Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. v. Adam Robinson / NULL NULL
Claim Number: FA1302001484320
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 Adam Robinson / NULL NULL (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <waterlefe.com> and <waterlefe.net>, registered with ENOM, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 8, 2013; the National Arbitration Forum received payment on February 12, 2013.
On February 8, 2013, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <waterlefe.com> and <waterlefe.net> 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 February 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2013 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 and postmaster@waterlefe.net. Also on February 13, 2013, 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 March 22, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 <waterlefe.com> and <waterlefe.net> domain names are confusingly similar to Complainant’s WATERLEFE mark.
2. Respondent does not have any rights or legitimate interests in the
<waterlefe.com> and <waterlefe.net> domain names.
3. Respondent registered and used the <waterlefe.com> and <waterlefe.net> domain names in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant uses its WATERLEFE mark for real estate development and management services. Complainant owns multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its WATERLEFE mark (e.g. Reg. No. 2,606,576 registered Aug. 13, 2002) and its WATERLEFE & Design mark (Reg. No. 2,623,002 registered Sept. 24, 2002). The first use date reflected in a valid USPTO Trademark Registration is June 30, 1999.
Respondent registered the <waterlefe.com> domain name on February 20, 1999 and the <waterlefe.net> domain name on February 4, 2000, and uses them to divert Internet users to Respondent’s website offering real estate services.
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.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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 argues that both parties hold registrations for the WATERLEFE mark for different goods and services, and that both parties have entered into a consent and coexistence agreement whereby the parties have agreed between themselves regarding their respective rights in the trademark.
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 Org. Comm. for the 2010 Olympic and Paralymic Games & 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 Invs., 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 Am. 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.
The Panel here accepts the evidence in the Complaint as sufficient to establish a nexus between the Complainants, and elects to treat them as a single entity in this proceeding, and they will be collectively referred to as “Complainant.”
Complainant has established rights in its WATERLEFE marks based on its registration of the marks with the USPTO. Previous panels have found that a complainant’s registration of a mark with a federal trademark authority is sufficient to confer rights in the 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.”). The Panel notes, however, that the first use date reflected in a valid USPTO Trademark Registration is June 30, 1999. Therefore, Complainant has established rights that predate the filing of the <waterlefe.net> domain name on February 4, 2000, but not the filing of the <waterlefe.com> domain name on February 20, 1999.
Complainant also claims common law rights in the WATERLEFE mark, arguing that its first use in commerce in the WATERLEFE mark is February 8, 1999. Complainant argues that through exclusive use and advertising, the WATERLEFE mark has become identified with Complainant in the minds of the public in Sarasota and Manatee Counties in Florida. However,
Complainant did not provide any evidence that it had established this recognition by February 20, 1999. Indeed, it could hardly have achieved secondary meaning in the 16 days between February 8 and February 20, 1999. It does not help Complainant that February 8, 1999, is cited as the first use date in a cancelled trademark application. While the Panel has no doubt that Respondent has misappropriated Complainant’s WATERLEFE mark, there is simply no evidence to support the establishment of Complainant’s rights before February 20, 1999, and therefore this UDRP process cannot be used to transfer the <waterlefe.com> domain name to Complainant.
The Panel finds that Complainant has established right in its WATERLEFE mark that predate the filing of the <waterlefe.net> domain name, and the remainder of the analysis in this decision pertains to that domain name only.
Respondent’s <waterlefe.net> domain name is confusingly similar to Complainant’s WATERLEFE mark because it merely adds the generic top-level domain (“gTLD”) “.net,” irrelevant to a Policy ¶ 4(a)(i) analysis. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). Accordingly, the Panel finds that the <waterlefe.net> domain name is identical to Complainant’s WATERLEFE mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) as it pertains to the <waterlefe.net> domain name.
The Panel finds that Complainant has not satisfied Policy ¶ 4(a)(i) as it pertains to the <waterlefe.com> domain name and therefore declines to analyze the remaining two UDRP elements for the <waterlefe.com> domain name.
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 claims Respondent is not commonly known by the disputed domain name. Complainant asserts that Respondent does business through the service mark “Weichert Realty.” The WHOIS information for the disputed domain name lists “Adam Robinson / NULL NULL” as the registrant, which is not similar to the <waterlefe.net> domain name. Therefore, the Panel finds that Respondent has not been commonly known by the disputed domain names and has not established rights or legitimate interests under Policy ¶ 4(c)(ii). See 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).
Complainant also contends that Respondent is not making 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). Complainant states that the disputed domain name redirects users to Respondent’s website offering commercial real estate services. Previous panels have found that diverting Internet users to the respondent’s competing website is not a bona fide offering or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent does not have rights or legitimate interests in the <waterlefe.net> domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii) as it pertains to the <waterlefe.net> domain name.
Respondent is using the domain names to attract, for commercial gain, Internet users to Respondent’s real estate websites by creating a likelihood of confusion with Complainant’s mark. This constitutes evidence of bad faith under Policy ¶ 4(b)(iv). See 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).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii) as it pertains to the <waterlefe.net> domain name.
Having not established all three elements required under the ICANN Policy pertaining to the <waterlefe.com> domain name, the Panel concludes that relief shall be DENIED.
Having established all three elements required under the ICANN Policy pertaining to the <waterlefe.net> domain name, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waterlefe.net> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 29, 2013
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