national arbitration forum

 

DECISION

 

PH4 Corporation v. Kim Jones and Rick and Kim Jones

Claim Number: FA0804001175103

 

PARTIES

Complainant is PH4 Corporation (“Complainant”), represented by Abby C. Moskovitz of Dobrusin & Thennisch, PC, Michigan, USA.  Respondent is Kim Jones and Rick and Kim Jones (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sun-city-homes.com>, <thesuncitylife.com> and <suncityre-sales.com>.  The <sun-city-homes.com> domain name was registered with Wild West Domains, Inc.  The <thesuncitylife.com> and <suncityre-sales.com> domain names were registered with Domainpeople, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically April 3, 2008; the National Arbitration Forum received a hard copy of the Complaint April 8, 2008.

 

On April 3, 2008, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <sun-city-homes.com> domain name is registered with Wild West Domains, Inc., and that Respondent is the current registrant of the names.  Wild West Domains, Inc. verified that Respondent is bound by the Wild West Domains, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On April 10, 2008, Domainpeople, Inc. confirmed by e-mail to the National Arbitration Forum that the <thesuncitylife.com> and <suncityre-sales.com> domain names are registered with Domainpeople, Inc., and that Respondent is the current registrant of the names.  Domainpeople, Inc. verified that Respondent is bound by the Domainpeople, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

 

On April 16, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 6, 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@sun-city-homes.com, postmaster@thesuncitylife.com, and postmaster@suncityre-sales.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 13, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain names that Respondent registered, <sun-city-homes.com>, <thesuncitylife.com> and <suncityre-sales.com>, are confusingly similar to Complainant’s SUN CITY mark.

 

2.      Respondent has no rights to or legitimate interests in the <sun-city-homes.com>, <thesuncitylife.com> and <suncityre-sales.com> domain names.

 

3.      Respondent registered and used the <sun-city-homes.com>, <thesuncitylife.com> and <suncityre-sales.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Del Webb Corporation is that licensee of PH4 Corporation for the SUN CITY mark.  It joins as Complainant.  Complainant is the nation’s leading builder of active adult communities for people 55 years of age or older.  For years, Complainant has used the SUN CITY mark to identify its goods and services in connection with developing, building, and maintaining residential communities.  Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SUN CITY mark (i.e. Reg. No. 2,317,288 issued February 8, 2000).

 

Respondent registered the <thesuncitylife.com> domain name with Wild West Domains, Inc. November 13, 2006, the <sun-city-homes.com> domain name with Domainpeople, Inc. April 18, 2004, and the <suncityre-sales.com> domain name with Domainpeople, Inc. April 17, 2004.  Respondent’s disputed domain names resolve to a website offering real estate for sale in direct competition with Complainant.

 

DISCUSSION

Preliminary Issue: Multiple Respondents

 

The Panel must first consider whether these proceedings have been properly instituted.  UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”  Complainant contends that Respondent is operating under various asserted alleged aliases.  Additionally, the National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.

 

The disputed domain names all redirect Internet users to Respondent's website, located at the <thesuncitylife.com> domain name.  The WHOIS information for the <suncityre-sales.com> and <sun-city-homes.com> domain names list the registrant as “Kim Jones” at rickandkimjones@aol.com while the WHOIS information for the <thesuncitylife.com> domain name lists the registrant as “Rick and Kim Jones” at rjonesproperties@aol.com.  The Panel finds that the listed aliases are the same person or entity, or entities controlled by the same person or entity, so that the filing of this Complaint is justified and proper pursuant to Supplemental Rule 4(f)(ii).  See Yahoo!, Inc. v. Soksripanich & Others., D2000-1461 (WIPO Jan. 29, 2001) (finding multiple aliases to be the same respondent when the administrative contact information of the various subject domain names was the same or quite similar); see also Yahoo! Inc. & GeoCities v. Data Art Corp., D2000-0587 (WIPO Aug. 10, 2000) (decision rendered against multiple aliases where "the addresses used and the Contacts designated [were] inter-linking and identical.").

 

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Registration with the USPTO establishes rights in Complainant’s SUN CITY mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive."); see also 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.”).

 

Complainant asserts that Respondent’s disputed domain names are confusingly similar to Complainant’s SUN CITY mark pursuant to Policy ¶ 4(a)(i).  Each of the disputed domain names contains Complainant’s mark in its entirety, add a generic term obviously related to Complainant’s business, add a hyphen, and add the generic top-level domain (“gTLD”) “.com.”  The Panel finds that a disputed domain name that adds a generic term with an obvious relationship to Complainant’s business to a mark creates a confusing similarity pursuant to Policy ¶ 4(a)(i).  See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to the complainant's mark since it merely adds the word “auction” used in its generic sense).  In addition, the Panel finds that the addition of hyphens or a gTLD are irrelevant in distinguishing a disputed domain name from an established mark.  See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also 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).  Therefore, pursuant to Policy ¶ 4(a)(i), Respondent’s disputed domain names are confusingly similar to Complainant’s mark.

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain names.  When a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  The Panel holds that in this case, Complainant made a prima facie showing.  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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

 

Respondent failed to respond to the Complaint and in such circumstances the Panel may assume that Respondent has no rights to or legitimate interests in the disputed domain names.  See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  However, the Panel chooses to give an examination to the evidence against the applicable Policy ¶ 4(c) elements before making a final determination about Respondent’s rights and legitimate interests.

 

Complainant asserts that Respondent is neither commonly known by the disputed domain names, nor licensed to register domain names using the SUN CITY mark.  The WHOIS information associated with the disputed domain names identifies Respondent as either “Kim Jones” or “Rick and Kim Jones,” which provides no evidence that Respondent is commonly known by the disputed domain names.  Therefore, the Panel finds that without affirmative evidence of being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

Complainant also urges that Respondent is using the disputed domain names to attract Internet users to the associated website for the purposes of displaying real estate properties for sale in direct competition with Complainant.  The Panel finds that this type of activity using disputed domain names, which are confusingly similar to a mark, is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and it is not 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).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s use of the disputed domain names to directly compete with Complainant supports findings of bad faith.  The Panel finds that a registered domain name used primarily to disrupt the business prospects of a competitor illustrates bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).

 

In addition, Respondent is using the disputed domain names to intentionally divert Internet users by creating the possibility of confusion that the disputed domain names are associated with Complainant, then commercially gaining from the confusion by offering homes for sale, in direct competition with Complainant.  The Panel finds such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).

 

Finally, Respondent’s extensive communication with Complainant with false assurances that Respondent would let the disputed domain names expire but instead re-registered them further supports findings of bad faith.  Further, during the communication, Respondent offered to pay Complainant in order to keep the disputed domain names.

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sun-city-homes.com>, <thesuncitylife.com> and <suncityre-sales.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: May 27, 2008.

 

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