CNN, The Chicago Tribune, ABC News, among other high-profile publications.
Respondent registered <ilovekingspoint.com> in 2010, <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> in 2019 (collectively, the “Disputed Domains”).
The Disputed Domains are identical or confusingly similar to Complainant’s mark, as Respondent either 1) fully incorporates the mark with the only addition being a generic top-level domain (“gTLD”), or 2) add a generic term “I love” and a gTLD.
Respondent has no rights or legitimate interests in the Disputed Domains as Respondent is not commonly known by the Disputed Domains nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is using the Disputed Domains to divert Internet users to Respondent’s real estate business and misled them into believing Respondent’s business is affiliated with Complainant. Furthermore, the <kingspointgolfandcountryclub.net> domain name is currently held inactive.
Respondent registered and uses the Disputed Domains in bad faith. Specifically, Respondent is attempting to attract Internet users for commercial gain by directing them to Respondent’s website that purports to offer real estate at Complainant’s community. Respondent registered the <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> domain names opportunistically, as Respondent registered them the day Complainant publicly announced its expanded name by publishing its Board of Directors meeting minutes on Complainant’s website. Further, Respondent’s use of a disclaimer does not absolve Respondent’s bad faith.
Currently, <kingspointgolfandcountryclub.net> is inactive and passively held by Respondent. However, both <ilovekingspoint.com> and <kingspointgolfandcountryclub.com> both resolve to the same website that contains the heading “KINGS POINT” above the words “Golf and Country Club.com” in fonts which are similar to the KINGS POINT logo used by Complainant. Respondent’s websites feature a photograph of Complainant’s Natatorium located in Complainant’s living community (as shown on Complainant’s website) and contains KINGS POINT signage and a contact phone number of “1(800)KINGSPO”, both of which imply association to Complainant.
Respondent has also created consumer confusion by Respondent’s communications with Complainant’s consumers and residents. For example Respondent circulated an email to current and prospective residents highlighting some of the “features” of Respondent’s websites, including that it will “detail the governance of Kings Point, including but not limited to each building management firm, if they are a member of an umbrella group….., as well as Kings Point Recreation Corp Board of Directors (how they have these important positions) as well as about Vesta – the recreation property management firm.” Additionally, Respondent regularly circulates emails to current and prospective residents, identifying the Respondent as the “President of Kings Point Golf and Country Club, Inc.” and including the contact number 1-800-KINGSPO and the domain name kingspointgolfandcountryclub.com.”
On February 10, 2021, Complainant sent a Cease and Desist letter to Respondent, demanding that Respondent cease infringement and transfer the Disputed Domain Names to Complainant. Respondent refused.
B. Respondent
Respondent argues that Complainant has spent the last decade maliciously attacking it in “retaliation for ‘blowing the whistle’ on corruption and mismanagement by the managers of the King’s Point community in Delray Beach, Florida.”
Complainant explicitly approved of Respondent’s registration and use of the <ilovekingspoint.com> domain name for over one decade to promote King’s Point Delray and to offer his use of real estate services in connection therewith. Complainant also had full knowledge of Respondent’s registration and use of the domains <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> in 2019 and did not object for over one and half years. Respondent is a real estate agent and does not offer services offered by Complainant (who is the operating entity for Kings Point Delray) and whose trademarks cover “retail store services in the nature of professional golf shops,” and “social club services….”
More specifically, Respondent purchased a condominium in King’s Point Delray in 2000. After obtaining his real estate license, Respondent registered <ilovekingspoint.com> on June 7, 2010. Respondent intended to use that domain name for “generating pride in the community and raise[ing] the property value of the condominiums, while also becoming the trusted real estate agent in the community.” Respondent operated this domain name’s website to promote King’s Point Delray and to serve as a resource for individuals looking to buy and sell property in the community.
