Lost Tree Village Property Owners Association, Inc. v. Domain Name Firm c/o DomainNameFirm.com
Claim Number: FA1008001338993
PARTIES
Complainant is Lost Tree Village Property Owners Association, Inc. (“Complainant”), represented by Scott D. Brown, of Skadden, Arps, Slate, Meagher & Flom LLP, Massachusetts, USA. Respondent is Domain Name Firm c/o DomainNameFirm.com (“Respondent”), represented by Prescott W. Smith, of Carrington, Coleman, Sloman & Blumenthal LLP, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <losttreevillage.com>, registered with GoDaddy.com, Inc.
PANEL
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.
Mr. Maninder Singh as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 3, 2010.
On August 4, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <losttreevillage.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 August 16, 2010, the Forum served the Complaint and all Annexures, including a Written Notice of the Complaint, setting a deadline of September 6, 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 postmaster@losttreevillage.com. Also on August 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 September 2, 2010.
Complainant submitted a timely Additional Submission that was received and determined to be compliant on September 7, 2010.
Respondent submitted an Additional Submission that was received after the deadline and therefore determined not to be in compliance with Supplemental Rule #7.
On September 17, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
· The Complainant in the present complaint - Lost Tree Village Property Owners Association, Inc. - is stated to be a Homeowners’ Association comprising of individuals living in Lost Tree Village, which is claimed to be a highly desirable private residential enclave in North Palm Beach encompassing both an exclusive members-only country club and a Jack Nicklaus-redesigned golf course. The Complainant claims that Lost Tree Village community was founded by one E. Llwyd Ecclestone, which grew out of a purchase of 350 acre land that eventually became the Lost Tree Village. Part of Ecclestone’s original vision was the Lost Tree Club, a country club successfully founded in 1961 that continues to this day to support a thriving membership base.
· It is the contention of the complainant that as a result of its ongoing and steady use of the LOST TREE VILLAGE mark, the LOST TREE VILLAGE mark is subject to common law trademark protections. It is the claim of the Complainant that it has been using the mark “LOST TREE VILLAGE” since early 1961 in commerce to identify the Lost Tree Village. It is also the claim of the Complainant that through its continuous use of the mark in commerce, the Lost Tree Village gained common law trademark rights in the LOST TREE VILLAGE mark. In this regard, Complainant has relied upon the chart summarizing Complainant’s trademark rights which has been annexed with its Complaint as Annexure-3.
· The Complainant also claims that LOST TREE VILLAGE mark has been and continues to be used to identify the Lost Tree Village. The Complainant further claims that the LOST TREE VILLAGE mark is distinctive and famous in the greater Palm Beach area, and that the public associates the LOST TREE VILLAGE mark with the Complainant. In this regard, the Complainant has relied upon a photograph of the Lost Tree Village entrance sign displaying the LOST TREE VILLAGE mark and a recent news article to demonstrate the distinctiveness of the mark in question, which are annexed as Annexures-4 & 5.
· The Complainant has stated in the complaint that it has not given Respondent any license, permission or authorization to make use of the LOST TREE VILLAGE mark. However, the Respondent Domain Name Firm has registered the <losttreevillage.com> domain name with ICANN-accredited registrar GoDaddy.com. The Complainant has relied upon the printout from the GoDaddy.com WHOIS database, annexed as Annexure-7, showing the registration of the mark in question in favour of Respondent. The Domain Name fully incorporates and mimics Complainant’s mark “LOST TREE VILLAGE”.
· The Complainant has contended that upon discovering the infringing use of its mark LOST TREE VILLAGE, the Complainant is stated to have contacted the Respondent and offered to pay the Respondent to transfer the domain name and in order to avoid the costs of litigation. The Respondent is stated to have attempted to extort a “5-figure” deal from the Complainant. To substantiate, the Complainant has annexed, as Annexure-6, the printout of Respondent’s email. The Complainant alleges the Respondent did not register the Domain Name in good faith, in order to run its own business through the Domain Name in question, but instead registered the Domain Name to sell it to the highest bidder.
· The Complainant alleges that the Respondent has also launched a website at the <www.domainnamefirm.com> domain name, which expressly states that the respondent is in the business of selling domain names. In this regard Complainant relies upon the printout of homepage of the <www.domainnamefirm.com> domain name which is annexed as Annexure-8. It is further the contention of the Complainant that on the <www.domainnamefirm.com> domain name’s homepage, the Respondent states that “[w]e buy, sell and develop domain names.” On this homepage, Respondent uses the LOST TREE VILLAGE mark in a transparent attempt to suggest that there is some sort of affiliation, connection or association between Respondent and the Lost Tree Village, when in fact there is none.
· While alleging bad faith in the acts of the respondent, the Complainant contends that the respondent is using the LOST TREE VILLAGE mark as part of an intentional attempt on its part to attract, for commercial gain, internet users to Respondent’s websites by creating a likelihood of confusion with the mark of Complainant as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. The Complainant claims that on the homepage of the <losttreevillage.com> domain name, the Respondent welcomes visitors to the website by stating: “Lost Tree Village is an exclusive gated community located in North Palm Beach, Florida. Lost Tree Village, has a plethora of unique features including a private golf course, tennis courts and elegant beach club. Lost Tree Village is located on 450 acres and includes some of the most well crafted and aesthetically pleasing homes in the United States. For safety, these multi-million dollar homes are protected by a 24-hour guarded private security service.” The Complainant has relied upon a printout of relevant sections of the <losttreevillage.com> website which has been annexed as Annexure-9 to the Complainant.
· It is also the contention of the Complainant that respondent’s website at the <losttreevillage.com> domain name is replete with other examples of Respondent’s bad faith, including the following statements, each of which seeks to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website:
Ø “If you are in the market to purchase a home, Lost Tree Village could be the place for you to reside. There are numerous realtors and real estate companies that cater to the needs of potential Lost Tree Village home buyers. If you are one of those realtors and would like to capitalize on a geo-specific unique advertisement opportunity, please contact us.”
Ø “One of Lost Tree Village’s most exclusive perks is the private golf course that is available to the residents of Lost Tree Village. The 18-holed course is a majestic sight to see and adds a vibrant green color to the North Palm Beach village. For more information, call Lost Tree Village Golf Pro Shop at 626-1400 and schedule a tee time today on the delightful greens.”
Ø “Listed below, you will find the telephone numbers to the main departments of Lost Tree Village. If you have any questions, concerns, or comments to make about the community, use this list as a guideline to direct your phone calls.”
· The Complainant alleges that the respondent is not only unfairly capitalizing on the fame of the LOST TREE VILLAGE mark and Complainant’s goodwill but also is misleading Internet users who visit Respondent’s <losttreevillage.com> website. To substantiate his point, he cites the example of the golf course, tennis courts and beach club which are described on the Respondent’s <losttreevillage.com> website, are not owned by the Complainant, but by Lost Tree Club, Inc. - a separate legal entity.
· The Complainant claims that the respondent appears to be registering a significant number of other domain names (i.e., “warehousing” domain names). A reverse WHOIS search demonstrates that the Respondent has registered numerous domain names, many of which appear to either fully incorporate trademarks owned by third parties, including <maysbusinessschool.com> (Texas A&M’s top-ranked business school) and <weezy.com> (nickname of Lil Wayne, a Grammy-award winning rap artist). The complainant has annexed, as Annexure-10, a table providing several examples of these domain names.
