national arbitration forum

 

DECISION

 

Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. v. IEG

Claim Number: FA1210001465898

 

PARTIES

Complainant is Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. (“Complainant”), represented by Douglas A. Cherry of Shumaker, Loop & Kendrick, LLP, Florida, USA.  Respondent is IEG (“Respondent”), Georgia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <waterlefedirectory.com> and <mywaterlefe.com>, registered with Godaddy.com, LLC.

 

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.

 

 JAIME DELGADO as Panelist.

 

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 4, 2012; the National Arbitration Forum received payment on October 5, 2012.

 

On October 5, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <waterlefedirectory.com> and <mywaterlefe.com> domain names are registered with Godaddy.com, LLC and that Respondent is the current registrant of the names.  Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 October 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2012 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@waterlefedirectory.com and postmaster@mywaterlefe.com.  Also on October 10, 2012, 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.

 

A timely Response was received and determined to be complete on October 29, 2012.

 

An Additional Submission from Complainant was received on November 2, 2012 and an Additional Submission from Respondent was received on November 7, 2012.

 

On November 8, 2012  pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Jaime Delgado 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

  1. Complainant
    1. The Complainant in this action consists of two parties: Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc.  Both parties hold registrations for the WATERLEFE mark for different goods and services, and both have entered into an agreement whereby the parties have agreed to coexistence among themselves. 
    2. Complainant owns many trademark registrations with the United States Patent and Trademark Office ("USPTO") for the WATERLEFE mark (e.g., Reg. No. 2,446,547 registered Apr. 24, 2001). 
    3. Both of Respondent’s <waterlefedirectory.com> and <mywaterlefe.com> domain names are confusingly similar to the WATERLEFE mark. 
    4. Respondent has not been known by the WATERLEFE mark or the disputed domain names.
    5. Respondent is using the disputed domain names to provide community information and locations for Pizza Hut restaurants, both of which compete with Complainant’s offerings of the same type of information.  Such uses of the domain names in issue does not create rights or legitimate interests in the disputed domain names.
    6. Respondent has registered and is using the disputed domain names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s websites.  Respondent is using the <mywaterlefe.com> domain name to offer community information and directory services, as well as featuring advertisements that result in commercial gain.  Respondent is using the <waterlefedirectory.com> domain name to redirect Internet users to a Pizza Hut ordering website, services which compete with Complainant’s offerings of restaurant services. 

 

  1. Respondent
    1. Respondent’s disputed domain names are not identical or confusingly similar to a trademark or service mark in which Complainant has rights.
    2. Respondent has worked to put together public portal websites for condominium residents that have included resident-recommended local business advertisements. 
    3. In 2006, Respondent registered the <waterlefedirectory.com> domain name to add on to its resident directory websites.  Respondent was later given a digital listing of all Waterlefe residents by an Administrative Assistant of Complainant so that Respondent could load the names of residents into its website database. 
    4. The <mywaterlefe.com> domain name was launched on July 4, 2009, culminating with an invite for more than half of the residents of the Waterlefe community to a house party to explain the domain name’s purpose.  The website includes a business directory that was formulated by nominations from the residents of the Waterlefe neighborhood.  The website also features a “social” function where Internet users can message each other and join book clubs, poker clubs, golfing groups, etc.
    5. The word Waterlefe itself is a type of gladiolus flower, thereby making the word generic. 
    6. Respondent’s domain names do not compete with any offerings that Complainant makes through its marks, and Complainant has acquiesced to Respondent’s use of the disputed domain names as they were presented to members of Complainant’s committee and board and other employees of Complainant.  Complainant, in July of 2009, asked Respondent to place a simple disclaimer on its website stating that it was not associated with Complainant, with which Respondent complied. 
    7. Respondent’s domain names are limited to the residents within a 600 home neighborhood, and no confusion exists between the golf, spa, and “few times a week” food services of Complainant.
    8. Complainant has also allowed other entities within the community to freely use the WATERLEFE mark and logo online. 
    9. Respondent’s partners conducted a search for “MyWaterlefe” within the state and determined that no one else had the name already.  Respondent’s partners then proceeded to form “MyWaterlefe LLC” with the state and created a bank account in the name of “MyWaterlefe LLC.  The <mywaterlefe.com> domain name is an extension of this business.
    10. Respondent is only selling advertising from the business community in the Waterlefe neighborhood and does not compete with Complainant’s offerings under the WATERLEFE mark. 

