Registry, Inc. v.
Claim Number: FA0808001220432
Complainant is Private Communities Registry Inc. (“Complainant”), represented by Amber
L. Neilson, of Beusse Wolter Sanks Mora & Maire P.A.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <private-communities.org>, <private-community.com>, <usprivate-communities.org>, <usprivate-communities.com>, and <usprivatecommunities.net>, registered with Enom, Inc. Hereafter, these disputed domain names will be referred to collectively, where appropriate, as the “Domain Names.”
The undersigned certify that each 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:
Bruce E. O'Connor and David E. Sorkin as Panelists, and Christopher Gibson as the Panel’s Chair.
This decision is being rendered in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the National Arbitration Forum’s UDRP Supplemental Rules (the “Supplemental Rules”).
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 13, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 14, 2008.
On August 14, 2008, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <private-communities.org>, <private-community.com>, <usprivate-communities.org>, <usprivate-communities.com>, and <usprivatecommunities.net> 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 the Policy.
On August 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 10, 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, and firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on September 10, 2008.
Complainant submitted an Additional Submission on September 15, 2008 that was determined to be timely and complete pursuant to Supplemental Rule 7. Respondent followed with an Additional Submission on September 20, 2008, which was also determined to be timely and complete pursuant to Supplemental Rule 7.
On September 29, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Bruce E. O'Connor and David E. Sorkin as Panelists, and Christopher Gibson as the Panel’s Chair.
PRELIMINARY ISSUE: CONCURRENT PROCEEDINGS
Respondent has urged that Complainant’s request for transfer of the Domain Names be denied or, in the alternative, that this Panel stay these UDRP proceedings pending the outcome of Respondent’s petition to cancel Complainant’s trademarks, which was filed before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“USPTO”) on September 5, 2008. In its petition before the USPTO, Respondent has alleged that the marks are merely generic and descriptive, and also alleged fraud on the trademark office. This petition was filed after Complainant had submitted its Complaint in these UDRP proceedings on August 19, 2008.
In its Additional Submission, Complainant contends that its UDRP complaint should not be denied or stayed because Respondent’s USPTO petition to cancel is not contingent on the instant UDRP dispute, or vice versa. Complainant also argues that staying these proceedings would set bad precedent, as respondents might be tempted to file petitions to cancel with the USPTO and thereby circumvent UDRP procedures.
In accordance with Rule 18(a), this Panel has discretion to decide whether to proceed to a decision, or to suspend or terminate these proceedings, in the event that other legal proceedings “in respect of a domain-name dispute that is the subject of the complaint” are initiated during the pendency of the UDRP proceedings. However, on a careful reading of Rule 18(a), Respondent’s petition to cancel Complainant’s trademarks before the USPTO is not a legal proceeding concerning a “domain-name dispute that is the subject of the [Complainant’s] complaint” here. Nevertheless, the subject matter of the USPTO proceedings – whether Complainant’s trademarks should be cancelled – relates to one of the issues raised as a defense by Respondent in this UDRP case: whether Complainant’s trademarks are generic and thus not entitled to protection.
Having considered the matter carefully, the Panel is of the unanimous view that it should proceed to a decision. The Panel has full authority to do so, its decision is not contingent on the outcome of the USPTO proceedings, and, importantly, the parties have taken the opportunity to fully brief the relevant issues to be decided in this case. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002) (deciding to proceed despite the complainant filing suit in federal court for trademark and service mark infringement).
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
The parties in this dispute have submitted comprehensive pleadings, affidavits, and substantial documentary evidence in support of their respective positions. The Panel wishes to express appreciation to the parties for their efforts, while nonetheless recognizing that the Domain Names are fiercely disputed. The Panel has summarized the parties’ arguments below.
Complainant is the owner of two registered trademarks, PRIVATE COMMUNITIES REGISTRY and PRIVATECOMMUNITIES.COM, the details of which are referred to in the FINDINGS section below. The trademark registrations indicate that Complainant has been using its PRIVATE COMMUNITIES REGISTRY mark in commerce since June 1996 and its PRIVATECOMMUNITIES.COM mark in commerce since December 31, 1998. Complainant contends that due to their continuous and significant use in commerce, it had established common law rights in these marks from as early as January 2002, a date before any of the disputed Domain Names was registered.