· The Complainant claims that the respondent’s Domain Name is confusingly similar to Complainant’s mark because it fully incorporates and mimics Complainant’s famous LOST TREE VILLAGE mark. Indeed, the Domain Name simply adds the generic “.com” top-level domain to the LOST TREE VILLAGE mark. The complainant has drawn the attention of this Panel to the following decisions : -
(i) Isleworth Land Co. v. Lost in Space, SA, FA0208000117330 (Nat..Arb. Forum Sept. 27, 2002) (Franklin, Panelist) (“It is a well established principle that generic top-level domains are irrelevant when conducting a Policy 4(a)(i) analysis.”).
(ii) Microsoft Corp. v. Teammsn, FA0602000648204 (Nat. Arb. Forum Mar. 27, 2006) (finding “since all domain names require a top-level domain, the addition of ‘.com’ to Complainant’s mark fails to distinguish Respondent’s domain name from the mark”);
(iii) Teachers Ins. & Annuity Ass’n of Am. v. Domain Admin., D2005-1227 (WIPO Jan. 25, 2006) (Doi, Sole Panelist) (stating that the addition of a top-level domain such as .org “should be disregarded in the finding of confusing similarity” between a domain name and a mark);
(iv) E-Z-Dock, Inc. v. Goall, FA0512000612801 (Nat. Arb. Forum Jan. 24, 2006) (Yachnin, Panelist) (finding ezdock.net identical to Complainant’s EZ DOCK mark and stating that adding a generic top-level domain name is a “minor alteration” that “does not negate the identical aspects of” the infringing domain name);
(v) Amanresorts Ltd. v. WWW Enter., Inc., D2005-0384 (WIPO June 20, 2005) (Trock, Sole Panelist) (finding that amanresorts.net and amanresorts.org were confusingly similar to famous AMANRESORTS mark);
(vi) Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (Foster, Sole Panelist) (finding top-level domain designations such as .org or .net irrelevant in the determination of whether a domain name is identical or confusingly similar to a mark);
(vii) Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (Page, Panelist) (finding juliaroberts.org identical to the Julia Roberts mark).
· The Complainant claims that the respondent does not have any rights or legitimate interests in the Domain Name. It further claims that the Respondent, who has listed the mark in the WHOIS database as “Domain Name Firm c/o DomainNameFirm.com Dallas, Texas 75230 United States” has never been commonly known as, operated or been associated with a business commonly known as Lost Tree Village or any variation thereof, and has never used any trademark or service mark similar to the Domain Name. In this regard the Complainant has drawn the attention of this Panel to one of its earlier decision in McClatchy Mgmt. Servs., Inc. v. Peter Carrington a/k/a Party Night Inc., FA0304000155902 (Nat. Arb. Forum June 2, 2003) (Kaline, Panelist) (finding that respondent failed to establish rights to or legitimate interests in the disputed domain names where respondent was not commonly known as “Startribun” or Stratribune”). The Complainant alleges that the Respondent appears to be attempting to leverage the value of the LOST TREE VILLAGE mark to promote its website by unfairly capitalizing on the fame of the mark and Complainant’s goodwill.
· In order to reiterate that the Domain Name, registered by Respondent, is confusingly similar to Complainant’s LOST TREE VILLAGE mark, the Complainant relies upon the decision of WIPO in Alaska Airlines v. Alf Temme, D2000-0080 (WIPO Apr. 2, 2000) (Page, Panelist) (finding respondent’s alaskaairlines.org domain name identical to the Alaska Airlines mark). The Complainant claims that the respondent was undoubtedly aware of the LOST TREE VILLAGE mark prior to the registration of the Domain Name given its fame, as set forth above - as Respondent had notice of Complainant’s mark when registering a Domain Name identical and confusingly similar to those mark - Respondent has no rights or legitimate interests in the Domain Name. The Complainant in this regard relies upon the decision of WIPO in J.P. Morgan & Co., Inc. v. Res. Mktg., D2000-0035 (WIPO Mar. 23, 2000) (Page, Panelist) (finding the J.P. Morgan mark famous at the time respondent registered jpmorgan.org).
· The Complainant contends that it has not granted Respondent any license/permission/authorization to own or use any domain name registrations nearly identical and confusingly similar to Complainant’s mark. It has drawn the attention of this Panel to a decision of this Forum in Amazon.com, Inc. v. Rayaneh Net, FA0309000196217 (Nat. Arb. Forum Oct. 28, 2003) (McCotten, Jr., Panelist) (finding no legitimate rights in the “amazoniran.com” domain name, in part, because complainant did not grant respondent a license to use the AMAZON.COM mark). The Complainant claims that neither the respondent has any legitimate reasons to have registered the Domain Name incorporating the LOST TREE VILLAGE mark nor does it have any legitimate rights therein.
· The Complainant claims that the respondent has registered and is using the Domain Name in question in bad faith. It further claims that the respondent has registered the Domain Name - which is nearly identical to Complainant’s LOST TREE VILLAGE mark - solely to capitalize on Complainant’s goodwill and user errors in searching for the Complainant. The complainant has drawn the attention of this Panel to the following decisions of WIPO : -
(i) Amanresorts Ltd. v. WWW Enter., Inc., D2005-0384 (WIPO June 20, 2005) (Trock, Sole Panelist) (finding amanresorts.net and amanresorts.org identical to the famous AMANRESORTS mark, registered for commercial gain, and intended to divert traffic away from complainant’s amanresorts.com website);
(ii) Sigla Sistemas Globo de Gavações Audiovisuais Ltda. v. Italo de Barros Naddeo, D2000-0733 (WIPO Oct. 23, 2000) (finding respondent registered domain names in bad faith to divert consumers away from complainant’s site and for financial gain).
· The Complainant alleges that the respondent’s bad faith is demonstrated by Respondent’s e-mail response to Complainant’s good faith effort to amicably end this matter. Respondent stated “those 170 visitors totaled 1,392 (avg of 8.09 pages/visit) pageviews and averaged over 2 minutes on the site for the month of June – with a near impossible bounce rate of 0.0%. That means that these visitors are not just accidental stumblers – these visitors have taken serious interest in Lost Tree Village and could be prospective or current residents.” Respondent is well aware of the ongoing consumer confusion relating to the striking similarity between the Domain Name and the LOST TREE VILLAGE mark. In fact, Respondent is capitalizing on this consumer confusion through advertisements on the <losttreevillage.com> website and its attempts to force the Complainant to pay “5-figure[s]” in order to regain control of its own mark.
· The complainant contends that looking at the fame of the LOST TREE VILLAGE mark, respondent knew or should have known of that mark at all relevant times. It further contends that taking into consideration the reputation and goodwill of the mark LOST TREE VILLAGE, Internet users are likely to be induced to believe that the Domain Name connects to a website associated with or sponsored by Complainant. The complainant has relied upon the following decisions : -
(i) Foot Locker, Inc. v. Dotsan, FA0208000117864 (Nat. Arb. Forum Sept. 19, 2002) (Upchurch, Panelist) (finding respondent’s registration of domain name with knowledge of the famous mark in bad faith);
(ii) Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (Buchele, Arb.) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Here, Respondent had actual or constructive knowledge that the Domain Name is confusingly similar to Complainant’s mark. This knowledge is more than sufficient for a finding of bad faith registration.