Respondent was active in the residential community and in 2011 created his own column entitled “I Love King’s Point” in the King’s Point News, the community newspaper. The <ilovekingspoint.com> domain name was prominently featured, and as indicated in the newspaper, Respondent partnered with the on-site realty office to remedy what he perceived to be significant inefficiencies and ineffective operation. Respondent also manufactured hats at his own expense saying “ilovekingspoint.com” which were a major success.
In December 2011, Respondent sent a letter to the Florida Attorney General’s office detailing his concerns about the mismanagement and “possibly unlawful activities” undertaken by King’s Point DelRay’s Board of Governors. Approximately 200 other community residents signed their names to the letter. In retaliation, the Board of Governors each individually filed lawsuits against Respondent. One month later all 22 Board of Governors dismissed their lawsuits.
Respondent subsequently learned that the lawsuits were “orchestrated by the Vice President of the management company of King’s Point Delray, without the consent of (at least some of) the [Board of Governor] as ‘a way of shutting him up’ because [Respondent] was disrupting the community.” Respondent was subsequently terminated from working with the on-site real estate office at King’s Point Delray and prohibited from advertising in the community newspaper.
Despite the contentious relationship, in November 2017, Respondent requested permission to use photos of the residential community on his <ilovekingspoint.com> domain and received permission from the Director of Complainant who later sent Respondent the picture that is still on his website.
In 2018, Respondent was forced to sell his condominium by Complainant and was barred from stepping foot onto the property.
Respondent alleges that Complainant has filed this dispute in bad faith, as part of an ongoing effort to harass Respondent following Respondent’s act of whistleblowing of corruption at Complainant’s community.
Complainant’s KINGS POINT is merely a geographical location ineligible for trademark protection without secondary meaning. Complainant has failed to provide evidence of the KINGS POINT mark developing a secondary meaning. Complainant was formed in 2012, and has not provided evidence connecting Complainant to a prior entity that held trademark rights.
Respondent has rights and legitimate interests in the Disputed Domains, as they are used to offer Respondent’s real estate services and Respondent disclaims any affiliation with Complainant.
Respondent did not register or use the Disputed Domains in bad faith. Specifically, Complainant has had notice of Respondent’s registration of the these names for years and never asserted rights over them until February 10, 2021. Complainant gave Respondent express consent to use the <ilovekingspoint.com> domain name. As Complainant lacks rights in the KINGS POINT mark due to a lack of secondary meaning, Respondent was not on notice of Complainant’s legal rights. Respondent also claims to have given Complainant to idea to add the “GOLF AND COUNTRY CLUB” to the KINGS POINT GOLF AND COUNTRY CLUB mark.
C. Additional Submissions
Complainant submitted an Additional Written statement pursuant to Supplemental Rule 7. In the Additional Written statement, Complainant alleges the following:
Respondent’s response focuses on irrelevant facts. With respect to <kingspoingolfandcountryclub.com> and <kingspointgolfandcountryclub.net>, Respondent’s arguments that he registered the domain names prior to the USPTO issuing the trademark registration does not alter the analysis under the Policy. Respondent acknowledges he registered these two domain names on the day the Complainant publicly announced its new expanded name “King’s Point Golf and Country Club”.
Complainant reiterates its position that Respondent’s use is not for a bona fide service, the disclaimer on Respondent’s websites do not confer rights to the Respondent to register or use Complainant’s marks and that nothing in Respondent’s response changes the fact that the Disputed Domains were registered and are being used in bad faith.
With respect to <ilovekingspoint.com>, Complainant has strong common law rights in its KINGS POINT trademark as it has been using the mark in connection with its residential community and services since 1973. Respondent’s argument that KINGS POINT is a geographic location ineligible for trademark protection is incorrect. KINGS POINT is not a geographic location, but rather is the coined name of a residential community. Coined names such as this one can have trademark protection according to the United States Patent and Trademark Office.
In addition, Respondent’s claim that he was granted permission to register this Disputed Domain Name is false and irrelevant. Even if Respondent was granted permission to use a particular photo, that does not confer upon Respondent the right to register domain names that are confusingly similar to Complainant’s marks.
