Claim Number: FA0807001216217
Complainant is Oyster
Harbour Homeowner's Association, Inc. (“Complainant”), represented by Angela P. Doughty,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain name at issue are <oysterharbour.net> and <oysterharbour.org>, registered with Enom, 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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 22, 2008.
On July 18, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <oysterharbour.net> and <oysterharbour.org> domain names are registered with Enom, Inc. and that 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, 2008, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of August 20, 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 and email@example.com by e-mail.
On September 10, 2008, the Panel extended the time for Respondent to reply to the Complaint until September 19, 2008. A timely Response was received and determined to be complete on September 19, 2008.
On August 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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.
Respondent was allowed to file a late response by special order of the Panel, which was received timely nunc pro tunc on September 19, 2008.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <oysterharbour.net> and <oysterharbour.org> domain names are confusingly similar to Complainant’s OYSTER HARBOUR HOMEOWNER’S ASSOCIATION mark.
2. Respondent does not have any rights or legitimate interests in the <oysterharbour.net> and <oysterharbour.org> domain names.
3. Respondent registered and used the <oysterharbour.net> and <oysterharbour.org> domain names in bad faith.
Complainant is a homeowner’s
association for a planned community called “
In September 2004, Complainant asked
Respondent registered the <oysterharbour.net> and <oysterharbour.org> domain names in his sole proprietorship tradename name (“Gurski.com”) on July 6, 2004 and now refuses to turn them over to Complainant.
Complainant wants to engage another web hosting company to design an improved web site which will include various association documents and on-line payments.
B. Respondent makes the following assertions:
Respondent disputes Complainant’s
rights to the
Respondent owns several lots in the
Once Complainant made a demand for the <oysterharbour.net> and <oysterharbour.org> domain names, Respondent ceased allowing Complainant to control the content of the web site. Respondent turned the web site into a community web site before this proceeding was brought. Respondent began to post whatever he wanted and whatever other residents wanted to say. The present web site contains a disclaimer making it very clear it is not the official web site of the homeowners’ association.
Complainant, Oyster Harbour Homeowner’s Association, Inc.,
operates a homeowner’s association for a community in
In 2004, Respondent volunteered to create a web site using the <oysterharbour.net> and <oysterharbour.org> domain names. Respondent did this for free and with Complainant’s knowledge and consent. From 2004 until at least November 2007, Respondent posted content approved by Complainant on the websites resolving from the disputed domain names and reported regularly to Complainant regarding the disputed domain names. Complainant’s members were allowed to make postings in a “bulletin board” fashion.
In December 2007, the
Complainant has now acquired and uses the <oysterharbourHOA.net>, <oysterharbourHOA.org> and <oysterharbour.us> domain names.
This has now turned into a “typical” homeowner association dispute.
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 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.
Complainant has not registered its OYSTER HARBOUR HOMEOWNER’S ASSOCIATION mark. The Panel finds registration of a mark is unnecessary, provided the Complainant can establish common law rights in its mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has used its OYSTER HARBOUR HOMEOWNER’S ASSOCIATION mark in connection with its services as a homeowner’s association since it incorporated in 2000. Complainant has used its mark to represent its services to its members living in the community as well as to potential future residents of the community. The Panel finds Respondent has sufficiently established common law rights in its OYSTER HARBOUR HOMEOWNER’S ASSOCIATION mark pursuant to Policy ¶4(a)(i). See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
At this stage, Complainant must merely prove it has rights to the mark (but not necessarily exclusive rights), Mattel, Inc. v. RanComp Ltd., FA 579563 (Nat. Arb. Forum Nov. 29, 2005).
Respondent’s disputed domain names each contain the “
The Panel finds Policy ¶4(a)(i) has been established.
The fact third parties may have rights to the
While Respondent does not have rights to the
This Panel specifically finds that before Respondent had any notice of the dispute, Respondent used the domain name in connection with a bona fide offering of goods or services.
This Panel specifically finds 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.
The Panel finds Policy ¶4(a)(ii) has not been satisfied.
Complainant claims Respondent has “hired” to register these two domain names and wrongfully failed to register them in Complainant’s name. An interesting argument, but there is not a scintilla of evidence to support it. In light of the unsworn (but uncontroverted) declarations of “Joe” (a former member of Complainant’s Board of Directors) and Mary Beth Bell (a former member of Complainant’s Board of Directors), Complainant knew or should have known this. Respondent volunteered to design a web site pro bono and Complainant accepted this offer. There was no discussion about the ownership of the domain names. Complainant should have noticed it never paid for the domain names or web hosting since 2004. This shows Complainant’s bad faith, not Respondent’s.
Respondent registered these two domain names in 2004 with Complainant’s acquiescence. There was no bad faith because everyone knew what was being done. In hindsight, Complainant wishes it was done differently. That wish cannot be allowed to re-write history.
When a domain name is registered with a mark owner’s acquiescence, there is no bad faith registration, Mark Travel Corp. v. ATHS, FA 154644 (Nat. Arb. Forum May 29, 2003). There must be bad faith both in usage and at the time of registration, Parker Hannifin Corp. v. East Bay Website Co., AF-0587 (eResolution Dec. 22, 2000). Having found there was no bad faith at the time of registration, the Panel need not consider whether there was bad faith use.
This Panel specifically finds there are no circumstances indicating Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant (or a competitor) for valuable consideration in excess of Respondent's documented out-of-pocket costs directly related to the domain name. Respondent ran a community web site for his community pro bono. That was his sole purpose.
This Panel specifically finds Respondent has not registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name. Complainant has acquired and is using the <oysterharbourHOA.net>, <oysterharbourHOA.org> and <oysterharbour.us> domain names. Respondent suggested Complainant register the <oysterharbour.com> domain name, an idea Complainant inexplicably rejected.
This Panel specifically finds Respondent has not registered the domain name primarily for the purpose of disrupting the business of a competitor. Complainant and Respondent simply are not competitors.
The Panel specifically finds Respondent has not intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site 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 Respondent's web site or location or of a product or service on respondent's web site or location. Respondent provides a free service to members of his community, who know all about this incident.
The Panel finds Policy ¶4(a)(iii) has not been satisfied.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <oysterharbour.net> and <oysterharbour.org> domain names remain with Respondent.
Pursuant to UDRP §15, the Panel finds Complainant brought this action in bad faith and it was an attempt to reverse hijack these two domain names.
Dated: October 14, 2008
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