 

  1. Complainant’s Additional Submission
    1. Respondent has not been licensed or authorized to use the WATERLEFE mark and should not be able to confuse consumers with domain names that suggest Respondent is endorsed or affiliated with Complainant.
    2. Respondent does not contest that the disputed domain names are identical or confusingly similar to Complainant’s marks.
    3. Respondent’s Response only focuses on the <mywaterlefe.com> domain name, so it appears that Respondent concedes that its registration of the <waterlefedirectory.com> domain name was improper.
    4. Respondent has admitted that it is an Internet-marketing company that does business under its own name, not the domain names.
    5. Even if Respondent’s account of getting a resident listing were true, that fact alone does not grant license or permission to Respondent to use the mark.
    6. The inclusion of a disclaimer does not grant Respondent rights or legitimate interests in the domain names.
    7. Respondent has admitted that it is using the disputed domain names for commercial purposes.  Respondent is creating confusion with Complainant’s marks by using them without license to do so.  Therefore, Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
    8. Respondent’s use of a disclaimer does not negate its bad faith registration and use of the disputed domain names.

 

  1. Respondent’s Additional Submission
    1. Complainant had to prove that IEG’s domain name(s) are identical or confusingly similar to  trademarks or service mark in which Waterlefe has rights;
    2. prove IEG has no rights or legitimate interests in respect of the domain name; and
    3. prove IEG’s domain name has been registered and is being used in bad faith.
    4. Complainant has not proven any of these conditions and as such the domains should remain with IEG.
    5. IEG’s domain name(s) are NOT identical or confusingly similar.
    6. The Complainant states in its Point I of the Additional Submission, that IEG does not contest that the domain names waterlefedirectory.com and mywaterlefe.com are identical or confusingly similar. Of course, we contest this. That is why we responded in length as to why we do not believe there is confusion.
    7. IEG has rights or legitimate interests in respect of the domain names.
    8. MyWaterlefe LLC was formed as a legitimate business entity in June, 2009. A search was done for the name and found to be available. MyWaterlefe LLC started to market the concept of the website to prospective business advertisers, after securing its initial list of business from a list of Waterlefe residents. Brochures were made and presentations given which establishes the validity of the name MyWaterlefe.com to be copyrighted. And the business entity MyWaterlefe LLC has every right to register a domain name that essentially is the business name.
    9. IEG’s domain name has been registered and is NOT being used in bad faith.
    10. There are many commercial community-based business directories in existence. This speaks to the opportunity that exists in this marketplace. MyWaterlefe LLC clearly went after this opportunity in developing and launching the mywaterlefe.com website. The opportunity in this case was certainly dependent on showing the prospective businesses that advertising on the website was to their real benefit. How to accomplish this was to have functionality that would bring residents to the site so the advertisers could get their message viewed. Having a business directory along was not enough. As such, we felt by building a social-based website where people could message each other, share photos, clubs, events, recipes etc as well as get new monthly content like Ask the Vet, the Winelefe, Golf Tips etc would drive the residents to the site. Clearly when we presented this concept and the website functionality to the prospective advertisers, they agreed and were very enthusiastic about it.

 

Preliminary Issue: Multiple Complainants

 

The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e).  UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.”  The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”

 

There are two Complainants in this matter: Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc.  Complainant contends that this action consists of two parties: Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc.  Complainant asserts that both parties hold registrations for the WATERLEFE mark for different goods and services, and both have entered into an agreement whereby the parties have agreed to coexistence among themselves.  Complainant also notes that a prior UDRP panel has determined that Complainants should be allowed bring a complaint featuring both parties.  Waterlefe Comm. Dev. District & Waterlefe Master Prop. Owners Assoc., Inc. v. Hunter, FA 1455368 (Nat. Arb. Forum Aug. 27, 2012).

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Comm. for the 2010 Olympic and Paralymic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).

 

The evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, to treat them all as a single entity in this proceeding.  The Complainants will be collectively referred to as “Complainant.”

 

FINDINGS

 

1.    Complainant owns many trademark registrations with the USPTO for the WATERLEFE mark (e.g., Reg. No. 2,446,547 registered Apr. 24, 2001). 