Complainant states that it started its business with two clients and now has approximately 300 communities showcased on its website. Each of these communities pays a membership fee for Complainant’s services, which include providing on-line and off-line real estate marketing services for retirement, master-planned, gated, luxury and vacation communities for residential real property. From 1996-2005, Complainant marketed its services in several publications circulated nationally and worldwide such as the Wall Street Journal, New York Times, Links Magazine, and Coastal Living. Since its beginning in 1996, Complainant has spent over $800,000 on advertising and from 1996 until to 2001, it spent almost $400,000 on advertising. There are approximately 6,100 page views of the communities’ pages posted on Complainant’s website every day, and Complainant has received awards praising its services. Complainant has submitted documentary evidence in support of these factual allegations to contend that it had established goodwill and secondary meaning for each of its trademarks prior to the filing of its trademark applications, and prior to Respondent’s registration of the Domain Names in dispute. Complainant’s trademark applications were filed under the provisions of §2(f) of the Lanham Act and based on a 5-year declaration of continuous and exclusive use. Complainant argues that for purposes of the UDRP Policy, ¶ 4(a)(i), because each of its PRIVATECOMMUNITIES.COM and PRIVATE COMMNITIES REGISTRY marks are registered with the USPTO, Complainant has established rights in these marks, they are entitled to protection, and cannot be regarded merely as common or descriptive terms.
Complainant alleges that Respondent’s Domain Names are virtually identical to Complainant’s marks and likely to cause confusion. Each of the Domain Names directs traffic to Respondent’s website at <private-communities.org>, where Respondent offers identical services to the same customers through the same channels of trade as Complainant. Complainant alleges that Respondent has copied Complainant’s advertising patterns, such as buying ads to appear in the Harvard Magazine and Yale Alumni Magazine, where Complainant has been advertising since 1996 and 1997, respectively. Complainant has submitted documentary evidence of numerous instances of confusion among customers between Complainant’s and Respondent’s websites. From October 2003 until June 2008 there have been over 30 instances of actual confusion.
Complainant contends that Respondent does not have any legitimate rights or interests in the Domain Names because (i) Respondent is not using them in connection with a bona fide offering of goods or services; (ii) Respondent is not commonly known by the Domain Names; and (iii) Respondent is not making legitimate noncommercial or fair use of the Domain Names. Complainant contends that Respondent is using the Domain Names to compete with Complainant by attracting Complainant’s customers. The use of confusingly similar domain names in association with providing competing goods and services does not constitute a bona fide offering of goods and services. In addition, the Domain Names have nothing to do with Respondent’s business name, Himalaya Rankings, LCC. By the time Respondent started operating its website at <private-communities.org>, Complainant had been operating under the PRIVATE COMMUNITIES REGISTRY and PRIVATECOMMUNITIES.COM marks for over eight and five years, respectively. Instead of having to start from scratch and gain secondary meaning for its own name, Respondent has traded off of Complainant’s already established goodwill.
Complainant also claims that Respondent was fully aware of Complainant’s business, website and marks, and had been copying Complainant’s business model and strategies since the commencement of Respondent’s business in 2002. According to Complainant, it had already established goodwill and secondary meaning in its trademarks prior to Respondent registering the disputed Domain Names. One of Respondent’s employees allegedly contacted Complainant in February 2003 and offered to provide Complainant with confidential information pertaining to Respondent’s business. Complainant did not respond due to the suspicious nature of this communication. This was before Respondent’s registration in March 2003 of the <private-communities.org> Domain Name which it now uses for its primary website. Complainant’s lawyers sent a letter to Respondent on May 16, 2003, which asserted that Respondent’s actions, through its registration and use of the domain names <private-commuinities.org> and <private-communities.us>, “constitute[d] trademark infringement and unfair competition.” The letter demanded that Respondent cease to use the domain names (and any similar domain names) and transfer them to Complainant. Instead of ending use, Respondent indicated that it was “operating a website called US Private Communities” and in “no way representing our company as Private Communities Registry or Privatecommunities.com.” Shortly thereafter in August 2003, Respondent offered to enter into a business relationship with Complainant. Complainant also offered evidence that a copy of Complainant’s “media kit” was posted on Respondent’s server.
