national arbitration forum

 

DECISION

 

Waterlefe Community Development District v. Adam Robinson / NULL NULL

Claim Number: FA1111001414745

 

PARTIES

Complainant is Waterlefe Community Development District (“Complainant”), represented by Douglas A. Cherry of Shumaker, Loop & Kendrick, LLP, Florida, USA.  Respondent is Adam Robinson / NULL NULL (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <waterlefe.com>, <waterlefe.net>, and <waterlefe.org>, registered with eNom, Inc.

 

PANEL

The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 8, 2011; the National Arbitration Forum received payment on November 9, 2011.

 

On November 9, 2011, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names.  eNom, Inc. has verified that Respondent is bound by the eNom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 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@waterlefe.com, postmaster@waterlefe.net, and postmaster@waterlefe.org.  Also on November 14, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 December 12, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names are identical to Complainant’s WATERLEFE mark.

 

2.    Respondent does not have any rights or legitimate interests in the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names.

 

3.    Respondent registered and used the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Waterlefe Community Development District, is a government entity authorized by Florida statute to offer alternative methods of planning, acquiring, operating, and maintaining community-wide improvements in planned communities.  Complainant provides it services under its WATERLEFE mark.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WATERLEFE mark (e.g., Reg. No. 2,449,236 filed May 22, 2000; registered May 8, 2001).

 

Respondent, Adam Robinson / null nulL, registered the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names on February 20, 1999, February 4, 2000, and October 2, 2003, respectively.  The disputed domain names resolve to websites that offer real estate services that compete with Complainant’s services. 

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

To establish rights under Policy ¶ 4(a)(i), Complainant provides evidence of its trademark registrations with the USPTO for its WATERLEFE mark (e.g., Reg. No. 2,449,236 filed May 22, 2000; registered May 8, 2001).  The Panel determines that Complainant’s USPTO trademark registrations are sufficient and holds that Complainant holds Policy ¶ 4(a)(i) rights in the WATERLEFE mark, dating back to the filing date of May 22, 2000.  See 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).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).

 

Respondent’s <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names differ from Complainant’s mark by the addition of a generic top-level domain (“gTLD”), such as “.com,” “.net,” or “.org.”  The Panel finds the addition of a gTLD does not prevent Respondent’s <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names from being found identical to Complainant’s WATERLEFE mark pursuant to Policy ¶ 4(a)(i).  See Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to the complainant’s MYSTIC LAKE trademark and service mark); Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent lacks rights and legitimate interests in the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names.  Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  The Panel finds Complainant has made a prima facie case.  Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).

 

The WHOIS information identifies the registrant of the disputed domain names as “Adam Robinson / null nulL.”  Respondent does not offer any evidence that it is commonly known by the disputed domain names.  Based on the WHOIS information and the lack of evidence presented by Respondent, the Panel concludes that Respondent is not commonly known by the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names under Policy ¶ 4(c)(ii).  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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent’s <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names resolve to Respondent’s websites offering competing real estate services.  The Panel finds that such use is evidence that Respondent is making neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <waterlefe.com>, <waterlefe.net>, and <waterlefe.org> domain names.  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).

 

The Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent registered the <waterlefe.com> and <waterlefe.net> domain names on February 20, 1999 and February 4, 2000, respectively.  Complainant’s USPTO trademark registration for its WATERLEFE mark (e.g., Reg. No. 2,449,236 filed May 22, 2000; registered May 8, 2001) dates back to May 22, 2000.  As Respondent registered the <waterlefe.com> and <waterlefe.net> domain names prior to Complainant’s trademark registration and rights in the mark, the Panel concludes that Respondent could not have registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).  See Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where the respondent registered the domain prior to the complainant’s use of the mark); see also Telecom Italia S.p.A. v. NetGears LLC, FA 944807 (Nat. Arb. Forum May 16, 2007) (finding the respondent could not have registered or used the disputed domain name in bad faith where the respondent registered the disputed domain name before the complainant began using the mark). As Complainant has not proven bad faith registration with respect to the <waterlefe.com> and <waterlefe.net> domain names, the Panel will continue the analysis under Policy ¶ 4(a)(iii) below only in relation to the <waterlefe.org> domain name.[1]

 

As Respondent’s <waterlefe.org> domain name resolves to a website that offers real estate services that compete with Complainant’s services, the Panel infers that Complainant’s business is disrupted by Respondent’s registration and use of the disputed domain name.  Therefore, the Panel holds that Respondent registered and uses the <waterlefe.org> domain name in bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also 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)).

 

Respondent likely commercially benefits from the sale of competing real estate services at the <waterlefe.org> domain name.  Respondent receives this commercial benefit by attracting Internet users interested in Complainant to Respondent’s competing website by creating confusion with the identical disputed domain name.  Thus, the Panel concludes that Respondent registered and uses the <waterlefe.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

The Panel finds Policy ¶ 4(a)(iii) is satisfied as to <waterlefe.org> domain name.  The Panel finds Policy ¶ 4(a)(iii) is not satisfied for the <waterlefe.com> and <waterlefe.net> domain names.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED for the <waterlefe.org> domain name.

 

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED WITHOUT PREJUDICE for the <waterlefe.com> and <waterlefe.net> domain names.

 

Accordingly, it is Ordered that the <waterlefe.org> domain name be TRANSFERRED from Respondent to Complainant and the <waterlefe.net> and <waterlefe.com> domain names REMAIN WITH Respondent.

 

 

Bruce E. Meyerson, Panelist

Dated:  December 19, 2011

 



[1] Respondent registered the first domain name the year before Complainant registered its WATERLEFE mark.  Although there are circumstances when bad faith can be found by the registration of a domain name even before a complaining party has established trademark rights, this record would not support such a determination.  WIPO Overview of WIPO Panel Views on Selected UDRP Questions (2d ed.) § 3.1.

 

 

 

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