PH4 Corporation v. Don Bates
Claim Number: FA0712001119410
Complainant is PH4 Corporation (“Complainant”), represented by Abby
C. Moskovitz, of Dobrusin & Thennisch PC,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <anthemfarms.com>, <antheminfo.com>, <anthemwest.com>, <azanthem.com>, <azsuncity.com>, <azsuncistywest.com>, <suncityanthem.net>, <suncityfestival.org>, <suncitygrandaz.com>, and <suncityinfo.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett Gordon Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 14, 2007, GoDaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <anthemfarms.com>, <antheminfo.com>, <anthemwest.com>, <azanthem.com>, <azsuncity.com>, <azsuncistywest.com>, <suncityanthem.net>, <suncityfestival.org>, <suncitygrandaz.com>, and <suncityinfo.com> domain names are registered with GoDaddy.com, Inc and that the Respondent is the current registrant of the names. GoDaddy.com, Inc has verified that Respondent is bound by the GoDaddy.com, 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 January 10, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 30, 2008 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 firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, 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 January 30, 2008.
A timely Additional Submission was received from Complainant on February 4, 2008 in accordance with the Forum’s Supplemental Rule 7. A timely Additional Submission was then received from Respondent on February 11, 2008.
On February 11, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant alleges that the disputed domain names are confusingly similar to trademarks in which it has rights (Policy ¶ 4(a)(i)); that Respondent has no rights or legitimate interests in the disputed domain names (Policy ¶ 4(a)(ii)); and that the domain names were registered and are being used in bad faith (Policy ¶ 4(a)(iii)).
In particular, Del Webb Corporation (“DWC”) is a licensee of Complainant. DWC is a real estate developer of residential communities for over-55 year olds. DWC uses the following trademarks in connection with that business:
SUN CITY ANTHEM
SUN CITY FESTIVAL
DWC has been using the
Using those trademarks, DWC has developed residential communities in
the States of Arizona,
Respondent’s websites which correspond with the disputed domain names are
not approved by, sponsored by, or otherwise associated with DWC or
Complainant. Those websites direct
Internet users to a family of websites which provide real estate and other
community information for neighborhoods in the greater
Some of the domain names redirect Internet traffic to Respondent’s principal websites (not in dispute), whilst others have their own website. At the time of the Complaint, two of the domain names were not yet associated with active websites. Complainant alleges that all active websites provide links to competing communities and real estate agent websites who compete with DWC. Complainant therefore argues that Respondent registered the disputed domain names in bad faith with the knowledge of Complainant’s trademarks and has since used the domain names in bad faith by providing links to Complainant’s competitors in business.
Respondent has identified itself as Don Bates and Arizona
Neighborhoods, LLC. It is said that Arizona
Neighborhoods is an online resource for local community information in the
Respondent’s websites provide communities in
Respondent argues that Complainant’s trademarks have become references
to a general area and are used by reputable institutions in a meaning larger
that just a trademarked community. Respondent claims that businesses in both
the areas of Sun City and Anthem freely use the names
Respondent submits that it has not linked its websites to any home builder or community website for profit and has not acted in bad faith. In Respondent’s words:
Each site has a real estate agent who specializes in that community. They provide assistance to future residents looking to buy a resale home in that community. These agents specialize in the communities they sponsor. They definitely are not in the business of tricking clients into buying a home in a competing community. … … Since the Del Webb site focuses on only new home sales, this type of real estate interaction with resale homes in the community in question does not put the Arizona Neighborhoods’ website in conflict with the Complainant’s website. Each real estate specialist for each community has a link in their box that links to their personal website. This link is for validation of that agent’s qualification and not misdirection.
C. Additional Submissions
Both parties made additional submissions and these will be referred to where necessary in the body of the Discussion which follows below.
1. Complainant is in the business of real estate development and sale.
2. Respondent has a stated interest in providing local community information.
3. Complainant is the owner of relevant US Federal trademark registrations.
4. There is no evidence to impeach the validity of those registrations.
5. Respondent, by its admission, knew of the trademarks at the time it registered the disputed domain names.
6. Respondent, by its admission, is using the trademarks to attract Internet users to its online locations.
7. Respondent believes in its legitimate interest to do so.
8. Respondent attached disclaimers to its websites which dissociate it from the Complainant and its business.
9. Respondent’s websites carry links to third parties which offer real estate services.
10. Pre-Complaint correspondence between the parties failed to resolve their differences.
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, in each case, 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.