Complainant contends that Respondent has registered and is using the Domain Names in bad faith (i) in order to prevent Complainant from reflecting its trademarks in corresponding domain names and having engaged in a pattern of such conduct; (ii) for the purpose of disrupting Complainant’s business, and (iii) to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement of Respondent’s website and services. Complainant provides evidence to show a pattern of Respondent registering numerous domain names that are similar to Complainant’s domains. Complainant alleges that Respondent has copied Complainant’s business model and strategies, was completely aware of Complainant, and has been riding on Complainant’s coattails by using similar domain names, as well as keywords on Google (this issue is not before this Panel). In short, the Respondent is operating an almost identical business under almost identical Domain Names in direct competition with Complainant, which has resulted in disrupting Complainant’s business.
Respondent, Himalaya Rankings, LLC was incorporated in
Respondent contends that there is no likelihood of confusion with respect to the disputed Domain Names because the term “private community,” whether singular or plural, is generic. Respondent indicates that searches on both Google and Wikipedia provide definitions of this term, which the general public recognizes to describe gated, planned, or other types of residential communities. According to Google AdWords, people searched for the term “private communities” approximately 5,400 times during the month of August 2008; the term “private community” was searched approximately 8,100 times during the same month.
Respondent argues that Complainant’s registered trademarks, PRIVATECOMMUNITIES.COM and PRIVATE COMMUNITIES REGISTRY, are mainly comprised of generic terms and thus any trademark protection is very thin. To the extent which Complainant’s registrations are permitted to remain in force, only exact duplication of the marks should be recognized as having sufficient support to require a transfer of a domain name. Respondent states that contrary to Complainant’s argument, the strength, or in this case the weakness, of Complainant’s mark is properly before this Panel. Because Complainant’s asserted marks are comprised almost entirely of a generic phrase, Respondent’s disputed Domain Names, which contain the same generic phrase with modifiers, should remain under its ownership and control.
Respondent has provided a detailed review of the differences between its Domain Names and Complainant’s trademarks, such as use of different gTLDs, or the introduction of a hyphen or plural “s,” or the insertion of the acronym “us” before the other terms. Respondent’s basic point is that, because “private communities” is a generic term, consumers are not likely to assume any two companies operating under a minor variation of this term are affiliated in any way.
Respondent contends that Complainant’s allegations of actual confusion are not valuable given that Complainant’s registered trademarks are derivatives of the generic term “private community.” When businesses use a generic term as the substantial portion of their business names, it is only natural that customers might mistype a name and cause communications to be misdirected. The few mistaken communications cited by Complainant over a period of more than five years of the parties’ usage of the term “private communities” within their business names are unremarkable, particularly in light of the fact that Complainant and Respondent regularly provide their services to the same clients. Similarly, Respondent claims that Complainant’s distress over Respondent’s similar advertising methods is groundless. Businesses with a similar business model are likely to identify the same methods for advertisement. It is to be expected that two of the most successful businesses in this particular industry would identify the Harvard and Yale magazines as ideal candidates for marketing. As the Harvard and Yale magazines are the only college alumni magazines offering an advertising section for real estate, it is no surprise that both parties, as well as their competitors, would determine that advertising in those magazines.
Respondent urges that it has a legitimate right and interest in the
Domain Names. As explained above, the
term private community is generic, and, as such, Complainant has made
legitimate use of the term. More
specifically, (i) Respondent has used these Domain Names for years for
promoting private communities, which is undisputedly a bona fide
offering of services; (ii) Respondent is commonly known by the Domain Names;
and (iii) Respondent does not use the Domain Names to divert consumers or
tarnish Complainant’s trademarks.
Respondent uses the Domain Names to advertise real estate in private
communities throughout the
Respondent also maintains that it uses the Domain Names, not to divert consumers or tarnish Complainant’s asserted marks, but to promote and provide its own services. Complainant’s attempt to draw analogies to several other UDRP cases are misplaced because the respondents in these other cases made no legitimate usage of the domains under which they operated, and they did not do business under the disputed domain names except to trade upon the goodwill established by the complainants.
Respondent denies that it registered the Domain Names (i) in order to prevent Complainant from reflecting its currently registered trademarks in somewhat similar domain names; (ii) primarily for the purpose of disrupting the business of a competitor; or (iii) in an intentional effort to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondents website or services. In this regard, Respondent argues that registration of the Domain Names was a business decision and part of Respondent’s business model. Any company or individual in the business of advertising private communities, including gated communities, golf communities, and planned communities, should seek to promote its services as effectively as possible. Such promotion may well include obtaining as many generic domain names as possible and re-directing those domains to a central website. Respondent’s efforts to compete in this market, accordingly, cannot be considered as evidence of bad faith.
