Queen’s Harbour Yacht & Country Club Owners Association, Inc. v. christine lee
Claim Number: FA1111001415457
Complainant is Queen’s Harbour Yacht & Country Club Owners Association, Inc. (“Complainant”), represented by James R. Menker of Holley & Menker, P.A., Florida, USA. Respondent is christine lee (“Respondent”), represented by Albert T. Franson of Franson & Iseley, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <queensharbourvalues.com> and <queensharbour-homes.com>, 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.
Nathalie Dreyfus as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 14, 2011; the National Arbitration Forum received payment on November 14, 2011.
On November 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <queensharbourvalues.com> and <queensharbour-homes.com> 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 November 16, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 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@queensharbourvalues.com and postmaster@queensharbour-homes.com. Also on November 16, 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.
A timely Response was received and determined to be complete on December 6, 2011.
Complainant submitted a timely Additional Submission on December 12, 2011.
On December 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nathalie Dreyfus as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant makes the following contentions:
- Complainant and its licensees currently use the mark QUEEN’S HARBOUR in connection with home owner’s association services, residential construction; services, real estate brokerage services, yacht club, golf club and country club services and clothing;
- Complainant is the owner of the QUEEN’S HARBOUR mark which has been in use since at least as early as 1991;
- Complainant licenses its mark to a full service real estate company: Queen’s Harbour Real Estate Company LLC;
- Complainant owns common law rights in QUEEN’S HARBOUR mark, as well as registered rights;
- The trademark QUEEN’S HARBOUR is inherently distinctive;
- Complainant’s registered trademarks all include a disclaimer of the additional wording “yacht and country club”;
- QUEEN’S HARBOUR is not a dictionary term or a known geographic location;
- Complainant is not aware of a US trademark belonging to third parties that would comprise in whole or in part the wording QUEEN’S HARBOUR;
- Complainant’s mark is incorporated in its entirety in the disputed domain names with generic real estate terms. This addition fails to distinguish the disputed domain names from Complainant’s trademark and fails to avoid confusion;
- Respondent has no right or legitimate interest in the disputed domain names;
- Respondent does not own trademark rights in the wording QUEEN’S HARBOUR or in the domain names;
- Respondent is not commonly known by the domain names at issue or by the wording QUEEN’S HARBOUR;
- Respondent uses the disputed domain names to offer and promote competing real estate services and to divert internet traffic to websites offering real estate in competition with the activities of Complainant’s licensee;
- Respondent is using the domain names for commercial gains by offering competitive services and misleading consumers and potential consumers of Complainant and its licensee;
- Respondent has registered the domain names to capitalize on the goodwill associated with the QUEEN’S HARBOUR mark. This does not correspond to a bona fide offering of goods and services;
- Respondent has registered and used the domain names in bad faith;
- The disputed domain names were registered in 2006, nearly 15 years after Complainant began commercially using its QUEEN’S HARBOUR mark in commerce and more than 2 years after the issuance of Complainant’s first federal trademark registration. Therefore, Respondent had actual or constructive knowledge of Complainant’s trademark at the time of the registration of the domain names;
- Respondent has used the domain names to attract Internet users for commercial gains to Respondent’s websites by creating a likelihood of confusion with Complainant QUEEN’S HARBOUR mark;
- The confusion would undoubtedly divert the traffic of Internet users searching for Complainant and its licensee. These users will be redirected to Respondent’s website offering competitive services. They may believe there is an affiliation between Complainant and Respondent but there is not.
B. Respondent
Respondent makes the following contentions:
- Complainant has failed to prove the disputed domain names are identical or similar to its trademark;
- The only tangential reference to any potential confusion is Complainant’s unsubstantiated and undocumented assertion that its licensee uses the mark QUEEN’S HARBOUR on a website at the <watermarkerealty.com> domain name;
- Complainant’s trademark registrations except one are posterior to the registration of the domain names in 2006;
- Complainant’s licensee was only formed in 2007;
- Before the notice of the dispute, Respondent was using the domain names for the bona fide and simple purpose of advertising real estate for sale in Queens Harbour;
- Complainant did not present any evidence that the domain names were registered in bad faith nor can it. Respondent is a licensed real estate agent selling homes in Northeast Florida, including the geographic area known as Queens Harbour;
- Respondent has not registered the domain names for the purpose of selling, renting or otherwise transferring the domain names to Complainant or for preventing Complainant’s from reflecting any mark in the domain names;
- Respondent has not registered the domain names primarily for the purpose of disrupting the business of a competitor;
- Respondent has not intentionally attempted to attract internet users to its website by creating a likelihood of confusion with Complainant’s mark.
