American Newland Communities, LP and FishHawk Communities Limited Partnership v. Richard Nappi
Claim Number: FA1107001396777
Complainant is American Newland Communities, LP and FishHawk Communities Limited Partnership (“Complainant”), represented by Julia Anne Matheson of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington D.C., USA. Respondent is Richard Nappi (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info>, registered with Godaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2011; the National Arbitration Forum received payment on July 1, 2011.
On July 6, 2011, Godaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info> domain names are registered with Godaddy.com, Inc and that Respondent is the current registrant of the names. Godaddy.com, Inc has verified that Respondent is bound by the Godaddy.com, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 2011 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@mirabayhome.com, postmaster@fishhawkranchhome.com, postmaster@newfishhawkhomes.com, and postmaster@watersethomes.info. Also on July 6, 2011, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 1, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mirabayhome.com> domain name is confusingly similar to Complainant’s MIRABAY mark.
Respondent’s <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names are confusingly similar to Complainant’s FISHHAWK RANCH mark.
Respondent’s <watersethomes.info> domain name is confusingly similar to Complainant’s WATERSET mark.
2. Respondent does not have any rights or legitimate interests in the <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info> domain names.
3. Respondent registered and used the <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Newland Communities, LP, owns the MIRABAY and WATERSET marks. Complainant, FishHawk Communities Limited Partnership, a Florida limited partnership, owns the FISHHAWK RANCH mark. Complainants, having a business relationship that is closely linked and the Panel elects to treat them as one entity for the remainder of this proceeding. The MIRABAY mark has been registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,696,268 registered March 11, 2003). The WATERSET mark is similarly registered with the USPTO (Reg. No. 3,745,440 filed June 10, 2005; registered February 2, 2010). The FISHHAWK RANCH mark has been registered with the Florida Department of State Division of Corporations (“FDSDC”) (Doc. No. T97000000401 filed April 10, 1997). The FISHHAWK RANCH has been used by Complainant since February 26, 1997. The marks are used in connection with the development and construction of planned communities in Florida and to provide information and real estate listing services.
Respondent, Richard Nappi, registered the disputed domain name as follows: <mirabayhome.com> on March 21, 2008; <fishhawkranchhome.com> on July 25, 2010; <newfishhawkhomes.com> on July 25, 2010; and <watersethomes.info> on June 24, 2011. Respondent uses the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names to advertise and provide information and real estate listing services that compete with Complainant’s business through a company called Zest Realty. The <watersethomes.info> domain name resolves to a pay-per-click website which displays links to competing real-estate related websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant contends that it has established rights in the MIRABAY mark. Registration with a federal trademark authority such as the USPTO is a sufficient basis for a complainant to demonstrate its rights in a mark. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). Complainant has provided evidence of the MIRABAY mark’s registration with the USPTO (Reg. No. 2,696,268 registered March 11, 2003). As a result of Complainant’s submission of evidence of the registration of its mark with the USPTO, the Panel finds that Complainant has rights in its MIRABAY mark under Policy ¶ 4(a)(i).
Complainant also asserts rights in its WATERSET mark. The WATERSET mark has likewise been registered with the USPTO, which, as discussed earlier, is sufficient to establish rights. See Intel Corp. v. Macare, supra; see also Expedia, Inc. v. Tan, supra. The relevant date to consider when making a Policy ¶ 4(a)(i) analysis is the filing date of a trademark. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date). Evidence of the WATERSET mark’s registration with the USPTO has likewise been provided (Reg. No. 3,745,440 filed June 10, 2005; registered February 2, 2010). The Panel finds that Complainant has established rights in its WATERSET mark under Policy ¶ 4(a)(i).
The Panel finds that registration of a mark with a federal trademark authority is unnecessary for the establishment of rights in a mark, so long as Complainant can establish common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”). The Panel will therefore review the evidence surrounding Complainant’s FISHHAWK RANCH mark to determine whether it has sufficient secondary meaning associated with it to grant Complainant common law rights in the mark.
Complainant contends that it does have common law rights in the FISHHAWK RANCH mark. Rights in a mark can exist where the use of the mark has established a secondary meaning. Secondary meaning can be demonstrated by long-standing use of a mark or action taken to establish the mark beyond simple business establishment. See 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); see also EU Prop. Portfolio Ltd. v. Salvia Corp., FA 873726 (Nat. Arb. Forum Feb. 7, 2007) (“Although it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.”). Complainant has provided evidence of the registration of the FISHHAWK RANCH mark with the FDSDC (Doc. No. T97000000401 filed April 10, 1997). Additionally, Complainant has been using the FISHHAWK RANCH mark since February 26, 1997. The Panel finds that Complainant has established secondary meaning, and thus rights, in the FISHHAWK RANCH mark under Policy ¶ 4(a)(i).
Complainant further contends that the <mirabayhome.com> domain name is confusingly similar to its MIRABAY mark. Panels have found in the past that the addition of a generic top-level domain (“gTLD”) is insufficient to differentiate a domain name from the mark it is otherwise infringing upon. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Additionally, panels have found in cases such as Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) and Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) that the addition of generic or descriptive terms fails to distinguish domain names from marks. The <mirabayhome.com> domain name fully incorporates Complainant’s MIRABAY mark, adds the gTLD “.com,” and adds the descriptive term “home.” Therefore, the Panel finds that the <mirabayhome.com> domain name is confusingly similar to Complainant’s MIRABAY mark under Policy ¶ 4(a)(i).
