American Newland Communities, L.P. v. John Choate d/b/a Choate Custom Homes, LLC
Claim Number: FA1003001313074
Complainant is American Newland Communities, L.P. (“Complainant”), represented by Julia Anne Matheson, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is John Choate d/b/a Choate Custom Homes, LLC (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <briarchapelbuilders.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Roberto A. Bianchi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2010.
On March 14, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <briarchapelbuilders.com> domain name is registered with GoDaddy.com, Inc. and that the Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on March 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 2, 2010.
Complainant’s Additional Submission was received on April 7, 2010 and in compliance with Supplemental Rule 7. On April 12, 2010, The Forum received an Additional Response from Respondent. This Additional Submission was also timely, in compliance with Supplemental Rule 7.
On April 9, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Roberto A. Bianchi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
In its Complaint, Complainant contends the following:
- The disputed domain name is confusingly similar to Complainant’s BRIAR CHAPEL trademark.
- Respondent does not have rights or a legitimate interest in the disputed domain name because it contains and trades on the goodwill of Complainant’s BRIAR CHAPEL mark. Respondent’s use of this mark is unauthorized. Respondent is not and has never been a licensee of Complainant. Respondent is not and has never been otherwise authorized by Complainant to use the BRIAR CHAPEL mark. Respondent is not and has not been commonly known by the disputed domain name.
- Respondent’s registration and use of the disputed domain name constitute bad faith under Policy ¶ 4(b). When Respondent registered the disputed domain name, it had knowledge of Complainant’s rights in the BRIAR CHAPEL mark, and was on notice of Complainant’s registered mark. Also, Respondent is a builder, and built homes in the planned community The Estates at Chapel Ridge, neighboring Complainant’s BRIAR CHAPEL community. Respondent registered and uses the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its BRIAR CHAPEL mark as to the source, sponsorship, affiliation and/or endorsement of Respondent’s website and the services and products advertised therein. Respondent uses its website to advertise and promote its own commercial services in the field of real estate, and a directly competing planned community.
In its Response, Respondent contends as follows:
- Respondent has been building homes and developing raw land since 1985. Between 2000 and 2004, Respondent purchased and/or optioned three parcels of land it planned to develop in Michigan, two in Milford, MI and one in Manchester, MI. Respondent’s goal was to create upscale developments that had the look, feel and architectural theme of other popular parts of the country like California, Arizona and the South, so Respondent picked concept subdivision names that could project its stated goals. The development concept names were “Mission Valley”, a 13 lot high-end development in Milford, Michigan, “Briar Chapel”, and a 175 unit mixed development (retirement) community with retail in Manchester, Michigan, and “Hillside Condominiums”, a 10-unit condo project in Milford, Michigan.
- In February 2004, Respondent began design work on one of its proposed developments, Briar Chapel in Manchester, Michigan. By December 2004, Respondent began working towards obtaining approvals by the Village of Manchester. Respondent continued engineering and surveying work on Briar Chapel and received very favorable responses from The Village of Manchester’s Town Board. In late 2007, after the major environmental issues were resolved, Respondent decided to register the <briarchapel.com> domain name, but found that this domain name was already registered by Mr. Don Medlin, 26 Pope Hill Road, Milton, MA 02186 – not American Newland Communities, L.P.
- Respondent decided to register <briarchapelbuilders.com> (Respondent’s second best name) in March 2008 after conducting searches of available URL’s. Shortly thereafter, the Michigan economy took a turn for the worst and all of Respondent’s developments were put on hold until the market turns around. Respondent plans to finish its Briar Chapel development in Michigan, started in 2004, and complete construction once the Michigan economy improves.
- In 2007 Respondent decided to open an office in Raleigh, North Carolina, and purchased a parcel of land in Pittsboro, NC. Respondent then built a high-end show home to showcase the company’s work as a custom home builder. Respondent opened its office in Raleigh, NC and purchased a lot in The Estates of Chapel Ridge in early 2007, well before American Newland Communities announced their Briar Chapel development. Respondent had no knowledge of the Briar Chapel development before American Newland Communities began their marketing efforts for their Briar Chapel in nearly 2009.
- The complaint is an attempt by a very large company to strong-arm Respondent’s very small company to forgo a URL that it rightfully purchased and own. Respondent received a call a few months ago from a woman who identified herself as a realtor for Briar Chapel who then proceeded to threaten that if Respondent did not give Newland Communities the <briarchapelbuilders.com> domain name, they would take it from Respondent. She didn’t ask Respondent why it had it or why Respondent purchased it. She didn’t care that Respondent own it, and was only bent on telling Respondent to give her Respondent’s URL address and to stop using it. Respondent told her that it purchased the <briarchapelbuilders.com> domain name and that it has no interest in American Newland Communities “Briar Chapel” and has no reason to pull web visitors from the Newland website. If the American Newland Communities had asked if Respondent was using the <briarchapelbuilders.com> domain name or if it was interested in selling the URL (if it wasn’t using it), Respondent’s perception would be completely different. As it is, they want to steal the URL Respondent rightfully owns and rightfully purchased for its Briar Chapel Development in Michigan that it is the rightful builder for.