1. Complainant operates a residential community for persons over the age of 55 in Delray Beach, Florida. Complainant has common law rights in the mark “KINGS POINT” and has rights in the mark KINGS POINT GOLF AND COUNTRY CLUB through its registration of the mark with the USPTO (e.g., Reg. No. 6,254,264, registered Jan. 26, 2021).
2. Respondent, a realtor, registered <ilovekingspoint.com> in June 2010 while residing in Complainant’s residential community, to offer his real estate services and to provide information on the governance of Kings Point. On June 6, 2019, Complainant’s Board of Governors decided to change the name of the Kings Point residential community to “Kings Point Golf and Country Club.” On that same day Respondent registered both <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net>.
3. Respondent’s Disputed Domains are identical or confusingly similar to Complainant’s marks.
4. Respondent is not commonly known by the marks, nor does the Respondent currently have rights or legitimate interests in any of the Disputed Domains.
5. With respect to <ilovekingspoint.com>, Respondent has presented credible evidence raising a legitimate question of fact as to (a) whether he was authorized to register and use the domain name, or (b) whether the registration and use of such name had Complainant’s express or implied consent. As such, Complainant has not met its burden of proof demonstrating that the domain name was both registered and us being used in bad faith.
6. The other two Disputed Domains, <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net>, were opportunistically registered in bad faith by the Respondent on June 6, 2019, the same day that Complainant’s Board of Governors decided to change the residential community’s name to “KINGS POINT GOLF AND COUNTRY CLUB”. In addition, the Complainant has demonstrated that both of these domains are also being used in bad faith under the Policy.
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.
a) COMPLAINANT’S RIGHTS IN THE MARKS
1. KINGS POINT GOLF AND COUNTRY CLUB mark
Complainant claims rights in the KINGS POINT GOLF AND COUNTRY CLUB mark through its registration of the mark with the USPTO (e.g., Reg. No. 6,254,264, registered Jan. 26, 2021). See Compl. Annex G. The use-based registration application was filed on August 30, 2019 containing a first use in commerce date of August 5, 2019.
Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). 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).”).
In addition, previous panels have found that relevant rights in a registered mark date back to such a mark’s filing date of record. See Hershey Co. v. Reaves, FA 967818 (Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”). See also Jody Kriss and East River Partners, LLC v. Felix Sater / Larissa Yudina (FA 1602001660728) (finding that Complainant had “established registered trademark rights in the JODY KRISS and EAST RIVER PARTNERS marks and that they date back to the filing date of the registrations”).
Therefore, the Panel finds that the Complainant has rights in the KINGS POINT GOLF AND COUNTRY CLUB mark under Policy ¶ 4(a)(i) and that such rights date back to at least as early August 30, 2019, the date in which the application for the mark was filed.
2. KINGS POINT mark
Complainant claims it holds common law rights in the KINGS POINT mark although it does not currently have a trademark registration for that mark. Policy ¶ 4(a)(i) does not require a complainant to own a trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that “The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark.”). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
According to the World Intellectual Property Organization’s Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), another factor to look at in determining whether a mark has common law rights, and therefore standing to assert a claim under the UDRP is: “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
Complainant claims it first started using its mark KINGS POINT in commerce at least as early as 1973 and has established significant consumer recognition and goodwill in its name as a result of its continuous use. According to a sworn declaration of the “Director of Complainant Kings Point Recreation Corporation, Inc.”, Complainant has used its KINGS POINT trademark in connection with its living community servicing over 100,000 residents over the last 50 years. Complainant has continuously marketed and promoted its KINGS POINT trademark through its website <www.kingspointdelray.com> and since 2012 has spent approximately $362,000 in advertising and promoting its KINGS POINT name and brand. See Compl. Annex H.
In 2012, Complainant’s living community was the subject of a documentary entitled “Kings Point” which won several awards and was nominated for Best Documentary at the 2013 Academy Awards. The documentary focuses on the King’s Point community and its residents, some of whom moved in to the retirement community in the 1970s.