(iii) Travelzoo Inc. v. Viper, FA0208000117866 (Nat. Arb. Forum Sept. 18, 2002) (Yachnin, Panelist) (“It is proper to infer bad faith registration when a [r]espondent intentionally registers a domain name he knows to be confusingly similar to another’s mark.”);
(iv) J.P. Morgan & Co., Inc. v. Res. Mktg., D2000-0035 (WIPO Mar. 23, 2000) (Page, Panelist) (finding ownership of domain names “which are the names or marks of well known business entities suggests an intent to profit from the activities of others” and, as such, in bad faith).
(v) Foot Locker, Inc. v. Dotsan, FA0208000117864 (Nat. Arb. Forum Sept. 19, 2002) (Upchurch, Panelist) (finding respondent’s use of domain name to attract users for commercial gain tarnished complainant’s goodwill and reputation and was in bad faith).
(vi) Amanresorts Ltd. v. WWW Enter., Inc., D2005-0384 (WIPO June 20, 2005) (Trock, Sole Panelist) (finding bad faith where amanresorts.org and amanresorts.net were identical to AMANRESORTS mark);
(vii) Sony Kabushiki Kaisha v. Zuccarini, FA0204000109040 (Nat. Arb. Forum May 23, 2002) (Franklin, Panelist) (finding bad faith where respondent registered and used “sonystyl.com,” which was nearly identical to the complainant’s SONY STYLE mark). Indeed, confusion is particularly likely given the confusing similarity of the LOST TREE VILLAGE mark and the Domain Name.
· The complainant contends that the respondent has generated substantial revenue by registering and reselling domain names which are confusingly similar to the popular trademarks. In this regard, the complainant draws the attention of this Panel to the decision of WIPO in the case of Orbitz, LLC v. Dotsan & Iskra Serv., D2001-1359 (WIPO Jan. 20, 2002) (Swinson, Sole Panelist) (noting that the respondent was using the disputed domain name “to derive revenue, for example, by diverting Internet users who wish to visit the Complainant’s website to the [disputed] website”).
· The complainant contends that pursuant to GoDaddy’s Registration Agreement, a copy whereof has been annexed as Annexure-1 to the present Complainant, the Respondent has represented that “neither the registration of the domain name nor the manner in which it is directly or indirectly used .......... infringes the legal rights of a third party.”
B. Respondent
While disputing that the complainant was formed in 1961 and further while referring to the records of the Secretary of State of Florida stated that the Complainant’s Association was existing then, the respondent in his response dated 16.8.2010 stated that the complainant has not shown/proved that it has a mark. The respondent in his response, inter-alia, submitted the following : -
· The respondent in his response dated 16.8.2010 to the Complaint has stated that the complainant has asserted in paragraph 4c. of the Complaint that it has a trademark right with respect to “LOST TREE VILLAGE”. A chart summarizing that mark was supposed to be attached to the complaint as Annexure-3 but the said chart was not attached by it.
· The respondent further stated in his response that the complainant has alleged that the mark LOST TREE VILLAGE is a common law trade mark in a geographic place but before acquiring its domain name, respondent did a search of the US Trademark records and found no such registered mark. The respondent further countered that it has found the following statement on the US Patent and Trademark Office website regarding such marks : -
“Under U.S. trademark law, geographic terms or signs are not registrable as trademarks if they are geographically descriptive…of where the goods/services originate. The theory is that other producers in that area would need to be able to use a geographic term to describer where their goods / services are from and that one person should not be able to prevent others from using that term.
· Respondent further countered that based upon its search and the statement from the Trademark Office, no trademark rights exist in the domain name in question. Respondent alleges that it has lawfully acquired and developed the domain name. There is no secondary meaning alleged and there is no way to refute confusing use. The respondent has further stated that WIPO has also analyzed these facts and this is its conclusion from its website :
“Consensus view: The report of the Second WIPO Internet Domain Name Process declined to specifically extend protection to geographical terms under the UDRP. Some geographical terms however, can be protected under the UDRP, if the complainant has shown that it has rights in the term and that the term is being used as a trademark. Normally this would require the registration of the geographical term as a trademark.
Relevant decisions:
Kur-und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617, Denied
Skipton Bldg. Soc’y v. Colman, D2000-1217, Transfer
FC Bayern Munchen AG v. Peoples Net Servs. Ltd., D2003-0464, Transfer
BAA plc, Aberdeen Airport Ltd. v. Hashimi, D2004-0717, Transfer
However: It is very difficult for the legal authority of a geographical area to show unregistered trademark rights in that geographical term on the basis of secondary meaning.
Relevant Decisions:
City of Hamina v. Paragon Int’l Projects Ltd, D2001-0001, Denied
Brisbane City Council v. Joyce Russ Adver. Pty Ltd., D2001-0069, Denied
Land Sachsen-Anhalt v. Skander Bouhaouala, D2002-0273, Denied
· The respondent further responded that complainant’s allegation of a trademark is further marred by the omission of important details. In obtaining a registration, the Trademark Office requires a description of the goods or services that relate to the mark. No registration can be granted without that information. Complainant is specifically required according to Section 3b(viii) of the UDRP Rules to specify the goods or services, if any, with which the mark is used. No such goods or services are specified by Complainant, which is further evidence that the Complainant has no basis for alleging rights in the name. In the few instances in which geographic names have been registered, it is where the good or service is so strongly identified with the geographic area that they go together. Most people know Napa Valley wines and Wisconsin cheese. Here, Complainant is a property owner’s association. Complainant asks that we take on faith, absent any proof, that this property owners association in the geographic area in question is so phenomenal that a mention of that community brings to mind the property owners association, not the Lost Tree Village community, or the real-estate developer of that community, or for that matter, a dry-cleaning business or golf course operating in that area.
· The respondent has further countered that the Palm Beach Post news article attached to the Complaint as Exhibit-5 actually supports respondent’s position that Lost Tree Village is a geographic area. This article repeatedly refers to the residents of Lost Tree Village geographical area – not as members of Complainant (a property owners association), but as residents of the geographic area.
· The respondent in its response further stated that the picture attached to the Complaint as Exhibit-4 is inconclusive because many geographic areas have signs designating the area. States, cities and neighbourhoods all have such signs. There is no mention of a property owners association on the sign. Respondent concedes that the name of the geographic area to which that sign relates is Lost Tree Village, but Respondent contends that there is no evidence that the general public associates that sign with the property owners association as opposed to the geographical area.