Complainant unfairly relies upon three emails from one or two former employees as evidence of Respondent’s supposed bad faith. The emails in question reflect only that one or more employees of Respondent were aware of Complainant as a competitor. The employee(s) acted without authority from Respondent, and inasmuch as it was able to identify the offending employee, the employee was released from his position shortly after these actions were discovered. Regardless, the fact that Respondent was aware of its competitor is not evidence of bad faith; it is merely a reflection of good business sense.
Finally, the fact that Respondent did not transfer the disputed Domain Names to Complainant in response to a cease-and-desist letter also fails to support Complainant’s claims of bad faith. Respondent, as explained above, registered them in good faith with a legitimate right to use. There was no reason to transfer them. Respondent has had no intent to disrupt Complainant’s business. To the contrary, Respondent seeks only to promote its own services and, until Complainant filed this proceeding and showed itself to be unreasonable in settlement discussions, had no intention of even challenging Complainant’s trademark registrations. Respondent denies that it copied Complainant’s media kit and is not aware that a webpage showing this media kit ever existed on Respondent’s site.
To the extent anyone has ever made inquiry regarding Complainant, Respondent, like Complainant, simply stated that the two were different companies with similar business models. Respondent has been content to simply coexist and compete with Complainant. Respondent’s usage of a generic term within its business and domain names does not constitute evidence of bad faith. The simple fact is that Respondent is an industry leader in search engine optimization and, although a relative newcomer, is able to readily compete with Complainant’s established business.
C. Additional Submissions
Complainant contends that Respondent’s position is disingenuous: on the
one hand, Respondent urges that Complainant’s trademarks are generic terms, yet
on the other hand, Respondent in its Petition to Cancel
before the USPTO writes about how in November 2006 it began “branding” its services
In response to Respondent’s primary arguments, Complainant asserts that its trademarks are not generic, that Respondent was well aware of Complainants marks when it registered the Domain Names, and that Respondent’s other arguments regarding likelihood of confusion, legitimate rights and interests, and no bad faith are disingenuous and unpersuasive.
To take one example concerning confusing similarity, Complainant compares Respondent’s <private-communities.org> Domain Name with Complainant’s <privatecommunities.com> domain. Complainant argues that it is preposterous for Respondent to allege that by switching from one gTLD (.com) to another (.org) and merely adding a hyphen, this is enough to alleviate confusion, especially in light of the numerous instances of actual confusion documented by Complainant. Complainant observes that Respondent has admitted that its business is in direct competition with Complainant’s business, even while maintaining that instances of confusion are “unremarkable.” Contrary to Respondent’s assertion, Complainant indicates that it has a number of other competitors using the same business model but choosing very different names – such as <livesouth.com>, <golfcoursehome.net>, <ideal-communities.com>, <southcommunityguide.com> – which have given rise to no instances of actual confusion. All Complainant asks is that companies like Respondent come up with their own names and domain names rather than riding on the coattails of Complainant’s already established goodwill in the marketplace under its trademarks.
Complainant refutes Respondent’s allegation that Harvard and Yale magazines are the only college alumni magazines offering advertising sections for real estate, which Respondent rationalized as a reason for choosing these identical advertising placements. Complainant listed eight additional colleges that have real estate sections in their alumni publications and/or on their websites.
Complainant repeats its arguments that Respondent has no rights or legitimate interests in the Domain Names, noting that all the Domain Names resolve to Respondent’s <private-communities.org> Domain Name, and Complainant’s prior rights precede Respondent’s registration of the disputed Domain Names.
Regarding bad faith, Complainant repeats its arguments that Respondent registered the Domain Names to trade on Complainant’s goodwill. Complainant asserts that, as confirmed in the Response, Respondent was aware of Complainant as a competitor. While Respondent argues this is a reflection of good business sense, Complainant contends that when a competitor registers 15 domain names similar to your own, operates its business under an almost identical business name and domain names, and misappropriates Complainant’s media kit by placing it on Respondent’s server, this clearly shows more than good business sense; instead, it show bad faith intent to copy every move made by Complainant. Complainant also provides additional evidence in its Additional Submission to show that its media kit was copied on Respondent’s server.
