Claim Number: FA0707001045772
Complainant is American Newland Communities, L.P. (“Complainant”), represented by Julia
A. Matheson, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is A D Crawford a/k/a
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <covingtonparkhomes.com>, <mirabayhomesales.com> and <mirabaysales.com>, registered with eNom, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2007; the National Arbitration Forum received a hard copy of the Complaint on July 27, 2007.
On July 26, 2007, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <covingtonparkhomes.com>, <mirabayhomesales.com> and <mirabaysales.com> domain names are registered with eNom, Inc. and that the Respondent is the current registrant of the names. 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 31, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 2007 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 email@example.com, firstname.lastname@example.org and email@example.com by e-mail.
A timely Response was received and determined to be complete on August 20, 2007.
A timely Additional Submission from Complainant was received and determined to be complete on August 27, 2007.
A timely Additional Submission from Respondent was received and determined to be complete on August 29, 2007.
On August 29, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges that it is the largest master-planned community developer in the
According to Complainant, it owns the
Complainant states it has common
law rights in the marks, because of the substantial and continuous use of these
marks since 1999 and 2000,
respectively. Further, Complainant
Complainant alleges that Respondent registered the domain name <covingtonparkhomes.com> on November 16, 2004, the domain name <mirabayhomesales.com> on June 9, 2003, and the domain name <mirabaysales.com> on August 18, 2003. Thus Respondent registered the disputed domain names years after Complainant began using its marks and after the issuance of Complainant’s federal registrations for those marks.
According to Complainant, Respondent
is a real estate agent, and uses the disputed domain names for web sites
advertising his real estate services that directly compete with Complainant’s
real estate services. Respondent’s
websites also advertise homes for sale in the
Complainant alleges that the disputed domain names are confusingly similar to Complainant’s marks because each is comprised of Complainant’s trademark coupled with generic terms (“homes,” “home sales,” “sales”). Combining Complainant’s mark with generic terms is not sufficient to distinguish the domain names from Complainant’s mark.
Complainant states that Respondent’s registration and use of the disputed domain names for websites advertising his competing real estate services and homes for sale in the Tampa, Florida area that compete with homes for sale in Complainant’s COVINGTON PARK and MIRABAY communities does not constitute a bona fide offering of goods or services under the Policy.
Further, says Complainant, Respondent’s registration and use of the disputed domain names meet the bad-faith element set forth in Section 4(b)(iv) of the Policy. Specifically, Respondent uses the disputed domain names to intentionally attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant and its marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites, the competing services advertised on Respondent’s websites, and/or the services directly related to Complainant’s business offered on Respondent’s website.
And there is no question that Respondent had knowledge of Complainant’s
rights in its
Respondent alleges that he is a licensed real estate
professional in the state of
Respondent states that he is the registrant of hundreds of domain names, including the disputed domain names, which he uses in a bona fide and legitimate manner to provide information to the public in general and to provide a wide array of customized services to serve the needs of individuals too, who seek specific information about real estate or seek his services in general.
According to Respondent, the assertions by Complainant are repugnant, whereas Complainant knows or should have known that he has a legitimate interest with respect to the disputed domain names, thus Respondent respectfully requests the Panel to make a determination that the Complaint is an attempt by Complainant to reverse hijack the disputed domain names from Respondent.
Respondent provides extensive arguments to the effect that Complainant’s marks are invalid or diluted. Those arguments are not reproduced here because the Panel holds that questions regarding the validity of a registered trademark are outside the scope of the Policy and should be resolved by national courts.
Respondent states that it is grossly unfair of Complainant to restrict the public (or agents such as himself, who serve the public) from using words to describe real property that are integral words to the legal description of the properties being described and that such restrictions would interfere with the fair dissemination of housing information to the public. Every property owner (and their agents, such as Respondent) has a fundamental right to describe their property pursuant to the legal description of the property which they own as recorded among public land records and as a real estate agent offering his services and providing services to private property owners (who have no affiliation with Complainant) who own property within the subdivisions of MIRABAY and COVINGTON PARK he has a right to use the disputed domain names to describe those real properties.
Further, says Respondent, he has
never used the disputed domain names in a manner that would cause confusion
between his services and those of Complainant and he has exercised care to
distinguish his services as those of an independent real estate brokerage,
including specific statements in his marketing materials including his Internet
web site content. He goes on to provide
detailed explanations of his use of various domain names, in particular to
promote sales of properties in the MIRABAY and
To summarize, according to Respondent, he has never used any of the disputed domain names so as to confuse anyone about Complainant’s business, but simply to describe the location of real estate by its legally recorded subdivision name, as he does for other subdivisions, towns, cities, and sometimes even street names. His use is thus legitimate and his registration and use are in good faith.
C. Additional Submissions
In its Additional Submission, Complainant alleges that Respondent has not contested the relevant facts.
According to Complainant, the Response appears to be based primarily, if not entirely, on his claim that COVINGTON PARK and MIRABAY are geographically descriptive or generic terms that are not entitled to trademark protection, either inherently or by virtue of Complainant’s actions. Complainant provides detailed legal arguments to refute Respondent’s assertions in this respect. Those arguments are not reproduced here because the Panel holds that questions regarding the validity of a registered trademark are outside the scope of the Policy and should be resolved by national courts.