Complainant has, through registration, established rights in the following trademarks:
SUN CITY ANTHEM
SUN CITY FESTIVAL
It is noted by the Panel that whilst the trademark registrations originally stood in the name of DWC, Complainant provided evidence of assignment of those rights to it.
Complainant argues that the disputed domain names are each either identical or confusingly similar to one of Complainant’s trademarks. The Panel accepts the consensus view of former panels that for the purposes of testing whether the disputed domain names are identical or confusingly similar to the trademarks, the generic top-level domains “.com,” “.net,” and “.org” in the disputed domain names can be ignored.
The comparisons are therefore:
The Panel finds that the disputed domain
names are either identical to Complainant’s
The Panel accordingly holds that Complainant has satisfied the first element of the Policy in respect of each disputed domain name.
The Panel finds that the circumstances described in the Complaint are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interests in the disputed domain names and to shift the evidentiary burden to Respondent to show that it does have rights or legitimate interests in the domain names.
The wording of the Policy makes it clear that a respondent need only establish a legitimate interest and not necessarily a protectable right. Respondent’s submissions are expansive but can, in essence, be characterized as all resting on the premise that Complainant’s trademarks are not uniquely indicative of Complainant and its business but are generic geographical indicators, free for use by all. Respondent’s actions in registering and using the disputed domain names are claimed to rest on its legitimate interest in providing local community information by reference to those indicators.
For the reasons elaborated below, this Panel finds that Respondent has misconceived both the nature of the Policy and the permitted fair use of a protected trademark.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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
(iii) you are 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.
Policy ¶ 4(c)(ii) has no application in this case. As for Policy ¶ 4(c)(i), Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services. Respondent does not suggest that he has used the domain names in connection with any bona fide offering of goods or services – on the contrary, he labors the point out that his websites are providing [not-for-profit] local community information. Respondent therefore can not claim any legitimate interest based on paragraph 4(c)(i) of the Policy.
The only live question is whether there is a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent went to some length to illustrate
the ways in which third parties used the terms ANTHEM and
Complainant has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for any domain name incorporating any of those marks.
On the one hand, by not submitting a response,
Respondent has failed to invoke any circumstance which could demonstrate,
pursuant to paragraph 4c of the Policy, any rights or legitimate interests in
the Domain Name. On the other hand, however, it appears that Respondent
provides informational services about the city of
The Administrative Panel therefore finds that Respondent may have a legitimate interest in the Domain Name.
With respect to that panel, it might be said that the analysis is brief and the conclusion ambiguous. Of greater analytical strength is the case of Land Sachsen-Anhalt v. Skander Bouhaouala, D2002-0273 (WIPO July 8, 2002), where it was said:
In many of the so-called geographic indicator cases, including two of the three on which Complainant relies, WIPO Case No. D2000-1767 (<unistuttgart.com>) and WIPO Case No. D2000-0308 (<oxford-university.com>), the domain name was not the geographic indicator itself but rather a trademark that included, as part of the mark, a geographic term (in these two cases, the name of a university). In such cases, it is the totality of the mark that is being protected, and not merely the name of the country, city, state or region. See also Consorzio del Prosciutto di Parma v. Domain Name Clearing Company, LLC, WIPO Case No. D2000-0629 (September 18, 2000) (<parmaham.com>); WIPO Case No. D2000-0638 (<manchesterairport.com>); WIPO Case No. D2000-1218 (<wemblystadiumonline.com>); WIPO Case No. D2000-1224 (<sydneyoperahouse.net>); WIPO Case No. D2001-0932 (<sydneymarkets.com>).
In this case, in contrast, the domain name is the
geographic indicator itself. In such cases, most panels have denied complaints
because of the absence of any trademark rights.
As other panels have noted, e.g., WIPO Case No. D2001-0047 (<brisbanecity.com>), this conclusion is further supported by the discussion on "Geographical Identifiers" in "The Recognition of Rights and the Use of Names in the Internet Domain Name System," Report of the Second WIPO Internet Domain Name Process ("Report"). The Report notes that the "existing legal framework . . . was developed for, and applies to, trade in goods" (¶ 240), and declines to extend protection to pure geographic indicators. The Report also emphasizes the difficulty in integrating several different, and potentially conflicting, systems used nationally to protect geographical indications. The Report’s reluctance to include geographic indicators within the scope of the UDRP reinforces the conclusion that geographic indicators, unless they also serve as trademarks, are not per se covered under the UDRP.