Finally, the fact that much of the website for the Disputed Domain <ilovekingspoint.com> is devoted to the King’s Point residential community is yet a further indication that the term “KINGS POINT” does operate as a common law mark in that it serves as a source indicator for this particular living community.
For all of the above reasons, the Panel finds that Complainant does hold common law rights in the KINGS POINT mark for the purposes of Policy ¶ 4(a)(i).
b) CONFUSING SIMILARITY TO THE MARKS
Complainant argues Respondent’s <kingspointgolfandcountryclub.com>, <kingspointgolfandcountryclub.net>, and <ilovekingspoint.com> domain names are identical or confusingly similar to Complainant’s mark, as Respondent either 1) fully incorporates the mark with the only addition being a gTLD, or 2) add a generic term “I love” and a gTLD. Merely adding a gTLD to a complainant’s fully incorporated mark may be found as identical or confusingly similar to the complainant’s mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Further, adding a generic term and a gTLD to a complainant’s mark may not be sufficiently distinguished from the mark under Policy ¶ 4(a)(i). See MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”).
The Panel finds Respondent’s <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> are identical to the Complainant’s KINGS POINT GOLF AND COUNTRY CLUB mark, and the <ilovekingspoint.com> domain names confusingly similar to Complainant’s KINGS POINT mark under Policy ¶ 4(a)(i).
In addition to demonstrating that that the Disputed Domains are identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, 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 Disputed Domains as Respondent is not commonly known by the Disputed Domains nor has Respondent been licensed or authorized by the Complainant to use Complainant’s marks. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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). The Panel notes that the WHOIS records for the Disputed Domains identifies the Respondent as “Marty Koitz / martin koitz”. Respondent does not provide any evidence that it is commonly known as “Kings Point” or “Kings Point Golf and Country Club.”
Once a prima facie case has been made, the burden shifts to the Respondent to demonstrate that it does in fact have rights or legitimate interests in the Disputed Domains. A Respondent can do this under Policy ¶ 4(c) by establishing one of the following non-exclusive defenses:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent contends that it has rights or legitimate interests in the Disputed Domains because (a) Complainant authorized the use of the <iloveKingsPoint.com> by providing Respondent with pictures of the community to include on the website for that domain, and (b) prior to receiving notice of the dispute, it was using all of the Disputed Domains in connection with bona fide offerings of goods or services.
With respect to having authorization to use any of the Disputed Domains to establish that it has rights or legitimate interests, Respondent’s arguments are not persuasive. According to Section 2.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, “Panels tend to assess claimed respondent rights or legitimate interests in the present (i.e., with a view to the circumstances prevailing at the time of the filing of the complaint).” Therefore, even assuming arguendo that Respondent could establish that it at one point in time had rights or legitimate interests in one or more of the Disputed Domains, if it cannot establish that it has such rights or legitimate interests at the time of the filing of the complaint, then it cannot rebut Complainant’s prima facie case.
The Panel assesses the issue of whether Respondent at one point in time had consent to register and use the <ilovekingspoint.com> Disputed Domain below under the third element of the Policy (Registration and Use in Bad Faith). Regardless of whether it was authorized to register this domain name or not, the evidence clearly shows that at least as of February 10, 2021, more than four months prior to the filing of this action, any authorization (if it existed) ceased. This was the date that Complainant’s counsel sent a cease-and-desist letter to Respondent to discontinue use of all of the Disputed Domains.
Complainant argues that Respondent fails to use the <kingspointgolfandcountryclub.com> and <ilovekingspoint.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain names to divert Internet users to Respondent’s real estate business and misled them into believing Respondent’s business is affiliated with Complainant. It argues that the <kingspointgolfandcountryclub.net> domain name is currently held inactive, which by definition cannot constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent, however, contends that that it registered the Disputed Domains to offer his services as a real estate agent who was familiar with the area and the community. It also argues that Respondent was active in the community and used the <ilovekingspoint.com> Disputed Domain to bring “notoriety and goodwill to the community and its residents.” Prior to allegedly being expelled from the property, he was “recognized as the ‘go-to’ realtor for the community by selling approximately 200-300 properties in the community, generating well over eight million dollars in home sales. Finally, with respect to the <kingspointgolfandcountryclub.com>, the website states that “This site is owned and operated by Marty Koitz, award winning licensed realtor” and contains a disclaimer that the website is “not affiliated with Kings Point Recreation Corporation, Inc.”
