Windermere Real Estate Services Co. v Christina Butler
Claim Number: FA1503001608871
Complainant is Windermere Real Estate Services Co. (“Complainant”), represented by Paul S. Drayna, Washington, USA. Respondent is Christina Butler (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windermerehawaii.com>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 10, 2015; the Forum received payment on March 10, 2015.
On March 10, 2015, GoDaddy.com, LLC confirmed by email to the Forum that the <windermerehawaii.com> domain name is 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 March 12, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2015 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@windermerehawaii.com. Also on March 12, 2015, 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 April 1, 2015.
Complainant submitted a timely Additional Submission, which was received on April 6, 2015.
Respondent submitted a timely Additional Submission, which was received on April 13, 2015.
On April 14, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is the franchisor entity for Windermere Real Estate. Complainant owns a U.S. trademark registration for WINDERMERE, issued in 1997 and reflecting a first use date of 1973. Complainant’s franchisees operate approximately 300 Windermere Real Estate offices in ten states, including Hawaii.
Respondent registered the disputed domain name <windermerehawaii.com> in 2004. Complainant contends that the domain name is identical or confusingly similar to its WINDERMERE mark.
The disputed domain name is currently parked at GoDaddy.com. Complainant states that Respondent has indicated in correspondence that she has no specific plans for the use of the domain name. Complainant notes that Respondent is a licensed real estate broker in both Washington and Hawaii, and that the address used by Respondent on the domain name registration is in a suburb of Seattle, Washington. Complainant states that at the time Respondent registered the domain name in 2004, Complainant was the leading residential real estate company in the Seattle metropolitan area. Complainant alleges that Respondent must have been aware of Complainant or its online presence at that time, and accuses Respondent of having registered the domain name for the sole purpose of preventing Complainant from using its trademark in connection with its business in Hawaii. Complainant states that Respondent is currently the principal broker of a real estate firm in Hawaii, and therefore competes directly with Complainant’s franchisees in Hawaii. Complainant contends, based upon these allegations, that Respondent has no rights or legitimate interests in the domain name and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent denies that she has infringed upon Complainant’s trademark, and states that she has never intended to sell or profit from the disputed domain name. She accuses Complainant of having “harassed” her by sending three email messages regarding the domain name on March 4, 2015.
Respondent notes that the words “windermere” and “hawaii" have many different meanings and are not used exclusively by Complainant. She claims that she registered the domain name in 2004 with the sole intention of using it for a website for a farm that she purchased later that year. She states that she never intended to use the domain name in a commercial business involving real estate. She characterizes as “merely a coincidence” the fact that she operates real estate companies in Washington and Hawaii.
C. Additional Submissions
Complainant’s Additional Submission states, inter alia, that Respondent formed three entities in Hawaii in late 2004 that included the word “Windermere” in their name, including “Windermere Real Estate Hawaii, Inc.” Complainant sent a cease and desist letter to Respondent in 2005; shortly thereafter, Respondent abandoned the three entities, and they were administratively dissolved in 2008.
Respondent’s Additional Submission reiterates the allegations contained in her Response, including her position that “windermere” is not used exclusively by Complainant, and her claim that her intentions for the disputed domain name have nothing to do with any real estate business.
Paragraph 12 of the Rules confers upon the Panel the sole discretion to decide whether to receive supplemental material from the parties. The Panel considers it unnecessary to refer to the parties’ additional submissions in this case.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and has been used in bad faith.
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.
The disputed domain name corresponds to Complainant’s WINDERMERE mark, with the geographic term “Hawaii” and top-level domain “.com” appended. These alterations do not diminish the similarity between the domain name and Complainant’s mark. See, e.g., Farmers Group, Inc. v. Sunshine Hawaii, FA 1288085 (Nat. Arb. Forum Nov. 17, 2009) (finding <farmershawaii.com> confusingly similar to FARMERS); Dell Computer Corp. v. MTO C.A. & Diabetes Education Long Life, D2002-0363 (WIPO July 5, 2002) (finding <dellhawaii.com> confusingly similar to DELL). The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant’s mark without authorization, and Respondent is a direct competitor of Complainant’s franchisees. Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name. The Panel does not consider Respondent’s claims regarding her intended use of the domain name to be credible, and in any event Respondent has failed to come forward with any concrete evidence of rights or interests in the domain name. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor.”
The Panel is persuaded that Respondent registered the domain name with the intention of disrupting Complainant’s business, and has maintained the registration since that time in order to prevent Complainant from using the name in connection with its business in Hawaii. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windermerehawaii.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 15, 2015
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