Indeed, in the few cases where trademark rights have been found in a geographic name, it has been because the complainant was able to show actually trademark rights. For example, the complainant in Kur- und Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 (August 17, 2000) (<stmoritz.com>), had registered "St. Moritz" as a trademark in 27 countries, and the domain name was thus found to be identical to a trademark in which the complainant had rights (although the complaint was denied because respondent had a legitimate interest and there was no showing of bad faith). Similarly, in Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case No. D2000-0505 (August 4, 2000) (<barcelona.com>), the third case on which Complainant relies, the complainant was the owner of more than 1,000 trademarks in which the "distinctive character" was found to be the term "Barcelona." See alsoSkipton Building Society v. Colman, WIPO Case No. D2000-1217 (December 1, 2000) (<skipton.com>) (finding trademark rights because, despite fact that Skipton is a geographic indicator, it also is a registered trademark for Complainant building society); Lapponia Jewelry Oy vs Rautelin Oy, Case No D2000-1728 (January 22, 2001) (<lapponia.com>) (notwithstanding Respondent’s assertion that Lapponia is a common term for Lapland which is the area located in the northern parts of Finland, Sweden, Norway and Russia, Complainant’s trademark registrations were sufficient proof of its trademark rights); City of Hamina v. Paragon International Projects Ltd., WIPO Case No. D2001-0001 (March 12, 2001) (<portofhamina.com>) (finding trademark rights because Port of Hamina was used as mark for shipping and port-related services, but denying transfer because Respondent had legitimate interest and did not register and use in bad faith), Government of Canada v. David Bedford a.k.a. DomainBaron.com, WIPO Case No. D2001-0470 (June 30, 2001) (canadacouncil.com, etc.) (finding trademark rights in 31 of 32 domain names under the Canadian Trademarks Act, although the Complainant provided services of a non-trading character, and excluding one domain name because Complainant had not used the alleged trademark since 1982).
In the case of
In both of the above two cases, the Panel was of the view that the legal authority of a geographical area does not, as a matter of principle, have an exclusive right to the name of that area. This Administrative Panel agrees with that view. In both of the above two cases, the Panel did recognize that, in certain circumstances, the legal authority of a geographical area might, depending on the actual facts, have a trademark right in the name of that area. Again, this Administrative Panel agrees with that view. Thus, the important issue in a case, such as this one, concerning an unregistered mark that is a geographical location, is whether the facts of the case show that the unregistered mark is indeed performing the function of a trademark – that is to say, whether the unregistered mark is distinguishing the goods or services of the Complainant in trade from the goods or services of any other person in trade.
(Emphasis has been added to the above quotations by the
Panel to underscore a number of elemental distinctions between this case and
some of the earlier decisions.) The
evidence is clear that Complainant regards the terms
Respondent has no rights in the trademarks. A legitimate need to use the trademarks might exist if there was simply no other way for Respondent to indicate the content of its website. That is not the case. Respondent could provide the same local community information under any number of alternative names and indeed it does so already at the website, <arizonaneighborhoods.com>, using a transparently descriptive domain name. In short, Respondent has no legitimate need to use the trademarks.
Respondent made numerous references to the disclaimers posted at its websites but this Panel is of the view that the existence or efficacy of a disclaimer does not go towards creation of a legitimate interest under this limb of the Policy, but is relevant only as a factor in the assessment of bad faith. For that reason, discussion of the disclaimers can be found later in this decision.
The Panel finds that Complainant has satisfied the second limb of the Policy in respect of each disputed domain name.
Paragraph 4(b) of the Policy sets out the circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out‑of‑pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
These sets of circumstances are not exhaustive and other instances of bad faith might be in evidence, however, what is noteworthy about Paragraphs 4(b)(i) – (iv) is that they are all cases of both registration and use in bad faith. At other times, there may be evidence of use in bad faith or registration in bad faith and the Panel must find both since the requirements of Paragraph 4(a)(iii) of the Policy are conjunctive.
It is therefore logical to first test the facts against these given circumstances. There is nothing in the evidence to indicate the circumstances outlined in Paragraphs 4(b)(i) – (iii) of the Policy and it is only Paragraph 4(b)(iv) which might have application to the facts.