The Panel does not question whether Respondent offers a bona fide service as a realtor to a number of communities including the Kings Point Golf and Country Club. That said, this does not mean that the Respondent has a right or legitimate interest to use domain names that incorporate Complainant’s marks under Paragraph 4(c)(i) of the Policy.
In Oki Data Americas, Inc. v. ASD, Inc D2001-0903 (WIPO Nov. 6, 2001), the Panel analyzed the difficult question of whether an authorized sales or service agent of trademarked goods can use the trademark at issue in its domain name. To be “bona fide,” the Panel in Oki Data found that in order for the Respondent to demonstrate a legitimate interest under the Policy, it must, at a minimum, demonstrate the following: (i) [It] must actually be offering the goods or services at issue; (ii) [It] must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods; (iii) The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents; (iv) [It] must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.
In this case, Respondent argues that it is not actually offering the same services that are being offered by the Complainant. Complainant does not offer realty services, but rather offers information and services for those that that already live in the Kings Point community or those looking visit or move to the Kings Point community. Although this could weigh in favor of the Respondent in analyzing whether the Disputed Domains are being used in bad faith, it does not help the Respondent in demonstrating a legitimate interest according to the Oki Data test. If the Disputed Domain was “Kingspointrealtor.com”, perhaps Respondent could have met the first part of the test.
Respondent also fails the Oki Data test because Complainant does not only offer realty services to the Kings Point Golf and Country Club, but also to its potential competitor communities. According to the website, Kings Point is only one of the “large over 55 lifestyle communities in the Delray Beach / Bonyon beach towns” it services. This increases the likelihood that one looking to purchase units within the Kings Point community could be directed by the Respondent to purchase property in competing communities. Although the Respondent does indicate that he is a realtor, and that he is not affiliated with the Complainant, the Panel finds that this does not override the other factors that weigh against Respondent’s rights or legitimate interests.
The Panel finds Complainant’s arguments more persuasive. Namely, that Respondent is using the Disputed Domains to divert Internet users seeking Complainant’s goods or services to a website that offers Respondent’s services. As such, Respondent cannot be said to be making a bona fide offering of goods or services, not could it be considered a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the <kingspointgolfandcountryclub.com> and <ilovekingspoint.com> Disputed Domains resolving webpages, which contain photographs from Complainant’s facilities and include Complainant’s marks while purporting to offer real estate at Complainant’s community and other unrelated communities. See Compl. Annex B. Therefore, the Panel finds Respondent fails to use the <kingspointgolfandcountryclub.com> and <ilovekingspoint.com> domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Furthermore, Complainant argues Respondent lacks rights and legitimate interest in the <kingspointgolfandcountryclub.net> Disputed Domain because it is currently held inactive. This too is not bona fide offering of goods or services or a legitimate noncommercial or fair use. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v. Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). The Panel agrees with the Complainant and finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Under the third requirement of the Policy, the Complainant must establish that each of the Disputed Domain Names have been registered and are being used in bad faith by the Respondent. “These are conjunctive requirements; both must be satisfied for a successful complaint.” Warner Bros. Entertainment Inc. v. Karl Allberg FA2002001881913 (Forum Feb. 19, 2020).