C. Additional Submissions
Complainant makes the following contentions:
- The date at which Complainant’s licensee was formed is immaterial;
- Complainant’s trademark registrations all include a claim of use in commerce at least as early as January 1, 1991;
- QUEEN’S HARBOUR mark has in any event been previously licensed to and used by Complainant’s licensee predecessor in interest QHRE LLC, a Florida limited liability company formed in 2002 in connection with real estate services;
- Complainant provides a signed statement of the owner of Complainant asserting that the mark QUEEN’S HARBOUR has been used for real estate services from at least as early as 1988 and that the services they are offering under the QUEEN’S HARBOUR mark are in direct competition with the services offered by Respondent;
- Respondent did not provide evidence in support to her claim that Queen’s Harbour is a geographic area
- Respondent has registered and used the domain names in bad faith.
Complainant owns a registered trademark in the wording QUEEN’S HARBOUR. The mark QUEEN’S HARBOUR has been used since at least 1991.
The disputed domain names were registered in 2006.
Respondent and Complainant are both located in Jackson, Florida.
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.
Both Complainant and Respondent have evoked a judicial action brought by Complainant before the United States District Court for the Middle District of Florida in December 2009. Complainant alleges that it has filed a trademark infringement lawsuit against Respondent in the United States District Court for the Middle District of Florida, 3:09-cv-1256-J-34MCR, relating to Respondent’s use of Complainant’s QUEEN’S HARBOUR YACHT AND COUNTRY CLUB mark, including Respondent’s use of the disputed domain names and the use of Complainant’s mark on the resolving websites. Complainant asserts that this lawsuit is currently pending. Respondent agrees with Complainant’s statement concerning these other legal proceedings.
Rule 18(a) of the Administrative Policy states that:
“In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Rule 3(b)(xi) of the Administrative Policy requires the parties to a dispute to “[i]dentify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint.”
A Panel may thus find appropriate to decide the case. See eProperty Direct LLC v. Miller, FA836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover… those Orders do not touch directly on the disposition of the disputed domain names or on the parties’ intellectual property rights”); see also Western Florida Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) (deciding to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation”); see also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (choosing to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed).
Accordingly, exercising the discretion given to it under Rule 18(a), the Panel decides that it is appropriate to consider and decide the dispute.
Complainant alleges in its Complaint and Additional Submission that it has rights in the QUEEN’S HARBOUR YACHT AND COUNTRY CLUB mark by virtue of its trademark registrations with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,866,528 registered July 27, 2004;
Reg. No. 3,180,938 registered December 5, 2006; &
Reg. No. 3,569,522 registered February 3, 2009.
The Panel finds that these registrations with the USPTO conclusively establish Complainant’s rights in the QUEEN’S HARBOUR YACHT AND COUNTRY CLUB for the purposes of Policy ¶ 4(a)(i). See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).
Complainant argues that Respondent’s <queensharbourvalues.com> and <queensharbour-homes.com> domain names are confusingly similar to Complainant’s QUEEN’S HARBOUR mark. The Panel finds that Complainant’s registered trademark is QUEEN’S HARBOUR YACHT AND COUNTRY CLUB and not QUEEN’S HARBOUR. The Panel thus holds that the proper comparison for purposes of Policy ¶ 4(a)(i) should be against the QUEEN’S HARBOUR YACHT AND COUNTRY CLUB mark. However, the Panel notes all the registrations contain disclaimers of the additional wording “yacht and country club” included in the above marks, as well as a claim of use in commerce at least as early as January 1, 1991.