· The respondent disputed that the statements of the complainant in Section 5a. Cam Kirkwood did contact respondent and the e-mail trail speaks for itself. Respondent contends that the complainant has failed to state that Cam Kirkwood and respondent’s president, B.C. Peterson also spoke by phone, which is evident from the e-mails. As can be seen from the e-mail trail, the first contact was a call by Mr. Kirkwood to Mr. Peterson. At that time, Mr. Kirkwood discussed that he was calling on behalf of Lost Tree Reality and he had a business partner in that venture and that they would like to buy the name. No mention was made of him representing the property owner’s association. That is consistent with the e-mail trail. Respondent had not, at that point, considered selling the domain name to Lost Tree Reality or to anyone else, and did not discuss selling the domain name with Mr. Kirkwood, but invited an offer for the website and domain name at that time. Mr. Kirkwood’s return e-mail was not a firm proposal – he casually offered $2000 for the domain name and then asked for a price for the website development that had occurred. Respondent’s response, related to the website development he had undertaken, asked for a higher price as an initial offer. No request was made for just the domain name. No mention was made that there was a trademark for Lost Tree Village claimed by others, although Mr. Kirkwood did claim one as Lost Tree Reality, again with no mention of a property owners association. Subsequent e-mails from Respondent related to the website development and additional work respondent would incorporate for the fee respondent was proposing. At no point was discussion limited to the purchase of the domain name. Respondent did not hear of the property owners association or believe that particular entity was discussing the purchase of the domain name until this Complaint was forwarded to the Respondent. Respondent does confirm that it did not seek or obtain any license or permission from Complainant with respect to Respondent’s domain name.
· Respondent further stated that it agrees that it had registered the domain name and is the current owner of the domain name. Respondent denies it incorporates complainant’s mark, as complainant has none in the Lost Tree Village name and has not, in reality, alleged one in its amended complaint. Whether complainant (the property owners association) is famous is a matter unknown to respondent and not established by the evidence in the complaint, but the respondent can categorically state that it had never heard of this property owners association before it was forwarded the complaint. The respondent never dealt with complainant (the property owners association) and never tried to sell the domain name, the website or anything else to complainant (property owners association). How such facts can be used to show “bad faith” on the part of respondent is lost on respondent. Respondent obtained the domain name in good faith because it liked the name and saw the absence of an online repository of good information for that geographic area.
· Respondent further alleges that it had a legitimate interest with respect to the domain name and spent considerable time developing it. It did not put the domain name at auction for sale to the highest bidder, and the allegation that it was acquired to sell to the highest bidder is false and not supported by any evidence. At no point was this name even on the market although respondent was willing to discuss the sale of a developed website with Mr. Kirkwood, not a domain name in isolation.
· Respondent contended that it (respondent) has a website mentioned by claimant and it is in the business of buying, selling and developing domain name. Respondent is very careful to check to insure that it has not infringed on any trademark rights. The respondent further contended that the complainant has failed to attach critical evidence from respondent’s website, and respondent has rectified that omission by attaching the omitted pages to its Exhibit-1. Pursuant to the policy set forth in Exhibit-1, the respondent has returned domain names in the past when warranted, and is attempting to return two names at this time.
· The Lost Tree Village reference on Respondent’s website was developed by respondent and merely shows some of the websites it has developed. It is in no way an attempt to show affiliation (it transitions on and off and is the logo developed for the website), and is shown with other such logos from other developed domains. Since a geographic area cannot endorse, only an organization can, it is difficult to see how this can be an endorsement by Lost Tree Village. Respondent did not know of the property owners association, so it is difficult to see how respondent can be said to be implying an endorsement from the property owners association. There is a legitimate connection to the domain name and that is all that is shown or implied. Respondent’s domain name website does “promote” the geographic area and its amenities by providing information about it. That is not evidence of “bad faith”. At the time of this response, respondent was unable to find that kind of information on Complainant’s website, which is a curious omission by the entity claiming trademark rights.
· The respondent in his response denies any bad faith use or confusingly similar domain name to that of complainant, as there is no evidence that the complainant has any trade mark rights to the name at issue. Annexure-10 which lists a small portion of respondent’s domain names, is wholly irrelevant to the issue in this proceeding. Furthermore, this list is out of date and incorrect. Two of the listed names (<www.maysbusinessschool.com> & <www.eliroth.com>) have been offered back as part of the Claim Your Domain program shown in respondent’s Exh.-1, so to the extent this list is relevant, it is evidence of respondent’s overall good faith, not its alleged bad faith. In any event, owning domain names is not a violation of the rules, in and of itself, nor does it show anything with respect to the name actually at issue in this proceeding. Respondent contends that the complainant does not have a mark (famous or otherwise), so nothing can be confusingly similar. Lost Tree Village is a geographic place and there is nothing about Lost Tree Village as a locale that is similar to a property owners association. The complainant cites a number of prior holdings, but none fits the facts of the present case.
· The respondent further contends that its use of the mark/domain name as an informational site was lawful and legitimate. In this regard respondent draws the attention of this Panel to the decision in the case of Southern Highlands, LIC v. Realtor, Claim Number: FA0707001025866.
· The respondent further alleges that it believes and continues to believe that no one owns a trademark with respect to the domain name and, with that reasonable belief, cannot be found to be acting in bad faith and, therefore, no rights of complainant have been infringed by it.
· Respondent further states that it clearly not registered under the first two items of Section 4b. of the Rules, which require intent with respect to the owner of the trademark or its competitor. The third item requires a showing that respondent registered to disrupt the business of a competitor, which is not alleged here by the complainant. The fourth item also requires intent with respect to the mark, which respondent, in good faith and with substantial support, does not believe exists, and respondent could not have the intent, absent the existence of a legitimate mark, that respondent was aware of. The property owners association (complainant) simply is not known and has not promoted the name at issue: its domain name is <ltvpoainc.org>.
· The respondent alleges that the complainant has failed to make a case for confusion or bad faith. The <losttreevillage.org> domain name is available as of this filing and is not being claimed or used by complainant or respondent. This situation is much clearer than the facts in Texassports.com v. Vertical Axis Inc., Claim Number: FA1004001322040, there is a wide difference between the website identifiers.
· The respondent claims that consistent with Section 4c. of the Rules, it has developed the informational website which offers bona fide services under the Southern Highlands test. The use of the mark/domain name in question is in no way an attempt to tarnish complainant or mislead consumers.
C. Additional Submissions
(i) Complainant
Complainant, in reply to respondent’s response to the complainant dated 16.8.2010, submitted its additional submissions, inter-alia, contending the following : -
· Contrary to the assertions contained in the Response, the Amended Complaint of Complainant Lost Tree Village Property Owners Association, Inc. (“Lost Tree Village”) demonstrates that –
(i) Lost Tree Village has common law trademark rights in the LOST TREE VILLAGE mark;
(ii) those trademark rights predate Respondent’s registration of the domain name by nearly 40 years;
(iii) the <losttreevillage.com> Domain Name is identical to Lost Tree Village’s LOST TREE VILLAGE trademark;
(iv) Respondent has no legitimate rights in the <losttreevillage.com> Domain Name; and
(v) Respondent registered and is using that Domain Name in bad faith. Thus, rather than a case where Respondent “had a legitimate interest” in registering and using the <losttreevillage.com> Domain Name, this is a case where Respondent has engaged in an unabashed violation of Lost Tree Village’s rights. Accordingly, the Panel should order the transfer of the <losttreevillage.com> Domain Name to Lost Tree Village.