For purposes of this Decision, the Panel considers the Disputed Domain Name <ilovekingspoint.com> separate and apart from the other two Disputed Domain Names, <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net>. Although Complainant has alleged that the three Disputed Domain Names are (or at least were at one point in time) being used for the same purposes, the context in which the domain names were initially registered and used are very different[i].
a. <ilovekingspoint.com>
It is undisputed that Complainant has been using the term Kings Point in connection with its residential community for persons over the age of 55 since 1973. In addition, Complainant had actual knowledge of the use of the term Kings Point in connection with the residential community in Del Ray, Florida since at least as early 2005 when the Respondent moved to the King’s Point Golf and Country Club in Del Ray. It has also been established that Complainant registered the domain name kingspointdelray.com and has been using the domain name in connection with the residential community in Del Ray since 1999. Finally, with actual knowledge of the Complainant’s rights, Respondent registered the <ilovekingspoint.com> domain name in 2010.
Although actual knowledge of the Complainant’s marks has been used in previous cases as a factor to determine that a domain name was registered in bad faith, generally actual knowledge is only dispositive in cases where there is no other evidence of the Respondent’s intent in registering the domain name. Knowingly using another’s trademark in a domain name may constitute infringement of trademark rights, however, such registration and use may be permissible if there is consent. See Celebrity Signatures International, Inc. v. Hera’s Incorporated Iris Linder D2002-0936 (WIPO December 16, 2002).
In Celebrity, the Panel found that the respondent was not prohibited from using the Complainant's mark as her domain name and Complainant's representatives actually encouraged such use prior to a conflict arising between the Complainant and Respondent. More specifically, the Panel recognized that although the current use of the domain name might constitute trademark infringement because the Complainant is now objecting to such use, the domain name may nonetheless have been registered in good faith. The Panel stated, “Based on the record presented, . . . Complainant's representatives appear to have known of Respondent's conduct and encouraged her in her use. . . Thus, I conclude within the circumstances of this record that Complainant has not met its burden of proving that Respondent registered the domain name in bad faith.
Similarly, in Quadrific Media Private Limited v. Rajat Agarwal D2017-1050 (WIPO August 31, 2017), the Panel found that when looking at whether a domain name was registered in bad faith panels must only consider the Respondent’s intention at the time it registered the Disputed Domain Name even if there was a subsequent dispute that arose between the Parties.
Applying the principles from both Quadrific and Celebrity to determine whether this domain name was registered in bad faith, the Panel must look only at the Respondent’s intent at the time the domain name was actually registered even though a dispute later arose about the continued use of the Disputed Domain. To that end, evidence presented by the Respondent raises a legitimate question of fact as to whether a reasonable person could conclude that the domain name was registered (and used initially) in good faith. Respondent presents a compelling argument that there was actual knowledge by the Complainant of the registration of <ilovekingspoint.com>, and that the use of such domain name was initially encouraged. For example, the Respondent wrote his own column entitled “I Love King’s Point” in the King’s Point News, the community newspaper published by the Complainant. The <ilovekingspoint.com> domain name was prominently featured, and as indicated in the newspaper, Respondent partnered with the on-site realty office to remedy what he perceived to be significant inefficiencies and ineffective operation.
These facts alleged by the Respondent, if proven, demonstrate not only the Complainant’s knowledge of the registration of the domain name, but raises a legitimate question of fact as to whether the Complainant acquiesced in the registration and use of the domain name (at least initially) even though the facts clearly indicate now that the Complainant explicitly objects to Respondent’s present day use of its mark. See also Green Tyre Company Plc. V. Shannon Group D2005-0877 (WIPO October 5, 2005) (finding the Respondent did not have the requisite bad faith when it registered the Domain Name. . . .[The] Panel finds that the circumstances as mentioned by the Complainant which are of a later date than the registration of the Domain Name, cannot lead to the conclusion that the original registration in good faith in retrospective has become a registration in bad faith.”
In sum, there is not enough in the record to conclude that this particular domain name was registered in bad faith. At best, this is a question of fact and is precisely the type of question that is better suited for a court of law than resolution under the Policy.
Having not established that the domain name was registered in bad faith, it is not necessary to determine whether this Disputed Domain is currently being used in bad faith.
b. <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net>.
Unlike <ilovekingspoint.com>, the Panel finds that with respect to the other Disputed Domain Names, <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net, there is no question as to whether they were registered and are being used in bad faith.