Further, says Complainant, contrary to Respondent’s suggestion,
Complainant does not seek, through this UDRP proceeding or otherwise, to
preclude any and all use by Respondent of the
To summarize, according to Complainant, Respondent can fairly describe
real estate listings in the
Finally, because Complainant has met its burden under the Policy, there are no grounds for Respondent’s claim of reverse domain name hijacking.
In its Additional Submission, Respondent reiterates that, as part of
his legitimate and licensed business as real estate agent, he sells homes
located in the
Respondent disputes the relevance of a US court case cited by Complainant, and cites Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001), in which the operator of a series of celebrity related "fan" web sites was held to be entitled to use the domain name <brucespringsteen.com> despite the objections of the singer whose name was embodied in the domain name, and this on the grounds that the domain name accurately indicated the content of the Web site in question, namely, a site devoted to providing fans with information about Mr. Springsteen.
Respondent cites US court cases that are consistent with the Panel decision in the cited Springsteen v. Burgar case and concludes by conceding that the disputed domain names incorporate Complainant’s trademarks, but by stating that Complainant has failed to prove that Respondent has no rights or legitimate interests in the disputed domain name, and has failed to prove that he registered and is using the disputed domain name in bad faith.
Complainant is a large and well-known
property developer. Its marks are
well-known in the
Respondent registered the disputed domain names years after Complainant began using its marks and after the issuance of Complainant’s federal registrations for those marks.
extensive experience in the real estate business, in particular in the
Respondent is using
the disputed domain names to point to web sites that advertise properties for
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.
The Panel finds that Complainant has established
rights in the MIRABAY and
Respondent puts forth extensive arguments to the effect that Complainant’s marks are invalid or diluted. The Panel holds that such arguments are outside the scope of the Policy and should be addressed by national courts. It suffices for the Policy that Complainant has registered trademarks.
The disputed domain names contain Complainant’s marks in its entirety with the addition of generic terms such as “homes” and “sales” which have a direct relationship to Complainant’s marks and the services offered under those marks. See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
Thus the Panel holds that Complainant has satisfied its burden of proving the first element of the Policy.
Respondent cites Springsteen v. Burgar, D2000-1532 (WIPO Jan. 25, 2001). In that case, the panel held that the respondent had legitimate interests in a domain name that was confusingly similar to the complainant’s famous name, because the disputed domain name was used to redirect Internet users to a site containing information on celebrities. But that case must be distinguished from the present case because it involved the name of a celebrity, not a registered trademark.
A more appropriate citation would have been to Bayerische
Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum Jun. 17, 2002),
in which the panel found that the use of the trademark BMW combined with a
geographical term to route Internet users to a web site that very clearly
indicated that the respondent offered used BMW automobiles for sale was not in
any way illegitimate. But that case must
be distinguished from the present case, because, in the present case, Respondent
is offering for sale on its web sites at the disputed domain names home that
are not in either the
One of the goals of trademark law is to allow a consumer to be able to identify, easily and with confidence, the manufacturer of a particular product or service, because the mark can be affixed only to a product or service produced by the owner of the mark. Internet users who type one of the disputed domain names should not be directed to a web site containing listings of properties that have no association with the marks embodied in the domain name, especially when there is no disclaimer on the web site to the effect that it is not operated by, licensed by, or associated with the owner of the marks, nor to the effect that the web site lists properties that are not in the developments in question.
Respondent claims that, as a real estate agent, he has the right to use terms which merely describe the properties he is selling. This is of course true, but, as Complainant correctly points out, it can be done by using the descriptive terms within the content of Respondent’s web sites. There is no need to use the descriptive terms (which are confusingly similar to Complainant’s marks) in a domain name. And this is particularly the case when the domain name is being used to direct users to a web site that contains not only listings for properties in the COVINGTON PARK and MIRABAY developments, but also properties located outside those developments and that are not in any way associated with the owner of the marks COVINGTON PARK and MIRABAY.
Thus, in the opinion of the Panel, Respondent’s use of the disputed domain names creates a likelihood of confusion and therefore cannot be considered to be legitimate in the sense of the Policy. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
For all these reasons, the Panel holds that Respondent does not have rights or legitimate interests in the disputed domain names.
contends that Respondent is using the disputed domain names to commercially
benefit from a likelihood of confusion between Complainant’s
Respondent states that he has never used the disputed domain names in a manner that would cause confusion between his services and those of Complainant and that he has exercised care to distinguish his services as those of an independent real estate brokerage, including specific statements in his marketing materials including his Internet web site content. The Panel disagrees with this assertion. Having examined the web sites at the disputed domain names, the Panel finds (as noted above) that there is indeed a likelihood of confusion.
Further, since Respondent
is an experienced real estate professional operating in
Thus, the Panel holds that Respondent registered and is using the disputed domain names in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <covingtonparkhomes.com>, <mirabayhomesales.com> and <mirabaysales.com> domain names be TRANSFERRED from Respondent to Complainant.
Respondent’s request for a finding of Reverse Domain Name Hijacking is dismissed.
Richard Hill, Panelist
Dated: September 10, 2007
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