Complainant also argues that Respondent’s disputed domain names add either the term “values” or the term “homes” and a hyphen to Complainant’s mark, as well as attach the generic top-level domain (“gTLD”) “.com.” The Panel also finds that Respondent’s disputed domain names remove the apostrophe and the terms “yacht,” “and,” “country,” and “club” from Complainant’s mark. Past panel decisions have shown that neither adding generic terms nor deleting terms from Complainant’s mark defeat a claim of confusing similarity. See Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to the complainant’s THE BODY SHOP trademark); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark); see also Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark). Prior panel decisions have also established that neither the deletion of an apostrophe nor the addition of a hyphen and a gTLD alter the mark sufficiently to prevent a finding of confusing similarity. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Chi-Chi’s, Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to the complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark).
The Panel accordingly concludes that Respondent’s <queensharbourvalues.com> and <queensharbour-homes.com> domain names are confusingly similar to Complainant’s QUEEN’S HARBOUR YACHT AND COUNTRY CLUB mark according to Policy ¶ 4(a)(i).
Complainant must 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. 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 in its Complaint and Additional Submission that Respondent does not own any rights in QUEEN’S HARBOUR and is not commonly known by the disputed domain names. The Panel finds that the WHOIS record for the disputed domain names identifies the registrant as “christine lee.” The Panel subsequently concludes that there is no nominal association between Respondent and the disputed domain names and thus holds that Respondent is not commonly known by the disputed domain names according to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); 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).
Complainant asserts that Respondent’s <queensharbourvalues.com> and <queensharbour-homes.com> domain names resolve to websites offering real estate services competing with Complainant and its licensee. Complainant argues that this use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). In its Additional Submission, Complainant asserts that Respondent does not argue that it has rights and legitimate interests in the disputed domain names. Complainant further contends in its Additional Submission that even though Respondent alleges that the terms “Queens Harbour” refer to a geographic area, Respondent has produced no evidence in support of that claim showing that the terms are geographically descriptive and that Complainant’s mark is not inherently distinctive. The Panel agrees with Complainant. 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).”); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with the complainant, was not a bona fide offering of goods or services).
In its Complaint and Additional Submission, Complainant argues that because it had been using its mark in commerce for almost fifteen years before Respondent registered the disputed domain names, Respondent must have had actual and/or constructive knowledge of Complainant’s rights in the mark at the time of the domain name registration. The Panel notes that Respondent and Complainant are both located in Jacksonville, Florida and that Complainant has been offering real estate services through its licensee from at least as early as 1988. The Panel also notes Respondent did not deny knowledge of Complainant and its mark at the time of the registration of the domain names and the latter were thus registered in bad faith pursuant Policy ¶ 4(a)(iii) See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). See also Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) (“Although there could be an argument that a relatively small business in one relatively small city in California might not be known to somebody in the distant state of Texas, the typosquatting quality of the disputed domain names raises the inference that Complainant’s trade name was or should have been known to Respondent at the time of registration. After all, futons are not a particularly usual item of furniture and a shop featuring them in association with the given name of the proprietor is likely to be relatively uncommon.”)
Complainant asserts Respondent’s resolving websites at the <queensharbourvalues.com> and <queensharbour-homes.com> domain names offer and promote real estate services in competition with Complainant. The Panel finds that using the disputed domain names to promote Complainant’s competitors under Complainant’s mark disrupts Complainant’s business and indicates bad faith registration and use pursuant to 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 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).”).
Complainant asserts that consumers will mistakenly believe that Respondent is an authorized licensee of Complainant and its mark because of Respondent’s use of the disputed domain names. Complainant also alleges that Respondent uses Complainant’s mark and the disputed domain names in this way in order to generate commercial gain for itself through increased traffic to Respondent’s resolving websites promoting competing real estate services. The Panel therefore determines that Respondent has shown bad faith registration and use pursuant to 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); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <queensharbourvalues.com>, <queensharbour-homes.com> domain names be TRANSFERRED from Respondent to Complainant.
Nathalie Dreyfus, Panelist
Dated: December 28, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page