1. Registration in Bad Faith
<kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> were both registered on June 6, 2019. June 6, 2019 was also the day that the Board of Directors of the Kings Point Recreation Corporation, Inc. unanimously approved a motion to officially change the name from “Kings Point” to “Kings Point Golf and Country Club.” A copy of the official minutes of that Board Meeting was attached as Annex L of the Complaint.
The Respondent does not address the timing of the registration of those domain names, but rather argues that they had no reason to believe that Complainant wished to exert trademark rights over the geographical location or community name because when he registered those Disputed Domains, “Complainant had not even applied for any federal or state trademark claims.” Although Respondent is correct that Complainant did not file a trademark application until August 30, 2019, and that the mark was not registered until January 26, 2021, this does not support its argument against the Disputed Domains being registered in bad faith.
The Panel believes that this is a clear-cut case of “opportunistic bad faith.” When domain names are registered on the same day that news leaks of a potential transaction (eg., merger, acquisition or even a name change), then a negative inference of bad faith registration may be made by the Panel which must be refuted by the Respondent. See Thermo Electron Corp. and Fisher Scientific Co., LLC and Fisher Scientific Int’l v. Charlie Xu, FA 0605000713851 (Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that Respondent has to refute and which he has failed to do. The Panel finds a negative inference from this.”). See also see also 3M Co. v. Jeong, FA 505494 (Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”)
Respondent’s argument that it had no reason to believe that the Complainant wished to exert trademark rights is not enough to refute the negative inference of bad faith registration. See ExecuJet Holdings v. Air Alpha America, Inc. D2002-0669 (WIPO Oct. 7, 2002) (“From the intent of the Policy, it is clearly irrelevant whether a registrant intended to abuse an existing trademark right or one which that registrant specifically knew would arise.”).
For the reasons above, the Panel finds that these two Disputed Domains were registered in bad faith.
2. Use in Bad Faith
In order to prevail, however, a Complainant must not only show that the Disputed Domains were registered in bad faith, but that they are also being used in bad faith.
a. <kingspointgolfandcountryclub.com>
Complainant contends that Respondent’s use of <kingspointgolfandcountryclub.com> specifically violates ¶ 4(b)(iv) of the Policy: “(iv) by using the Disputed Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 the Respondent’s website or location.”
Respondent argues that: (i) there is no evidence in the record that it is attempting attract consumers for commercial gain to his sites by creating a likelihood of confusion with the KINGS POINT marks, and (ii) Complainant did not object to Respondent’s use of the Disputed Domains until February 10, 2021, over a year and a half after Respondent began using the Disputed Domain. It further argues that KINGS POINT is a geographically descriptive term without secondary meaning and therefore incapable of being protected. Finally, the use of two disclaimers on its website seeks to prevent consumer confusion and confirm that Respondent is not affiliated with the Complainant.
Respondent points to Leisure Village Association, Inc. v. McKay Barlow, D2006-1119 (WIPO Nov. 14, 2006) to support its case. In that case the Respondent is a realtor that registered leisurevilliage.com to use in connection with the sale of property in Leisure Village. The Panel held that given (i) Respondent actually sells property within that village, (ii) that it has not taken the Complainant’s actual name, (iii) there is no evidence of confusion, and (iv) that Complainant has provided not one iota of evidence to support its conclusion, the Complainant had not met its burden of proof to show that the disputed domain was used in bad faith.
Here, however, there are a number of distinguishing factors present that may not have been present in Leisure Village. [ii] In that case, the Complainant did not own a national trademark registration and based its case on loose common law rights. Here we have an actual trademark registration that identically matches the Disputed Domain (minus the TLD designation). Although Complainant argues that “KINGS POINT” is a geographically descriptive term without secondary meaning, it is clear that “KINGS POINT GOLF AND COUNTRY CLUB”, the exact term used in the Disputed Domains, is a valid protectable mark by virtue of the registration.