· Complainant contended that the respondent appears to be under the false impression that a federally registered trademark is required in order to obtain rights in a mark. Complainant further stated that the trademark rights accrue from use of a mark, and not from registration. In this regard it relied upon the decision in the case of Union Nat’l Bank of Tex., v. Union Nat’l Bank of Tex., 909 F.2d 839, 842 (5th Cir. 1990) (“Ownership of trademarks is established by use, not by registration.”). The complainant contended that in other words, there is no requirement that an organization register a trademark to obtain trademark rights. Lost Tree Village has trademark rights in the name and mark LOST TREE VILLAGE arising out of use of that name and mark by Lost Tree Village in connection with a private gated community since at least as early as 1961. As this use began long before Respondent registered the domain name, any use by Respondent therefore infringes Lost Tree Village’s common law trademark rights.
· The complainant further alleged that the respondent in its response has contended that Lost Tree Village is a geographic place and therefore cannot be a trademark. In support thereof Respondent had falsely argued that the Complainant has alleged the LOST TREE VILLAGE mark is a “common law trademark in a geographic place.” To the contrary, it is not - Lost Tree Village is a small private community of 550-homes located in North Palm Beach, Florida, as indicated by the Complainant’s mailing address. All individuals who reside in Lost Tree Village are members of the property owners’ association, which represents their collective interests. Further, unlike a city, state, country, or other geographic location, Lost Tree Village does not appear on a map. In this regard, reliance was placed by the complainant on the printout of a search of the Lost Tree Village street address on Google maps, a print-out whereof is annexed as Annexure-2 and shows that Lost Tree Village is not identified as a geographic location.
· The complainant also alleges that nowhere in the Response does the Respondent allege the basis on which it believes Lost Tree Village is a geographic place; instead, it quotes the U.S. Patent and Trademark Office (“USPTO”) and World Intellectual Property Organization (“WIPO”) websites (which are not authoritative sources) and lists, but does not explain, the relevance of a number of WIPO domain name cases. In fact, these cases are primarily inapposite to the facts of this case because they involve complainants who are cities and states, not small private communities. In this regard, the complainant has placed reliance on the following decisions : -
(i) City of Hamina v. Paragon Int’l Projects Ltd., D2001-0001, (WIPO Mar. 21, 2001) (Karnell, Panelist) (denying transfer to complainant because it was a city);
(ii) Brisbane City Council v. Joyce Russ Adver. Pty Ltd., D2001-0069, (WIPO May 14, 2001) (Brown, Willoughby and Page, Panelists) (denying transfer to complainant because it was a city);
(iii) Land Sachsen-Anhalt v. Skander Bouhaouala, D2002-0273, (WIPO July 8, 2002) (Bernstein, Panelist) (denying transfer because complainant, a federal state, failed to submit “any evidence” of common law trademark rights).
Complainant further submits in his additional submissions that several of the cases which the Respondent has cited in support the proposition that an organization can incorporate a geographical location and still obtain trademark rights. In support of this argument, it cites the following decisions : -
(i) Kur-und Verkehrsverein St. Moritz v. StMortiz.com, D2000-0617, (WIPO Aug. 17, 2000) (Glas, Panelist) (recognizing that a city name can be a trademark but denying transfer because respondent did not act in bad faith);
(ii) Skipton Bldg. Soc’y v. Peter Colman, D2000-1217, (WIPO Dec. 1, 2000) (Harris, Panelist) (transferring registration of infringing domain name to organization named after a medium-sized English town);
(iii) FC Bayern München AG v. Peoples Net Servs. Ltd., D2003-0464, (WIPO July 15, 2003) (Nitter, Panelist) (ordering domain names transferred to an association named after a geographic area);
(iv) BAA plc, Aberdeen Airport Ltd. v. Hashimi, D2004-0717, (WIPO Oct. 21, 2004) (Smith, Panelist) (transferring registration of infringing domain name to airport named after the city in which it is located).
Therefore, even if the Respondent’s allegation that Lost Tree Village is a geographic place is taken as true, which it is not, Lost Tree Village would still have common law trademark rights in the LOST TREE VILLAGE mark as Lost Tree Village provided substantial evidence of secondary meaning in the Amended Complaint.
· Complainant thereafter states that Respondent further attempts to prove that Lost Tree Village does not have any rights to the LOST TREE VILLAGE mark by comparing the Lost Tree Village to Wisconsin, a state, and Napa Valley, a wine-growing region of California as used in the names of many businesses and organizations in the area. As neither Wisconsin nor Napa Valley are a small private property owners’ association, the comparisons are irrelevant. Respondent also mischaracterizes the Palm Beach Post news article in attempt to show that Lost Tree Village is a geographic place. However, the article clearly does not refer to “residents of Lost Tree Village geographical area” but rather to the residents of Lost Tree Village, “a gated community” in North Palm Beach, Florida - the geographical place in which the Lost Tree Village organization is located.
· The complainant in its additional submissions stated that the <losttreevillage.com> domain name is identical to Lost Tree Village’s LOST TREE VILLAGE mark. Respondent’s argument that it does not “incorporate Complainant’s mark, as Complainant has no mark in the Lost Tree Village name and has not, in reality alleged one in its Amended Complaint” is illogical. The <losttreevillage.com> website fully incorporates and is completely identical to the LOST TREE VILLAGE mark. Further, in its Amended Complaint, Complainant has alleged “[a]s a result of Complainant’s ongoing and steady use of the LOST TREE VILLAGE mark, the LOST TREE VILLAGE mark is subject to common law trademark protections.” Respondent’s misunderstanding of trademark law does not negate the validity of Complainant’s common law rights in its mark.
· The complainant also contends that Respondent has attempted to recast its use of the <losttreevillage.com> Domain Name as “an online repository of good information for that geographic area.” However, Respondent provides only information related to the Complainant and does not include information related to the greater North Palm Beach area, the geographic area in which Lost Tree Village is located, on this website. Respondent has cited Southern Highlands, LLC v. Realtor, FA0707001025866 (Nat. Arb. Forum Aug. 14, 2007) (Safran, Panelist), to support its contention that it runs an informational site. (Response at 12.) In Southern Highlands, the Respondent created a website describing a “large master-planned community,” including providing descriptions of many resources in the area which incorporated SOUTHERN HIGHLANDS into their names, but were unaffiliated with the Complainant. Here, however, the Respondent only provides information, which is often incorrect, regarding the amenities of the private Lost Tree Village community of 550-homes, not a large suburban neighborhood of a city.
· It is also the submission on behalf of the complainant that in addition to this inaccurate allegation of the contents of the <losttreevillage.com> domain name, Respondent admits to knowing of the community and registering the domain name based on this knowledge. This knowledge makes it clear that the Respondent is attempting to leverage the value of the LOST TREE VILLAGE mark to promote its website by unfairly capitalizing on the fame of the mark and Complainant’s goodwill. As such, the Panel should find that Respondent has no legitimate rights or interests in the Domain Name.
· In its additional submissions, complainant states that the Respondent’s attempt to refute Lost Tree Village’s evidence of bad faith use and registration of the <losttreevillage.com> domain name reduces to two discrete arguments: (1) the Complainant mischaracterizes the Respondent’s correspondence with Cam Kirkwood regarding the sale of the <losttreevillage.com> website, which was not done in bad faith; and (2) Respondent, through its www.domainnamefirm.com website, offers to “review” requests from rightful trademark owners requesting the return of infringing domain names, thereby negating any bad faith registration. According to the complainant, such arguments on behalf of the respondent have no factual basis and fail to withstand analytical scrutiny.