The <watersethomes.info> domain name is made up of the following components: Complainant’s WATERSET mark, the descriptive term “homes,” and the gTLD “.info.” Panels have found that these changes to a mark in a domain name are insufficient to distinguish the domain name from a complainant’s mark. See Reese v. Morgan, supra; see also Miller Brewing Co. v. Domain Active Pty. Ltd., supra. The Panel therefore finds that the <watersethomes.info> domain name is confusingly similar to Complainant’s WATERSET mark under Policy ¶ 4(a)(i).
Complainant further contends that the <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names are confusingly similar to Complainant’s FISHHAWK RANCH mark. The addition to each of the gTLD “.com” and the addition of generic and descriptive terms fails to differentiate the domain names from Complainant’s FISHHAWK mark. See Isleworth Land Co. v. Lost in Space, supra; see also Dr. Ing. h.c. F. Porsche AG v. Anderson, supra.
Additionally, the space between the words of the mark are eliminated. However, as spaces are impermissible in domain names, their deletion does not render a Panel unable to find the domain name confusingly similar. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that, as Respondent failed to distinguish the domain names from Complainant’s FISHHAWK RANCH mark, the disputed domain names are confusingly similar pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant’s showing of rights in its MIRABAY, WATERSET, and FISHHAWK RANCH marks as well as the confusing similarity of the disputed domain names satisfies the requirements of Policy ¶ 4(a)(i).
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. Once a complainant has made a prima facie case in support of its claims, the burden shifts to the respondent to dispute these claims. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Respondent, however, failed to submit a Response to the Complaint. As such, the Panel may infer that Respondent does not dispute the claims against it. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint). The Panel finds that Complainant has made a prima facie case in support of its allegations. The Panel will therefore review the record for information as to whether Respondent has rights or legitimate interests in the disputed domain names.
Being commonly known by a disputed domain name may establish rights or legitimate interests in that domain name. The Panel, guided by IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) will look to the WHOIS listing for the disputed domain names. Information provided by Complainant as to the affiliation of Respondent to its marks will also be considered. The WHOIS listing for each of the <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info> domain names states that “Richard Nappi” is the domain name registrant. This does not suggest that Respondent is connected to the domain names to any extent beyond their registration and use. Additionally, Complainant asserts that it is in no way associated with Respondent and has not granted Respondent license to use any of its marks. As such, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant contends that Respondent has failed to use the disputed domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use. Previous panels have found that the use of a domain name to advertise and sell competing goods and services does not qualify as either a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). Respondent uses the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names to provide information and real estate listing services that compete with Complainant’s business through a company called Zest Realty. The Panel finds that the use of the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names was neither a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The <watersethomes.info> domain name resolves to a pay-per-click website which displays links to competing real-estate related websites. Panels have found this usage of disputed domain names to be outside the scope of protected uses under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (holding that the respondent’s use of the contested domain name to maintain a commercial website with links to the products and services of the complainant’s competitors did not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Given Respondent’s utilization of the disputed domain name, the Panel finds that Respondent use was neither a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has established that Respondent is not commonly known by the disputed domain names and that Respondent’s use of the disputed domain names is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. As such, Complainant has satisfied the required elements of Policy ¶ 4(a)(ii).
Complainant contests that Respondent’s registration and use of the disputed domain names is disruptive to its business. The <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names resolve to the website of one of Complainant’s competitors in the real estate industry. This disrupts Complainant’s business. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Respondent, by registering and using confusingly similar domain names, guarantees that some Internet users will end up on its domain names rather than at Complainant’s website. Thus, the Panel finds that Respondent’s registration and use of the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names disrupts Complainant’s business under Policy ¶ 4(b)(iii).
The <watersethomes.info> domain name resolves to a website which displays links to the services that Complainant offers from Complainant’s competitors such as listings of available real estate and information sets on available real estate. Panels have found that this is also a disruptive use. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)). Respondent, having diverted Internet users to its domain names by way of registering and using a confusingly similar domain name, ensures that some of the Internet users intended to use Complainant’s services, use Respondent’s services instead. Thus, Complainant’s consumer base is decreased. As such, the Panel finds that Respondent’s registration and use of the <watersethomes.info> domain name is disruptive to Complainant’s business under Policy ¶ 4(b)(iii).
Finally, Complainant alleges that Respondent registered and used the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names because of the attraction posed for commercial gain. The confusing similarity of the disputed domain names generates higher Internet traffic because Internet users become confused about the affiliation or sponsorship of Respondent by Complainant. Then, because some of the Internet visitors will inevitably use the services offered on the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domain names Respondent garners a greater profit. The Panel finds that the registration and use of the <mirabayhome.com>, <fishhawkranchhome.com> and <newfishhawkhomes.com> domains therefore demonstrate bad faith on the part of Respondent under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Additionally, Complainant argues that the registration and use of the <watersethomes.info> domain name was similarly done in bad faith as a product of commercial gain potential. The <watersethomes.info> domain name resolves to a website displaying click-through links to related real estate products and services. The Panel, supported by cases such as Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) and Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006), holds that the use of a domain name to display click through the links that compete with Complainant’s business, for which Respondent presumably receives referral fees, is similarly a product of the attraction for commercial gain posed pursuant to Policy ¶ 4(b)(iv).
The Panel finds that Complainant has sufficiently demonstrated that Respondent registered and used the disputed domain names in bad faith, and thus, Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mirabayhome.com>, <fishhawkranchhome.com>, <newfishhawkhomes.com> and <watersethomes.info> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: August 11, 2011
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