- Respondent is not trying to build any homes in American Newland Communities “Briar Chapel”, or to take customers away from American Newland Communities “Briar Chapel” since Respondent has nowhere to take them – Respondent does not own any vacant lots in any developments in North Carolina. Respondent is not trying to take customers away from American Newland Communities “Briar Chapel” website. American Newland Communities does not even own www.briarchapel.com, their supposed trademark. It is owned by Mr. Don Medlin, 26 Pope Hill Road, Milton, MA 02186. American Newland Communities “Briar Chapel” website is www.briarchapelinc.com. In a Google search for “Briar Chapel”, neither Choate Custom Homes, nor <briarchapelbuilders.com> shows up on any of the web listings. “Briarchapelbuilders.com” is the website for Choate’s Briar Chapel development in Michigan which will be accessible through the Choate Custom Homes website (similar to its Mission Valley development).
C. Additional Submissions
Because Complainant’s Additional Submission does not add any relevant arguments or evidence to those already submitted with the Complaint, the Panel need not consider Complainant’s Additional Submission or Respondent’s Additional Response to issue this decision.
Complainant is a developer of master-planned communities in the United States. It has master-planned more than 75,000 acres containing over 175,000 existing and planned homes.
Complainant owns the following U.S. federal trademark registrations (Principal Register):
· BRIAR CHAPEL, Reg. No. 3193022, Reg. Date: January 2, 2007, Filing Date: February 8, 2006, covering International Class 037 (Real estate development; master plan community services, namely, planning, developing and construction of master plan communities; land development services, namely, planning and laying out of residential and/or commercial communities; online information services in the fields of real estate development, planned communities, and residential and/or commercial developments; providing websites featuring information on planned communities and residential and/or commercial developments) (First Use/First Use in Commerce: 2004).
· BRIAR CHAPEL (DESIGN PLUS WORDS), Reg. No. 3734655, Reg. Date: January 5, 2010, Filing Date July 25, 2007, covering International Class 035 (Homeowner association services, namely, promoting the interests of homeowners in a specific community)(First use /First use in commerce: 20090500); International Class 036 (Providing websites featuring information in the field of real estate (First use /First use in commerce: 20071000); International Class 037 (Real estate development; land development services, namely, planning and laying out of residential and commercial communities; master plan community services, namely, planning, developing, and construction of residential and commercial master plan communities; construction planning; construction management; online information services in the fields of real estate development, planning, laying out, construction and maintenance of planned communities, and residential and commercial developments; providing maintenance of pool facilities, physical fitness facilities, club room facilities; construction and maintenance of road and other infrastructure, namely, street signs, walking trails, bike trails; providing websites featuring information in the field of real estate development and site selection)( First use /First use in commerce: 20071000); International Class 041 (Providing recreational facilities; providing online information regarding recreational amenities at planned communities, namely, swimming pools, health club instructions and equipment for physical exercise, playgrounds, pool house, park systems, jogging, walking, cycling, and hiking paths and recreation and sporting activities and events at planned communities and their planned locations) (First use /First use in commerce: 20080500).
Respondent is a homebuilder and raw-land developer since 1985.
Respondent registered the disputed domain name on March 28, 2008.
As noticed by the Panel by using his browser on April 21, 2010, the website at the disputed domain name refers broadly to Choate’s homes and projects. A reference to its homes and projects in North Carolina is made through a link offering homes in “The Estates at Chapel Ridge” and “Baldwin Peak”.
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.
Complainant has evidenced with printouts taken from the TESS database that it owns the BRIAR CHAPEL trademark (see section on “Findings” above). There is no doubt that the disputed domain name is confusingly similar to Complainant’s mark. The domain name incorporates this mark in its entirety, adding the term “builders”, which describes Complainant’s business sector. This addition does not distinguish one identifier from the other, and rather contributes to creating an impression of confusing similarity between them. See Wells Fargo & Co. v. Bogucki, FA 147305 (Nat. Arb. Forum Apr. 16, 2003) (finding that the <wellfargobank.com> domain name is confusingly similar to the WELLS FARGO mark, inter alia, because the added word “bank”, describing the type of business that the complainant engages in, does not alleviate any confusing similarity); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
For its part, Respondent does not contest that the domain name in dispute is confusingly similar to Complainant’s mark. Accordingly, the Panel concludes that the first requirement of the Policy is met.