· Further, Respondent’s allegation that it did not try to sell the Domain Name back to its rightful trademark owners is negated by the plain language of the email correspondence between B.C. Peterson and Cam Kirkwood in which Peterson requests a “5-figure deal” in response to Cam Kirkwood’s offer of “2k for the domain name.” This language speaks for itself and negates any allegation by Respondent that Mr. Kirkwood was attempting to purchase anything other than the domain name. It has relied upon the decision in Baa plc, Aberdeen Airport Ltd. (holding that respondent acted in bad faith where the Complainants’ initial offer was rejected as being “a few decimals out”).
· The complainant further contends that Respondent’s second basis of good faith is equally illogical. If, as Respondent claims, it were attempting to “restore ethical practices in the domain name business,” it would immediately return infringing domain names to the rightful owners instead of “reviewing” requests. Rather, Respondent sometimes returns infringing domain names to trademark owners when caught. In this regard it placed reliance on the contents of para-10 of the response of respondent and also Annexure of documentary evidence in support of response by domain name firm to complainant’s amended complaint, Ex. One. Further, Respondent’s attempt to extort a “5-figure deal” from Mr. Kirkwood is contradictory of its purported goal.
· Complainant in its additional submissions stated that the Respondent has also relied on the decision of this Forum in - Board of Regents, The University of Texas System v. Vertical Axis Inc., FA1004001322040, (Nat. Arb. Forum June 25, 2010) (Atkinson, Brown and Gibson, Panelists), in a further attempt to explain away its bad faith. The respondent in that case had incorporated the geographic location “Texas” in the domain name in dispute. Unlike the State of Texas, Lost Tree Village is not a geographic location. Further, unlike the domain name at issue in Board of Regents, the <losttreevillage.com> Domain Name is identical to the LOST TREE VILLAGE mark.
(ii) Respondent
Respondent submitted an Additional Submission dated 10.9.2010, i.e. after the deadline for submissions had elapsed. The respondent in its additional submissions has, inter-alia, submitted the following : -
· Contrary to complainant’s assertion, respondent is not under the false impression that registration was required.
· Complainant also misses the larger point regarding the absence of registration, namely, that had complainant attempted to register its mark, such registration would almost certainly have been refused because the mark is a geographical term. The fact that this mark would almost certainly have been refused registration makes it less likely that complainant would be able to establish the existence of common law rights to the mark. The WIPO consensus view is that some domain names might be protected, despite being geographical terms, if the geographical term had been registered as a trademark. In the absence of registration, it would be very difficult to obtain protection for unregistered trademarks in a geographic area on the basis of secondary meaning.
· While decisions of the US Patent & Trademark Office may not be binding on the Forum, respondent’s reliance on such decisions, and on the absence of registration by complainant is evidence which plainly undermines the existence of bad faith on the part of respondent.
· In the additional submissions, the respondent states that the complainant has not offered any proof of its common law rights in the mark, other than its allegation that it has used the mark as its name since 1961 in connection with a private gated community. There is no proof that complainant is even using the name, only that the name is in use for the geographical area that complainant’s members encompass. Complainant conflates the use of the name for the geographic area into complainant’s supposed common-law rights. Complainant is obliged to offer evidence that it has common law rights to the mark in question. Under UDRP Rule 3(b)(viii), complainant is required to identify the goods or services associated with the mark, which complainant fails to do.
· Respondent further submitted that in order to establish common law rights to the mark in question, complainant is also required to offer evidence of secondary meaning. In its amended complainant, complainant did not clearly allege the existence of secondary meaning, merely alleging that the public associates the LOST TREE VILLAGE mark with complainant. When this defect was pointed out in the response by the respondent, complainant appears to have conceded in its additional submissions that proof of secondary meaning is required.
“………..Lost Tree Village provided substantial evidence of secondary meaning in the Amended Complaint.” Since Complainant fails to describe the goods or services it offers, it is impossible to even commence the analysis of secondary meaning, i.e. the determination of whether the primary significance of the mark LOST TREE VILLAGE in the consuming public’s mind is that complainant is the source of the identified goods and services.
· It has not been established what the consuming public associates with the phrase “Lost Tree Village” much less that the public associates “Lost Tree Village” with a particular property owners association. To the contrary, the record evidence tends to show that the public identifies the phrase “Lost Tree Village” with a geographical area, and not with a property owner’s association named “Lost Tree Village Property Owners Association, Inc.”
· Complainant expressly identifies various other persons and entities which apparently have some association with the Lost Tree Village community or that geographical area, e.g., complainant refers to a person named E. Llwyd Ecclestone, and to a country club named “Lost Tree Club.” Complainant goes on to explain that the country club, and not the property owner’s association, owns the golf course, the tennis courts, and the beach club described on Respondent’s website. As another example, in Mr. Kirkwood’s initial discussions with respondent, he expressly references his own business, named “Lost Tree Reality”. Complainant provides no evidence which would show why complainant, the property owners association, supposedly has common law rights to the mark at issue as opposed to Mr. Ecclestone, his estate, businesses owned by Mr. Ecclestone, or the Lost Tree Club country club, or Lost Tree Reality, or some other person or entity. Complainant provides no evidence that the mark has the requisite secondary meaning of serving to identify complainant as the source of whatever goods or services are offered in commerce, as opposed to the country club or some other entity being the source. Since complainant admits that it did not obtain registration of the mark at issue, and because complainant plainly fails to establish that it has common law rights to the mark in question, complainant has failed to establish that it has superior rights to the mark, as compared to respondent, which would justify a transfer of the domain name.
· Complainant does not appear to understand what a geographical location is. A geographical location is a position or point in physical space that something occupies. In the present case, that something is a community, but it could be a grassy knoll, a lake or a state like Texas.
· Complainant itself uses the phrase “Lost Tree Village” as a geographic term to identify where it occupies space within the larger North Palm Beach area. In Tab 1 of complainant’s supplemental annexure, complainant provides complainant is filing with the Florida Department of State. In that document, complainant reports its principal address, and also its mailing address – 11237 Lost Village Way, Lost Tree Village, North Palm Beach, FL, 33408. The phrase “Lost Tree Village” appears in both addresses, and does not function to name a homeowner’s association. The homeowner’s association has already been identified at the top of this form as “Lost Tree Village Property Owners Association, Inc.” To the contrary, the phrase “Lost Tree Village” serves to further identify a geographical area, and is used as such by complainant within the principal address and the mailing address in this document.
· Complainant also attaches a map at Tab-2 to its supplemental annexure and apparently argues that because this map does not show a geographical area named “Lost Tree Village”, therefore, it is impossible for the phrase “Lost Tree Village” to refer to a geographical area. Of course, the fact that a particular map fails to reflect certain words is hardly proof that such words cannot function as a geographical reference. Complainant’s map fails to contain the phrase “North Palm Beach”, the phrase Florida or the phrase Atlantic Ocean. But that does not mean this map proves that such phrases cannot function as geographical references.