The example of bad faith given in Paragraph 4(b)(iv) uses the word ‘intentionally.’ There is nothing in the evidence to suggest that Respondent is a serial cybersquatter and there are many indications that he has a genuine belief in his own bona fides. Nevertheless, the Panel is conscious that in Paule Ka v. Paula Korenek, D2003-0453 (WIPO July 24, 2003), the panel held that the reference to the registrant’s ‘intention’ should be regarded as importing an objective, rather than a subjective, test. The panel asked:
[H]ow is the ‘intentional’ element required under paragraph 4(b)(iv) to be defined? The Panel is guided in its consideration of the issue by the fact that a subjective test of intent (thus considered more or less as a mens rea element) would be difficult if not impossible to apply given that credibility must be assessed only on the basis of documentary evidence. It is difficult to enter the minds of the parties to determine their subjective intent. The proper test in this Panel’s view is whether the objective consequence or effect of the Respondent’s conduct is to free ride on the Complainant’s goodwill, whether or not that was the primary (subjective) intent of the Respondent.
The critical question is therefore whether Respondent’s actions have had the objective consequence of attracting, for commercial gain, Internet users to an on‑line location, by creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of that location.
It is well
established by prior decisions under the Policy that using a domain name to redirect Internet
users to websites that host links to third-party websites is bad faith use. See, e.g., Royal Bank of
The Panel’s only residual concern is the question of ‘commercial gain.’ Complainant contends that Respondent profits when Internet users click on the competing links displayed on the websites that resolve from the disputed domain names. There is no evidence before the Panel that Respondent in fact benefits from a “pay-per-click” royalty program. There is no necessity for an actual commercial gain to be proved – there need only be a room for a reasonable inference to be drawn that by using Complainant’s trademarks to attract Internet traffic to the websites, Respondent is more likely than not to gain commercially. That inference is readily drawn, in cases such as these, where the Internet user arrives at a portal-style site carrying a multiplicity of links.
The disputed domain names <anthemfarms.com> and <suncityanthem.net> domain names are not associated with active websites and do not redirect Internet users to another of Respondent’s online locations. That type of so-called “passive holding” has long been decided as use in bad faith under the Policy in circumstances such as these where the trademark is well known and there is no legitimate reason for the respondent’s actions. See Telstra v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000); Jupiters Ltd. v. Aaron Hall, WIPO Case No. D2000-0574 (WIPO Aug. 10, 2000).
Respondent’s inclusion of disclaimers on its websites does not mitigate bad faith registration and use under Policy ¶ 4(a)(iii). See Ciccone v. Parisi, D2000-0847 (WIPO Oct. 16, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
In its submissions, Respondent stated that “Arizona Neighborhoods would be willing to modify its disclaimers on the sites in question. A mutually agreeable format as to the disclaimer, its words and whether or not it would link to the Complainant’s websites would have to be worked out independently at a later date.” Ignoring what has just been said about the dangers of initial interest confusion, it is not within the Panel’s powers or within the scope of the Policy to impose conditions or limitations on the way a domain name might be used.
The Panel finds that Complainant has satisfied Paragraph 4(a)(iii) of the Policy in respect of each disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <anthemfarms.com>, <antheminfo.com>, <anthemwest.com>, <azanthem.com>, <azsuncity.com>, <azsuncistywest.com>, <suncityanthem.net>, <suncityfestival.org>, <suncitygrandaz.com>, and <suncityinfo.com> domain names be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 29, 2008
 Complainant holds trademark registrations
with the United States Patent and Trademark Office for the following marks:
ANTHEM (Reg. No. 2,194,167 issued October 6, 1998);
 Including, Sun City (Arizona); Sun City Grand; Sun City Vistoso; Sun City West; Sun City Anthem; Sun City Aliante; Sun City Texas; Sun City Huntley; Sun City Lincoln Hills; Sun City Shadow Hills; Sun City Roseville, Sun City Palm Desert; Sun City Hilton Head, Sun City Festival, Sun City Anthem at Merrill Ranch, Anthem at Merrill Ranch, Sun City Carolina Lakes, Anthem Country Club, Anthem Parkside, Anthem Ranch, Anthem Highlands, Sun City Anthem, and Solera at Anthem.
 “Arizona Neighborhoods continually researches and purchases new domains in an attempt to serve as many neighborhoods as possible and purchased these domains along with other community domains not intending to create conflict with Del Webb, but rather to better serve the entire Phoenix area with the most complete network of community and neighborhood websites."
 See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum
Sept. 16, 2002) (“Under
 See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
 See Arthur Guinness Son & Co. (
 See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000); Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
See Entre-Manure, LLC v. Integriserv, FA 741534 (Nat. Arb. Forum July 5, 2006).
 The more substantive comments were made in connection with ‘bad faith.’