Considered together, Complainant’s contentions shown at the section on “Parties Contentions”(A) above, amount to a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name. It is then up to Respondent to show that it does have some right or legitimate interest in the domain name. 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.”).
Respondent contends that in February 2004 it began design work on “Briar Chapel”, a proposed development in Manchester, Michigan. However, it did no present any evidence of it. Respondent does submit a “Conceptual Site Plan” of a project in the Village of Manchester, Michigan, prepared by Land Design Studio of Pontiac, Michigan, dated August 25, 2006, that is years after Complainant began using BRIAR CHAPEL as a trademark for its planned community in North Carolina (see below), and months after Complainant applied for the BRIAR CHAPEL mark before the U.S.P.T.O.
Respondent adds that by December 2004 it began working towards obtaining approvals by the Village of Manchester, from which it received favorable responses. However, there is no evidence showing that any such responses were given. Also, Respondent does not explain why it precisely chose “Briar Chapel” as a name for its planned community, given that this terms correspond exactly to Complainant’s mark BRIAR CHAPEL covering similar products and services. Nor has Respondent presented the Panel with any other evidence supporting its claim that it started the Briar Chapel development in Michigan in 2004. One must have in mind that according to Complainant’s statement of first use/first use in commerce made in the federal trademark application for the word mark BRIAR CHAPEL, Complainant began using this mark in 2004. Complainant has also shown with a listing of press articles dating back to 2002 that the local press in North Carolina on several occasions referred to “Briar Chapel” as a community projected by Complainant. This leads the Panel to infer that Complainant’s BRIAR CHAPEL project had been publicly known before Respondent began any activity related to a “Briar Chapel” project in Michigan. One must conclude that Respondent, a home builder and a developer of raw land projects, in all likelihood knew about Complainant’s BRIAR CHAPEL project before it allegedly began activities related to Choate’s “Briar Chapel” project.
As shown in printouts submitted by Complainant, taken from Respondent’s website at the disputed domain name on February 24, 2010, the developments advertised by Respondent are “The Estates at Chapel Ridge” and “Baldwin Peak”. No “Briar Chapel” development is shown on this website, in Michigan or elsewhere. Clearly, Respondent is not offering goods and services protected by Complainant’s mark BRIAR CHAPEL, but homes and services related to communities or developments directly competing with Complainant’s BRIAR CHAPEL master-planned community. The Panel believes that this use of the disputed domain name is not made in connection with a bona fide offering under Policy ¶ 4(c)(i). See Park Place Entertainment Corp. v Jean Conille, FA 95492, (Nat. Arb. Forum Oct. 6, 2000) (finding that the respondent’s use of the complainant’s mark in order to mislead and divert consumers seeking the complainant’s services and financially gain therefrom, was not a bona fide offering of goods and services and therefore failed to meet the standard set forth in Policy ¶ 4.c.(i) or (iii)); see also Pacific Aircraft Incorporated v. Pacific Aircraft Corporation, FA 97645 (Nat. Arb. Forum. Aug. 14, 2001) (registering domain names for the purpose of permitting the respondent to offer competing goods using the complainants’ mark was found not to be a bona fide offering of goods or services such as would establish that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).)
It is undisputed that Respondent is not commonly known by the disputed domain name. Also, Respondent does not claim to have applied for any trademark incorporating the disputed domain name. Since Respondent has used the website at the disputed domain name to offer homes and projects competing with the products and services protected by Complainant’s BRIAR CHAPEL trademark, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers under Policy ¶ 4(c)(iii).
The Panel concludes that Respondent lacks rights to or legitimate interests in the domain name in dispute.
Unless Respondent’s choice of the disputed domain name was a miraculous coincidence - a possibility that Respondent has not even suggested - at the time of registering the disputed domain name, March 28, 2008, Respondent, a competitor of Complainant, knew or must have known of Complainant and its BRIAR CHAPEL mark. In any case, a cursory search of the USTPO trademark database at the time of registering the disputed domain name would have yielded information indicating Complainant’s existing trademark registration for BRIAR CHAPEL, covering goods and services in Respondent’s business sector, with a filing date of February 8, 2006 and a registration date of January 2, 2007.
Also, on the website at the disputed domain name, Respondent posted texts and graphics advertising Choate’s homes and services, directly competing with Complainant’s goods and services covered by Complainant’s BRIAR CHAPEL trademark. It is clear that Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with Complainant's BRIAR CHAPEL mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on its web site. This is, pursuant to Policy ¶ 4(b)(iv), a circumstance of bad faith registration and use of the domain name.
Accordingly, the Panel finds that the third requirement of the Policy is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <briarchapelbuilders.com> domain name be TRANSFERRED from Respondent to Complainant.
Roberto A. Bianchi, Panelist
Dated: April 23, 2010
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