In addition, Complainant provides evidence that the logo used by Respondent is of a similar font and style as that used by Complainant for “KINGS POINT GOLF AND COUNTRY CLUB.” The picture used by Respondent on its website are of Complainant’s property[iii], depicting Complainant’s signage, and the phone number Respondent uses “1800KINGSPO” on its website does suggest an association with Complainant. Further, the fact that Respondent promotes not just Kings Point on the Disputed Domain, but also other 55+ communities in South Florida could mislead consumers into a false association with Complainant.
Unlike the Leisure Village case, Respondent’s own e-mail communications to external third parties (including residents of Complainant), state that one feature on the Disputed Domain’s website “when ready will detail the governance of Kings Point, including but no [sic] limited to each buildings management firm, if they are a member of an umbrella group . . . as well as Kings Point Recreation Corp Board of Directors . . .as well as about Vesta – the recreation property management firm.” This goes well beyond the scope of merely providing realty services but would suggest sponsorship or affiliation with Complainant. Finally, the Panel is sympathetic to the argument raised by Complainant that because Respondent is targeting senior citizens who may be less likely familiar with online activities and less able to exercise a high degree of care, this may exacerbate any likelihood of confusion.
For the above reasons, the Panel finds that this particular Disputed Domain is being used in bad faith. It is worth noting that this finding is not negated by the use of disclaimers on Respondent’s website. See Continental Airlines v. Vartanian, FA 1106528 (Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).
In addition to the Respondent’s opportunistic registration of <kingspointgolfandcountryclub.net>, Complainant argues that despite being placed on notice of Complainant’s opposition of Respondent’s registration and use of all of the Disputed Domain names, Respondent ignored the Complainant’s request to cease and desist using the Disputed Domains. A number of panels have held that the bad faith registration of a domain name followed by inaction or passive holding constitutes bad faith use of the domain name. See Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000) (finding bad faith under Policy ¶ 4(b)(iv) even though the respondent has not used the domain name because “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”). Here, Complainant provides a screenshot of the <kingspointgolfandcountryclub.net> domain name’s resolving webpage which appears to be an empty webpage. See Compl. Annex B. Therefore, given the opportunistic registration and passive use of the <kingspointgolfandcountryclub.net> domain name, the Panel finds that Complainant has demonstrated that this Disputed Domain was both registered and used in bad faith under Policy ¶ 4(b)(iv).
a) Having not established all three elements required under the ICANN Policy with respect to <ilovekingspoint.com>, the Panel concludes that relief shall be DENIED.
b) Having established all three elements required under the ICANN Policy with respect to kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net>, the Panel concludes that relief shall be GRANTED.
c) Accordingly, it is Ordered that the <kingspointgolfandcountryclub.com> and <kingspointgolfandcountryclub.net> be TRANSFERRED from Respondent to Complainant, but that the <ilovekingspoint.com> REMAIN WITH Respondent.
Jeffrey J. Neuman, Panelist
Dated: September 14, 2021
[i] The Panel notes that there are a number of explicit and implicit claims and counter-claims contained in the Complaint and Response under various legal theories that are well beyond the scope of the Policy. Therefore, a decision by the Panel that the registration and use of a domain name was in violation of the UDRP does not mean that the Respondent’s use of the Complainant’s marks constitute trademark infringement, or that the use of specific photographs constitute copyright infringement, etc. Conversely, a decision by the Panel finding that a domain name was not registered and used in bad faith does not mean that there are not actions by the Respondent that could constitute trademark infringement, copyright infringement, etc. with respect to Complainant’s marks. The Panel’s decision is solely based on the explicit terms of the Policy and how the Policy has been interpreted by a consensus of Panelists over the past 20+ years.
[ii] Unfortunately, we only have access to the actual decisions of UDRP cases and not to the other pleadings. Therefore, we are left to speculate as to what evidence, if any, was presented to the Panel in the Leisure Village case.
[iii] Even assuming arguendo that permission was given to Respondent to use a photo of Complainant’s property on <ilovekingspoint.com>, there is no evidence in the record that this permission extends to Respondent’s other sites including <kingspointgolfandcountryclub.com>.
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