TB Proprietary Corp. c/o Toll Brothers, Inc. v. May & Associates Realty, Inc
Claim Number: FA0712001124322
Complainant is TB Proprietary Corp. c/o Toll Brothers, Inc. (“Complainant”), represented by Robert
F. Zielinski, of Wolf, Block, Schorr and Solis-Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <frenchmansreservecountryclubrealty.com>, registered with Network Solutions, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.
On December 26, 2007, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <frenchmansreservecountryclubrealty.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 2, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 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 postmaster@frenchmansreservecountryclubrealty.com by e-mail.
On January 22, 2008, Complainant submitted a Joint Request to Stay the Administrative Proceeding. The National Arbitration Forum granted Complainant’s Request for a Stay on January 24, 2008. On February 20, 2008, Complainant filed a Request to Remove the Stay of the Administrative Proceeding which was granted by the National Arbitration Forum.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 26, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <frenchmansreservecountryclubrealty.com> domain name is confusingly similar to Complainant’s FRENCHMAN’S RESERVE mark.
2. Respondent does not have any rights or legitimate interests in the <frenchmansreservecountryclubrealty.com> domain name.
3. Respondent registered and used the <frenchmansreservecountryclubrealty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TB Proprietary Corp. c/o Toll Brothers, Inc., is a land development company currently in the process of developing a luxury golf community and country club with accompanying Arnold Palmer designed eighteen hole golf course. Since as early as 2004, Complainant has been promoting the “Frenchman’s Reserve” name in connection with the developing golf community. Since 2004, Complainant has spent millions of dollars in advertising and marketing expenses in addition to the considerable time, resources, and efforts necessary in developing a golf community.
Respondent registered the <frenchmansreservecountryclubrealty.com> domain name on December 8, 2006. Respondent’s domain name resolves to a website featuring plans and depictions of homes currently being built by Complainant in addition to competing real estate services.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Although Complainant does not hold a trademark registration
in the FRENCHMAN’S RESERVE mark, the Panel finds that a registration is not
necessary to establish rights under Policy ¶ 4(a)(i). See
Complainant asserts common law rights in the FRENCHMAN’S RESERVE mark through continuous use in commerce since 2004. Complainant has expended substantial resources designing, developing, and marketing its luxury golf community including enlisting legendary golfer Arnold Palmer to help in the golf course design and construction. The Panel finds that Complainant’s advertising and marketing efforts is sufficient to establish secondary meaning in the FRENCHMAN’S RESERVE mark. As a result of this secondary meaning, the Panel finds that Complainant has established rights in the mark for purposes of Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
Complainant contends that Respondent’s <frenchmansreservecountryclubrealty.com> domain name is confusingly similar to Complainant’s FRENCHMAN’S RESERVE mark. Respondent’s domain name contains Complainant’s mark in its entirety and adds the generic terms “country,” “club,” and “realty” along with the generic top-level domain (gTLD) “.com.” The Panel finds that Respondent has failed to distinguish its <frenchmansreservecountryclubrealty.com> domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark); see also Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the registered trademarks is that the goods or services offered in association with [the] domain name are manufactured by or sold by the Complainant or one of the Complainants [sic] approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also 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).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant asserts that Respondent does not have rights or legitimate interests in the <frenchmansreservecountryclubrealty.com> domain name. Complainant’s assertions and accompanying evidence constitutes a prima facie case under the Policy. As a result, the burden shifts from Complainant to Respondent to set forth evidence of rights or legitimate interests under Policy ¶ 4(a)(i). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is using the <frenchmansreservecountryclubrealty.com> domain name to operate a website that contains plans and depictions of homes currently being built by Complainant in addition to competing real estate services. The Panel finds that Respondent’s use is not one in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); 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).
What is more, the WHOIS information for the <frenchmansreservecountryclubrealty.com>
domain name lists the registrant as “May &
Associates Realty, Inc.” Complainant
contends that Respondent is not commonly known by the disputed domain name nor
licensed to register domain names featuring Complainant’s FRENCHMAN’S RESERVE
mark. The Panel finds that there is no
evidence suggesting the Respondent is commonly known by the disputed domain
name for purposes of Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interest where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name); see also Ian
Schrager Hotels, L.L.C. v. Taylor, FA
173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable
evidence to support the assertion that a respondent is commonly known by a
domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <frenchmansreservecountryclubrealty.com> domain name to operate a website that promotes real estate services for Complainant’s luxury golf community. The Panel finds that offering services in direct competition with Complainant through a website that is confusingly similar to Complainant’s mark constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Respondent’s use of the <frenchmansreservecountryclubrealty.com> domain name including the depictions of the homes being developed by Complainant will likely cause confusion among Internet users as to Complainant’s sponsorship of and affiliation with the resulting website and real estate services. The use of this confusion for commercial gain is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used a domain name confusingly similar to the complainant’s mark to attract users to a website sponsored by the respondent).
Finally, Respondent’s resulting website features depictions
of Complainant’s homes currently being developed under the FRENCHMAN’S RESERVE
mark. The Panel finds that Respondent’s
registration and use of a confusingly similar domain name with knowledge of
Complainant’s mark is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the Complainant’s mark when it
registered the subject domain name”); see
also Am. Online, Inc. v.
Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is
using the domain name at issue to resolve to a website at which Complainant’s
trademarks and logos are prominently displayed. Respondent has done this with full knowledge
of Complainant’s business and trademarks. The Panel finds that this conduct is
that which is prohibited by Paragraph 4(b)(iv) of the
Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <frenchmansreservecountryclubrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: March 7, 2008
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