Complainant further questions why hasn’t Respondent testified that they were unaware of Complainant when they registered the Domain Names? Complainant contends that it defies logic that Respondent selected <private-community.com> without being aware of Complainant’s <privatecommunities.com>. It is common knowledge that domain names without hyphens are more valuable than those with hyphens. Complainant alleges that Respondent was aware of Complainant’s marks and domain name and attempted to trade on Complainant’s goodwill. By the time Respondent registered its first domain names (under “.us”) in May 2002 and the Domain Name <private-community.com> in August 2002, Complainant had been in business 6 years and had been using its PRIVATECOMMUNITIES.COM and PRIVATE COMMUNITIES REGISTRY marks for 4 and 6 years, respectively. Complainant’s marks were well-known in the industry and had already established secondary meaning at the time Respondent registered the Domain Names.
Complainant further argues that because the USPTO has deemed Complainant’s trademarks to be entitled to protection, there is no reason to question that determination now, especially in light of the lack of evidence provided by Respondent to show genericness. The fact that “private communities” was searched 5,400 times during the month of August 2008 on Google has no relevance to this case. Internet users might have been looking for Complainant’s website, and there is simply no way to know the context in which people were using these searches. In addition, self-serving statements by Respondent’s founder as to why he selected the <private-community.com> Domain Name should be given little weight. Complainant again contends that its trademarks had achieved secondary meaning in the relevant market, and to become generic they must have lost their ability to function as a source identifier for the goods at issue. Respondent has failed to prove this.
Finally, while Respondent can use the phrases “private community” or “private communities” in a fair use, descriptive sense on its website, this case is not about that type of use. Instead, this case is about whether Respondent knew of Complainant’s marks when it registered the Domain Names (which it did) and whether Respondent can continue to use such similar Domain Names in a bad faith manner to directly compete with Complainant (which it cannot).
Respondent: Respondent in its Additional Submission argues that Complainant’s additional statement demonstrated its inability to explain why a generic term should be removed from the English language except as a protected trademark. Because Complainant failed to meet its burdens, its request for transfer of the Domain Names should be denied.
First, Complainant’s argument that Respondent failed to prove genericness of Complainant’s registered trademarks misses the point. The issue before the Panel is not whether Complainant’s registered trademarks are generic, but, more precisely, it is whether the term “private communities” is generic. Respondent argues that it is Complainant’s burden to establish the primary significance of the term in the minds of the consuming public, but instead of defending its asserted marks, Complainant has focused on attacking the evidence submitted by Respondent. Respondent defends its reference to Wikipedia and other dictionaries to show genericness. Respondent also re-emphasizes the relevance of evidence regarding the number of times consumers performed searches on Google for variations of “private community.” The sheer number of results is proof of the genericness of the phrase and disproves Complainant’s suggestion that consumers were searching for Complainant’s website. Respondent also refers to a 1994 book that referred to the phrase “private communities,” before Complainant chose these terms. To the extent Complainant’s trademark registrations are allowed to stand, they should be treated as very narrow.
Respondent reargues that Complainant failed its burden of proof with respect to showing that the Domain Names registered by Respondent are identical or confusingly similar to Complainant’s trademarks. If Complainant wished to avoid being in competition with businesses having a similar name to its own, Complainant ought not to have used a generic term as the main portion of its name. Likelihood of confusion should be found only in the event of identical copying. Complainant should not, however, be permitted to harm Respondent’s business due to Complainant’s own faulty business practices. Respondent states that it is appreciative of Complainant’s identification of additional advertising opportunities in alumni magazines, but, as stated previously, Respondent was aware of only two college alumni magazines providing real estate advertising. Respondent also continues to deny it had a copy of Complainant’s media kit on its website.
Respondent also contends Complainant failed to show Respondent registered and uses the disputed Domain Names in bad faith. Complainant’s arguments, in essence, ask the Panel to find that the mere registration of the Domain Names is evidence of bad faith. The question of whether anyone at Respondent was aware of Complainant’s own domain registration is irrelevant to this proceeding. The fact is that Respondent registered and uses the Domain Names, all of which include a form of the term “private communities,” in order to promote private communities. Such use cannot be considered bad faith, regardless of Complainant’s own activities relating to the generic term.
1. Complainant Private Communities Registry Inc.
2. Respondent Himalaya Rankings LLC is a
3. Both Respondent and Complainant recognize that they are direct competitors, offering their services to many of the same customers.
4. Complainant owns two trademarks registered with the USPTO:
(1) PRIVATE COMMUNITIES REGISTRY, Reg. No. 2,761,827, filed on August 21, 2002 and registered on September 9, 2003, showing first use in commerce on June 1, 1996; and
(2) PRIVATECOMMUNITIES.COM, Reg. No. 3,222,202, filed on March 23, 2006 and registered on March 27, 2007, showing first use in commerce on December 31, 1998.