· To make matters worse, Complainant expressly states in its additional submissions that due to the exclusive nature of the Lost Tree Village and its concerns for privacy and security of its members, Lost Tree Village chooses not to provide this type of information {geographical information about the North Palm Beach area} on a publicly available website. In other words, complainant boasts about taking steps to keep geographical information about the area out of the public domain, yet points to the absence of an express reference to that area on a publicly available map as somehow proving that “Lost Tree Village” cannot possibly serve as a geographical reference. Of course, complainant knows full well that “Lost Tree Village” can serve as a geographical reference, which is why it included that phrase as part of its “principle address” and its “mailing address” in its filing with the Florida Department of State.
· In its own website, respondent is clearly referring to that geographic location and giving information regarding that geographical location. While a name can have meaning separate and apart from its geographical meaning, that is not alleged here. Nor would it matter if it had been alleged – Board of Regents, The University of Texas System v. Vertical Axis Inc., Claim No.FA1004001322040, holds that where there is a claim, in that case by the University of Texas, of some right over the geographical term due to the alleged use of the term for some other purpose, that use could not prohibit the geographic use by the respondent on its website. Complainant concedes that “Lost Tree Village” is a geographical reference by using it as its primary address and its mailing address in official filings with the Florida Department of State. If anything, complainant seems to think it is inappropriate for respondent to provide information about this geographic area to the public, due to the “exclusive nature” of the community and its residents’ concerns for privacy and security. Since complainant concedes that the phrase refers to a geographical area, complainant cannot prohibit respondent’s geographical use of that phrase on respondent’s website.
· Complainant fails to address the argument made by respondent in para-6 of the response. Thus the complainant, especially concedes that the complainant’s Exhibit 4 proves nothing. Exhibit-4 is merely a sign for Lost Tree Village that nowhere mentions a property owners association and is otherwise identical to any other sign that designates a geographical area.
· Further, the respondent has not mischaracterized the Palm Beach Post newspaper article attached as complainant’s Exhibit-5, e.g., the second paragraph of this newspaper article refers to residents of the Lost Tree Village geographical area, and to residents of a “nearby” geographical area named “Captains Landing”. But according to complainant’s strained logic, since this newspaper article supposedly proves that “Lost Tree Village” refers to a property owners association and not a geographical area, then this newspaper article must also prove that the phrase “Captains Landing” cannot refer to a nearby geographical area (in North Palm Beach and near the Little Lake Worth bridge), but must instead refer to a property owners association affiliated with a community in that geographical area. Of course, this newspaper article does not prove anything of the sort, and is thus no evidence in support of Complainant’s allegations.
· Complainant failed to respond to respondent’s point that complainant, the property owner’s association, has failed to promote the LOST TREE VILLAGE mark, and that its domain name is, in fact, <ltvpoainc.org>. It is telling that complainant, the property owner’s association chose to add the initials “p”, “o” and “a” to its domain name, which presumably stand for “property owners association”. Why add the letters “p”, “o” and “a” if, as complainant contends, the phrase LOST TREE VILLAGE is already firmly associated in the mind of the public with a property owner’s association (as opposed to a geographical area)?
· Complainant has also failed to respond to respondent’s point that the domain name <losttreevillage.org> was available at the time of filing and not claimed by either complainant or respondent.
· Respondent owns the domain name in question. Absent a showing that it infringes another party’s rights in bad faith, respondent has every right to the domain name. It is complainant which makes the illegitimate claim, by attacking respondent’s rights to the name while offering to proof of its own trademark rights or respondent’s bad faith.
· Complainant is inconsistent regarding its complaints about respondent’s website. In para-D on pg.4 of its additional submission, complainant alleges that respondent provides only information related to the complainant. Yet in para-9 on pg.5 of its Amended Complainant, complainant alleges that respondent is misleading internet users because the golf course, tennis courts and beach club are not owned by complainant, but by a separate legal entity named “Lost Tree Club, Inc.”. If Lost Tree Club, Inc. is a separate legal entity unrelated to Lost Tree Village Property Owners Association, Inc., then by complainant’s own admission, respondent’s website is clearly providing information about more than complainant itself. On the other hand, if Lost Tree Club, Inc. and Lost Tree Village Property Owners Association, Inc. are related, that serves to illustrate that complainant’s failure to offer evidence of secondary meaning is a fatal defect in this action, because it is obvious that the mark at issue may be associated in the mind of the public with an entity legally distinct from, but related to complainant.
· The respondent further stated in its additional submissions that Southern Highlands is controlling: the size of the community was not a relevant fact in that determination.
· Although not relevant to the bad faith argument in the complaint, the e-mail record speaks for itself. Cam Kirkwood was clearly operating with a “business partner” and no mention was made of complainant, but instead of another business named “Lost Tree Realty”. No offer has ever been made on behalf of Complainant and that remains true. While the e-mails do not cover all of the subsequent conversations, it is clear in the e-mail that discussions needed to continue regarding the website and there is no evidence to show that anyone clearly and unambiguously made an offer to purchase the domain name in isolation. Since respondent reasonably believed it was not infringing, knew there was no registered trademark, and was never presented with even an argument of some common law trademark rights by Cam Kirkwood, the fact that respondent made a proposal to sell his domain name together with the developed website is not evidence of bad faith.
· The respondent in its additional submissions averred that the Complainant has not alleged any goods or services used in connection with the name, which is required to obtain a mark and required by the Rules in this matter. Complainant concedes that it did not register this mark, and concedes that its claim to the mark rests solely upon common law principles. Complainant concedes it must provide evidence of secondary meaning, but complainant fails to do so. Indeed, complainant expressly identifies other persons and entities whose existence undermines complainant’s unsupported allegation of secondary meaning. Complainant essentially concedes that its Exhibit-4 (the sign) is no evidence in support of its allegations. Respondent has demonstrated why complainant’s Exhibit-5 (the newspaper article) is no evidence. Complainant admits in its own filings with the Florida Department of State that it uses the mark to refer to a geographical area. Complainant’s supplemental Exhibit-2 (the google map) is not evidence that it is impossible for the mark to serve as a geographical reference. No bad faith on the part of respondent has been shown. Complainant has failed to prove any elements of its case and its request for transfer should be denied.
FINDINGS
The Panel finds that the use of the domain name “<losttreevillage.com>” by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
DISCUSSION
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.
· The respondent had submitted its additional submissions late from the last date of submission of additional submissions in terms of National Arbitration Forum pursuant to Supplemental Rule 7. This panel observes that WIPO in its decision in the cases of – (i) Bd. Of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) has held that a panel may consider a response which was one date late, and received before a panelist was appointed and any consideration made); and (ii) SuNyx Surface Nanotechnologies GmbH v. Primmer, D2002-0968 (WIPO Jan. 20, 2003) (choosing not to consider either complainant’s or the respondent’s additional submissions that were received after the stated deadline where neither set out any new facts or other circumstances that would justify the late submissions). Although the respondent has been found to be deficient in terms of Supplemental Rule 7, this Panel feels that the ends of justice would be met if the delay in submission of additional submission by respondent is condoned. Hence, this Panel is taking into consideration the additional submissions on behalf of respondent for deciding this case.
· The Panel observes that the Complainant has asserted in its Complaint and Additional Submission that it has common law rights in the LOST TREE VILLAGE mark. The Panel finds that a trademark registration is not required if Complainant can demonstrate that it has established secondary meaning in the mark sufficient to show common law rights. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); 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.”).