2.    Both of Respondent’s <waterlefedirectory.com> and <mywaterlefe.com> domain names are confusingly similar to the WATERLEFE mark.  The addition of the words “directory” or “my” are not sufficient to eliminate similarity.

 

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."

 

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 or Confusingly Similar: Policy ¶ 4(a)(i).

 

Complainant contends that it owns many trademark registrations with the USPTO for the WATERLEFE mark (e.g., Reg. No. 2,446,547 registered Apr. 24, 2001).  Through its Complaint and Additional Submission, Complainant contends that its trademark registrations are sufficient for it to establish Policy ¶ 4(a)(i) rights in the mark.  Complainant has effectively established rights in the WATERLEFE mark under Policy ¶ 4(a)(i).  See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).

 

Further, Complainant argues that both of Respondent’s <waterlefedirectory.com> and <mywaterlefe.com> domain names are confusingly similar to the WATERLEFE mark.  Both of the disputed domain names contain the WATERLEFE mark while adding the generic terms “directory” or “my” and the generic top-level domain (“gTLD”) “.com.”  Such additions to Complainant’s mark do not render the disputed domain names distinct from the mark.  See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (finding that the addition of the descriptive term “wine” to the complainant’s BLACKSTONE mark in the <blackstonewine.com> domain name was insufficient to distinguish the mark from the domain name under Policy ¶ 4(a)(i)); 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.”).  Therefore, the <waterlefedirectory.com> and <mywaterlefe.com> domain names are confusingly similar to Complainant’s WATERLEFE mark under Policy ¶ 4(a)(i). 

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  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 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 argues that Respondent has not been known by the WATERLEFE mark or the disputed domain names.  Within its Additional Submission, Complainant argues that Respondent has not been licensed or authorized to use the WATERLEFE mark and that Respondent’s contentions that it formed an LLC under the “MyWaterlefe LLC” name do not indicate that it was and is commonly known by the disputed domain names.  The WHOIS information for the disputed domain names identifies the registrant as “IEG,” which is dissimilar from the disputed domain names and the “MyWaterlefe LLC” name.  Therefore,  Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).

                                                                                             

Complainant argues that Respondent is using the disputed domain names to provide community directory information and locations for Pizza Hut restaurants, both of which compete with Complainant’s offerings of the same type of information.  Complainant argues that such uses of the domain names in issue do not create rights or legitimate interests in the disputed domain names because such uses are in direct competition with Complainant’s services under the WATERFELE mark.  Within its Additional Submission, Complainant asserts that Respondent has admitted to using the disputed domain names to collect advertising fees from local businesses, thereby making its use of the domain names strictly commercial in nature.  Complainant reiterates that it has not authorized or acquiesced to such use of the WATERFELE mark by Respondent.  Respondent is not using the disputed domain names for 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).

 

Complainant also asserts, within its Additional Submission, that a disclaimer upon Respondent’s resolving websites is not sufficient to garner rights in the domain names for Respondent.  Respondent’s placement of a disclaimer on the resolving websites does not negate a finding of Respondent’s lack of rights in the domain names under Policy ¶ 4(a)(ii).  See AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).

 

Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).

 

Complainant argues that Respondent has registered and is using the disputed domain names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to Respondent’s websites by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, and endorsement of Respondent’s websites.  Complainant also contends that Respondent is using the <mywaterlefe.com> domain name to offer community information and directory services, as well as feature advertisements that result in commercial gain.  Complainant argues that Respondent is using the <waterlefedirectory.com> domain name to redirect Internet users to a Pizza Hut ordering website, a service which competes with Complainant’s offerings of restaurant services.  In its Additional Submission, Respondent has admitted that it is using the disputed domain names for commercial purposes.  Complainant asserts that Respondent is creating confusion with Complainant’s marks by using them without license to do so.  Therefore, Complainant states, Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).   Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).

 

Complainant also contends that Respondent’s use of a disclaimer does not negate its bad faith registration and use of the disputed domain names.   Respondent’s use of a disclaimer does not mitigate a finding of bad faith under Policy ¶ 4(a)(iii).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”).

 

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 <waterlefedirectory.com> and <mywaterlefe.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

JAIME DELGADO Panelist

Dated:  November 11, 2012

 

 

 

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