5. Complainant owns the domain name <privatecommunities.com>, which was registered on September 27, 1998. Complainant’s website at <privatecommunities.com> became operational from May 1999, as evidenced by archived web pages maintained by the Internet Archive (archive.org). Complainant has registered numerous other domain names that relate to the nature of its business and many of which redirect the user to Complainant’s main website.
6. The Domain Names that are the subject of this Complaint were registered by Respondent on the following dates:
(1) <private-community.com> – August 13, 2002
(2) <private-communities.org> – March 23, 2003
(3) <usprivate-communities.com> – November 13, 2006
(4) <usprivate-communities.com> – November 13, 2006
(5) <usprivatecomunities.net> – February 5, 2008
All of these Domain Names resolve to the Respondent’s web site at <private-communities.org>. The Respondent has registered other domain names, such as <private-communities.us> and <private-community.us>, which for jurisdictional reasons are not the subject of Complainant’s Complaint but also resolve to Respondent’s main website.
7. On September 5, 2008, Respondent filed a petition to cancel Complainant’s trademarks before Trademark Trial and Appeal Board of the USPTO.
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.
(i) Rights in a trademark: The first issue to be considered under the Policy ¶ 4(a)(i) is whether Complainant has rights in a trademark or service mark. The consensus view found in the vast majority of UDRP decisions is that when a complainant owns a registered trademark, this satisfies the threshold requirement of having trademark rights. See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Mattel, Inc. v. KPF, Inc., FA 244073 (Nat. Arb. Forum Apr. 26, 2004) (“Complainant established rights in the BARBIE mark through registration with the U.S. Patent and Trademark Office (‘USPTO’)”); see also 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.”); WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at http://www.wipo.int/amc/en/domains/search/overview/index.html#11.
Respondent argues throughout its submissions that Complainant should be denied its requested relief because Complainant’s PRIVATECOMMUNITIES.COM and PRIVATE COMMUNITIES REGISTRY marks, as well as its primary domain name <privatecommunities.com>, are comprised of a generic term. This Panel, however, agrees with other panels that have decided the UDRP forum is ill equipped to make the fact-intensive determinations necessary to decide definitively whether a mark is generic. As the Panel stated in Magnetic Shield Corp. v. MuShield, FA 115845 (Nat. Arb. For. March 11, 2008),
Such determinations must rely on evidence whose weight and foundation is better exposed and assessed through traditional judicial proceedings. [Citations omitted]. Simply put, ‘[a] UDRP proceeding is an improper forum in which to seek invalidation or disregard of a duly issued federal trademark registration.’ ACE Ltd. v. WebMagic Ventures, LLC, FA 1143448 (Nat. Arb. Forum, Apr. 8, 2008). See also See Sights on Serv., Inc. v. Secret Shopper Co., D2003-0415 (WIPO Aug. 23, 2003). Respondent’s claim that Complainant’s registered trademark is generic therefore goes beyond the scope of what this Panel is prepared to decide pursuant to Policy ¶ 4(a)(i).
As discussed below, however, the claim of genericness may be considered in relation to the Panel’s analyses of Policy ¶¶ 4(a)(ii) and (iii).
similar: The Panel is
unconvinced by Respondent’s contentions that the Domain Names are not “confusingly similar” to Complainant’s
trademarks. The Respondent’s
Domain Names each contain variations of Complainant’s PRIVATECOMMUNITIES.COM
mark. One of them changes “communities”
to its singular form; three add the letters “us” to the beginning, which
generally refers to the abbreviated form of “United States;” four add hyphens;
and two change the generic top-level domain (“gTLD”) from “.com” to “.net” or
“.org.” The Panel finds that changing a
word to its singular form does not create a distinguishing characteristic in
the corresponding Domain Name. See IJSS
Inc. v. Fallon O’Brien, FA 1181243 (Nat. Arb. Forum June 11, 2008)
(addition of a final “s” and the “.com” gTLD were inapt to distinguish the
domain name from complainant’s mark).
The Panel also determines that adding the abbreviated geographic
identifier “us” does not add any distinguishing feature to the disputed Domain
Names. See MFI UK Ltd. v. Jones,
D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name
confusingly similar to complainant’s MFI mark because the addition of letters “
Based on this analysis, the Panel concludes that the Domain Names are, on their face, confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i). This analysis is supported by Complainant’s evidence of numerous documented cases of actual confusion between its own website and Respondent’s site. Complainant has done more than most complainants in UDRP proceedings to show actual confusion. The Panel rejects Respondent’s contention that, because “private communities” is a generic term, the analysis should be limited only to identical copying of Complainant’s marks. The Panel also disagrees with Respondent’s position that consumers are unlikely to assume any two companies operating under a minor variation of these terms are affiliated in any way.
Complainant has satisfied its burden under Policy ¶ 4(a)(i), having established that the Domain Names are confusingly similar to a trademark in which it has rights.
Complainant has submitted substantial arguments and evidence to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed Domain Names under Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). However, Respondent has similarly put forward arguments and evidence in support of its contention that it does have rights or legitimate interests in the Domain Names, in accordance with the Policy ¶ 4(c). The parties’ arguments and evidence are evaluated below.
(i) No noncommercial use: The Panel can quickly dispose of one possible ground for rights or legitimate interests under the Policy ¶ 4(c)(iii): there is no claim that Respondent is making noncommercial use of the Domain Names. Both parties recognize, and it is evident from the record, that Respondent has been using the Domain Names for commercial purposes to promote Respondent’s business and website in direct competition with Complainant’s business and website. Respondent has acknowledged that it and its employees were aware of Complainant as a competitor and regularly provided services to the same clients.
(ii) Commonly known by the Domain Names? Can it be said that Respondent’s rights or
legitimate interests in the Domain Names arise because it has “been commonly
known by the domain name[s]” in accordance with the Policy ¶ 4(c)(ii)? Complainant
has alleged that Respondent is not commonly known by the Domain Names, and that
Respondent has not been authorized by Complainant to use its name or trademarks
or any variations thereof. The
WHOIS information identifies Respondent as “Himalaya Rankings LLC,” with the
primary contact being “John Sweeney.” At
the time when the two earliest of the five Domain Names in dispute were
registered – August 2002 for <private-community.com> and March 2003 for <private-communities.com> – Respondent’s name had no apparent
connection to these names, nor has Respondent suggested any connection other
than that it chose them for business reasons (more on this point below). It is clear that Respondent was not commonly
known by the Domain Names when it registered the first two of the five Domain
Names in dispute. Respondent contends,
however, that it has been doing business and become known as US PRIVATE
COMMUNITIES “since approximately March 2003.”
As noted above, March 23, 2003 is the date when Respondent registered
the Domain Name <private-communities.org>,
which it continues to use for its main website.
Shortly thereafter on May 16, 2003, however, Respondent received the
cease-and-desist letter from Complainant’s lawyers, putting Respondent on
notice of Complainant’s asserted trademark rights. Based on the evidence, this chronology indicates that at the time
of the earliest registrations, Respondent was not commonly known by the Domain
Names pursuant to Policy ¶ 4(c)(ii). The evidence (including the WHOIS data
supplied by Respondent itself) further indicates that
(iii) Bona fide offering of goods or services? Complainant contends Respondent does not have any rights or legitimate interests in the Domain Names because Respondent has not used them in connection with a bona fide offering of goods or services. Instead, Complainant asserts Respondent has been using the Domain Names, which are almost identical to Complainant’s trademarks, to compete directly with Complainant in an almost identical business to the same customers through the same channels of trade, in an effort to obstruct Complainant’s business and to divert Internet users to Respondent’s website.
Normally, the use of confusingly similar domain names in association with providing competing goods and services does not constitute a bona fide offering of goods and services. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (respondent’s use of a confusingly similar domain name to advertise real estate services which competed with complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). However, Respondent contends that its use of the Domain Names to promote private communities constitutes a bona fide offering of goods or services because of the generic and descriptive nature of the terms. Respondent argues that these terms are not, and cannot, be exclusively associated with Complainant’s business.
In this case, the question of Respondent developing any rights or legitimate interests in respect of the Domain Names based on their use in connection with a bona fide offering of goods or services is closely related to the question of bad faith: Respondent’s use of the Domain Names gives rise to such rights and legitimate interests only if Respondent’s registration of the Domain Names, in the first place, was not made in bad faith, and only if their subsequent use has not been in bad faith.
The evidence presented to the Panel, however, is persuasive that Respondent crossed the line from being simply a tough competitor toward acting in bad faith. Complainant has used its name in commerce since 1996 and the Panel has evidence of both an extensive off-line and on-line presence, through print and on-line marketing within the particular industry and to relevant customer groups. Complainant made substantial advertising expenditures to promote its name and mark nationally, and had become a leading on-line site for the promotion of real estate in this particular market niche. The evidence presented by Complainant of its reputation and goodwill, which adds to secondary meaning, exceeds what the Panel has observed in numerous other UDRP cases. By the time Respondent started operating its website at <private-communities.org> in March 2003, Complainant had been operating under the PRIVATE COMMUNITIES REGISTRY and PRIVATECOMMUNITIES.COM marks for approximately seven and five years, respectively. The Complainant has submitted substantial evidence that by January 2002, prior to the earliest registration of any similar domain names by the Respondent and approximately six years after Complainant had commenced operation of its business, Complainant’s trademarks had acquired secondary meaning sufficient to make them distinctive in the relevant real estate market.
Why are these findings relevant in this instant case? There are two reasons. First, although there is no question that
“private communities” is a descriptive term, we believe the Complainant has
carried its burden to show that its name and marks had obtained secondary
meaning and common law rights within the relevant industry prior to
Respondent’s registration of its earliest Domain Names. Complainant’s trademark registrations – for
PRIVATECOMMUNITIES.COM and PRIVATE COMMUNITIES REGISTRY – serve to confirm this
point. Second, we believe that this evidence of reputation and goodwill in the
relevant market, in combination with Respondent’s admission that it was aware
of Complainant and evidence that Respondent closely followed (if not copied)
Complainant’s strategies, supports the conclusion that Respondent, in its
naming choices, targeted Complainant and Complainant’s goodwill. Respondent has acknowledged that “one or more
employees… were aware of Complainant as a competitor.” Respondent argues, however, that the fact it
“was aware of its competitor is not evidence of bad faith; it is merely a
reflection of good business sense.” We
disagree, given the circumstances.
Complainant has presented circumstantial evidence of Respondent’s
patterns and timing of registering domain names; its copying of Complainant’s
media kit, which we believe Respondent did not adequately refute; and making
certain identical advertising placements, all of which reinforce the conclusion
of Respondent’s bad faith targeting of Complainant’s marks when registering the
disputed Domain Names. See Yahoo! Inc. v.
A respondent should bear a substantial burden in attempting to show why it is justified in appropriating the trademark of known competitor in its domain names. See BPI Commc’ns, Inc. & VNU Business Media, Inc. v. Boogie TV LLC,
FA105755 (Nat. Arb. Forum Apr. 30, 2002). Respondent has asserted the defense of genericness, which might have been persuasive if the parties were not competitors and if Respondent had demonstrated no knowledge of Complainant prior to registering the Domain Names. In this case, however, there is sufficient evidence to show, by a preponderance of the evidence, that Respondent improperly targeted Complainant and its marks for their trademark attributes. Respondent could have chosen many different names for its website but, as Complainant has stated, Respondent was “trying to ride on [Complainant’s] coattails.”
In view of the discussion above, the Panel finds that Respondent was taking bad faith advantage of Complainant’s trademark rights. The Panel determines under all of the facts and circumstances of this case along with all reasonable inferences to be drawn from them, that Respondent registered and is using the Domain Names (i) for the purpose of disrupting Complainant’s business, and (ii) to intentionally attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to source, sponsorship, affiliation, or endorsement of Respondent’s website and services. See Policy ¶ 4(b)(iii). See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <private-communities.org>, <private-community.com>, <usprivate-communities.org>, <usprivate-communities.com>, and <usprivatecommunities.net> Domain Names be TRANSFERRED from Respondent to Complainant.
Bruce E. O'Connor
David E. Sorkin
Christopher Gibson, Chair
Dated: October 23, 2008
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National Arbitration Forum
member of the Panel dissents from the Panel’s decision to consider the
substance of the Parties’ Additional Submissions, on the grounds that no
exceptional circumstances are present that would warrant their consideration. The Forum’s Supplemental Rule 7 sets forth a
procedure by which parties may tender additional submissions for possible
consideration by a panel that elects to exercise its discretion under Rule 12
of ICANN’s UDRP Rules to accept such submissions, but it does not override that
 As indicated above, the three later-registered Domain Names in dispute – <usprivate-communities.org>, <usprivate-communities.com> and <usprivatecomunities.net> – were registered in 2006 and 2008 well after this time.