· The Panel also observes that the Complainant has argued in its Complaint and Additional Submission that it has established common law rights in the LOST TREE VILLAGE mark through its continuous use of the mark since 1961 and the subsequent establishment of secondary meaning in the mark. Complainant has alleged that it has continuously used the LOST TREE VILLAGE mark since 1961 when the Lost Tree Village community was founded by E. Llwyd Ecclestone. As evidence of its continuous use of the mark and the public recognition the mark enjoys, Complainant provides a photograph of the sign outside the Lost Tree Village community bearing the LOST TREE VILLAGE mark. Complainant also drew the attention to a mention of the LOST TREE VILLAGE mark and community in a newspaper article in The Palm Beach Post on May 24, 2009. In response to Respondent’s argument that the LOST TREE VILLAGE mark is a geographic place which makes it difficult for Complainant to establish common law rights in the mark, the Complainant has asserted in its Additional Submission that “Lost Tree Village” is not a geographic place but is a small private community of homes whose owners’ collective interests are represented by Complainant. The Panel finds that Complainant’s evidence shows that Complainant has continuously used the mark and that the mark has established secondary meaning sufficient to prove common law rights in the LOST TREE VILLAGE mark pursuant to Policy 4(a)(i). The Panel observes that this Forum’s finding in the cases of – (i) Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); and also (ii) Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years) support this finding.
· The Panel observes that the Respondent in its Response and Additional Submission has contended that Complainant does not have rights in the LOST TREE VILLAGE mark because it has not registered the mark with the USPTO. Respondent argues that Complainant has offered no proof of common law rights in the mark other than an allegation that it has used the name since 1961 in connection with a gated residential community. Respondent avers that Complainant must provide evidence of common law rights and acquired secondary meaning but that Complainant has failed to even identify the goods or services associated with the mark. Respondent also refutes Complainant’s contention that the public associates the LOST TREE VILLAGE mark with Complainant, arguing instead that the public associates the mark with a geographic area, the Lost Tree Village community, and not the Lost Tree Village Property Owners Association, Inc. that is Complainant. Respondent has alleged that Complainant was not even formed at the time the Lost Tree Village community was founded and that Complainant did not exist at that time, according to the records of the Secretary of State of Florida. Respondent also asserts that the LOST TREE VILLAGE mark is comprised of geographic terms which would make it very difficult for Complainant to establish any kind of trademark rights in the mark or establish secondary meaning and common law rights. The Panel finds merit in the argument of the Complainant that LOST TREE VILLAGE mark exists as a trademark in its favour under the principles of common law and therefore, the Complainant would deserve to be considered as owning the rights to such mark pursuant to Policy 4(a)(i). See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Direct Line Ins. plc v. Snook, D2002-0870 (WIPO Nov. 6, 2002) (holding that Complainant had not established rights in the PRIVILEGE mark because it provided no evidence that the term PRIVILEGE had come to be identified with Complainant, other than in association with the word “insurance”).
· This Panel further observes that the Complainant has alleged in its Complaint and Additional Submission that the <losttreevillage.com> domain name is identical to its LOST TREE VILLAGE mark because the only differences between the disputed domain name and Complainant’s mark are the elimination of the spaces between the terms and the addition of the generic top-level (“gTLD”) “.com.” The Panel finds that neither the elimination of the spaces nor the addition of the gTLD affects the identical nature of the disputed domain name as compared to Complainant’s mark for the purposes of Policy 4(a)(i). The Panel finds that this Forum’s findings in the cases of – (i) Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ … [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy 4(a)(i)”); and also in (ii) Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to the complainant’s BODY BY VICTORIA mark) support this conclusion. Therefore, the Panel finds that Respondent’s <losttreevillage.com> domain name is identical to Complainant’s LOST TREE VILLAGE mark under Policy 4(a)(i).
· The Panel is reminded that Complainant should first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The Panel finds that this Forum in the cases of – (i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (has held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also 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.”).
· Complainant contends in its Complaint that it has not given Respondent permission, license, or authorization to use the LOST TREE VILLAGE mark in any domain name. Complainant also contends that Respondent is not commonly known by the <losttreevillage.com> domain name, as evidenced by the information in the WHOIS record for the disputed domain name listing the registrant as “Domain Name Firm c/o DomainNameFirm.com.” Complainant further alleges that Respondent has never been associated with any business known by the disputed domain name and has never operated under such name.
· The disputed domain name cannot be held to be a geographical name. The Panel finds that the assertion on behalf of the Respondent that it had obtained the domain name in good faith because it liked the name and saw the absence of an online repository of good information for that geographic area, would in fact demonstrate the complete absence of any good faith in this regard. The Respondent states that it had known about the LOST TREE VILLAGE community before the Respondent had registered the domain name based on this knowledge. The Panel has also no doubt in its mind that the residents/inhabitants of this private residential enclave would indeed possess a common law right in relation to the name “LOST TREE VILLAGE”. In any case, the Respondent would not be permitted to claim any right either on the ground that it runs an informational site and that it had returned two other domain names. None of these grounds would give any benefit in the claim made by the respondent that registration of the disputed domain name by the Respondent was bona fide.
· The Panel finds that the Respondent thus lacks rights and legitimate interests in the disputed domain name pursuant to Policy 4(c)(ii) as it is not commonly known by the <losttreevillage.com> domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply); see also 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).
· The Panel has found substance in the argument of the Complainant that Respondent is using the fame of Complainant’s LOST TREE VILLAGE mark to attract and divert Internet users seeking Complainant to Respondent’s own website, which provides information about the Lost Tree Village community that is often incorrect. The Panel finds that appropriation of Complainant’s mark to divert Internet users to a website not sponsored or controlled by Complainant is not a bona fide offering of goods or services under Policy 4(c)(i) or a legitimate noncommercial or fair use according to Policy 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy 4(c)(i)); see also Am. Online, Inc. v. Tercent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”).
· Similarly, the Panel finds merit in the contention of the Complainant that in email correspondence between Complainant and Respondent, Respondent indicated a willingness to sell the disputed domain name for, at minimum, a “5-figure” sum. The Panel finds that the Respondent does not possess rights and legitimate interests in the disputed domain name according to Policy 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”)
· In the facts and circumstances of the present case, the Panel finds that the Complainant is correct in contending, contrary to Respondent’s assertions in its Response and Additional Submission, that Respondent did make an effort to sell the <losttreevillage.com> domain name through Respondent’s correspondence with Kirkwood and request for a “5-figure deal.” Complainant’s contention that the language of the email specifically offering Respondent $2,000 for the domain name negates Respondent’s allegation that it was not discussing selling the disputed domain name alone, but the disputed domain name in combination with the developed website, merits acceptance. The Panel would also like to accept the contention of the Complainant that Respondent operates a domain name reselling business at the <domainnamefirm.com> domain name and that this effort to sell the <losttreevillage.com> domain name is consistent with Respondent’s pattern of generating revenue through registering and reselling domain names. The Panel finds that a request for a 5-figure payment in exchange for transferring the disputed domain name back to its rightful trademark owner is indeed an evidence of registration and use in bad faith of the disputed domain name in terms of the Policy 4(b)(i). See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy 4(b)(i).”); see also Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration).
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 <losttreevillage.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: 1st October, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum