Springwoods Realty, Inc. v. TEXAS PROPERTY TAX APPEALS, LLC TEXAS PROPERTY TAX APPEALS, LLC
Claim Number: FA1506001624056
Complainant is Springwoods Realty, Inc. (“Complainant”), represented by Daniel J. Block, Colorado, USA. Respondent is TEXAS PROPERTY TAX APPEALS, LLC TEXAS PROPERTY TAX APPEALS, LLC (“Respondent”), represented by Don Lacy of Texas Property Tax Appeals, LLC, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <springwoodsrealty.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2015; the Forum received payment on June 11, 2015.
On June 12, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <springwoodsrealty.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 June 19, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 2015 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@springwoodsrealty.com. Also on June 19, 2015, 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 July 9, 2015.
On July 16, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant owns the SPRINGWOODS VILLAGE mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,993,643, registered Nov. 30, 2010). Complainant uses the SPRINGWOODS VILLAGE mark in connection with its land development services, including real estate development. The <springwoodsrealty.com> domain name is confusingly similar to Complainant’s SPRINGWOODS VILLAGE mark. The <springwoodsrealty.com> domain name omits the “village” portion of Complainant’s mark, inserts the word “realty,” and adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not given authorization to Respondent to use of the SPRINGWOODS VILLAGE mark. Further, Respondent’s lack of rights or legitimate interests in the <springwoodsrealty.com> domain name is made evident by Respondent’s use. Respondent uses the disputed domain name to create a false association with Complainant. Respondent tries to falsely pass off his services as those offered by Complainant.
Respondent has engaged in bad faith registration and use of the <springwoodsrealty.com> domain name. Respondent registered the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant.
Respondent’s Contentions
On December 8, 2012, Respondent registered the disputed domain name, <springwoodsrealty.com>. Respondent uses the term “Springwoods Realty” in connection with residential real estate brokerage services. The services of the respective marks are not closely related to each other and thus consumers will not likely be confused as to the source of those services. Further, the SPRINGWOODS VILLAGE mark describes a place, and the trademark owner cannot claim exclusive rights to the use of the term in its primary or descriptive sense. The term SPRINGWOODS VILLAGE is not an indicator of the source of the services identified in Complainant’s trademark registration but as a specific place or residential development.
Respondent has rights and legitimate interests in the <springwoodsrealty.com> domain name. Respondent has been commonly known by the disputed domain since it registered the disputed domain name on December 8, 2012. Respondent then obtained the dba’s for “Springwoods Realty” in both Harris County and Montgomery County. Complainant changed its name to “Springwoods Realty Inc.” on Dec. 31, 2014.
Respondent did not register the disputed domain name in bad faith. Respondent has, at no time, tried or continued to try to falsely pass itself off as Complainant or make any attempt to deceive prospective clients of Respondent’s business as to the source of Respondent’s services.
(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 rights or legitimate interests in respect of the domain name; and
(3) the domain name has not been registered and is not being 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.
Complainant owns the SPRINGWOODS VILLAGE mark through its registration with the United States Patent and trademark Office (“USPTO”) (Reg. No. 3,993,643, registered Nov. 30, 2010). Complainant uses the SPRINGWOODS VILLAGE mark in connection with its land development services, including real estate development. Registration of a mark with a governmental trademark authority (such as the USPTO) is sufficient to establish rights in the mark pursuant to Policy ¶4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶4(a)(i).”). Complainant has rights under Policy ¶4(a)(i).
Complainant claims the <springwoodsrealty.com> domain name is confusingly similar to Complainant’s SPRINGWOODS VILLAGE mark. The <springwoodsrealty.com> domain name omits the “village” portion of Complainant’s mark, inserts the generic word “realty,” and adds the gTLD “.com” to the disputed domain name. Omitting one portion of a complainant’s mark and inserting another word still leaves the resulting domain name confusingly similar. See 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); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶4(a)(i)). The gTLD must be disregarded when determining if there is a confusing similarity under Policy ¶4(a)(i) because gTLDs are required by domain name syntax. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). The disputed domain name is confusingly similar to the SPRINGWOODS VILLAGE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent appears to have rights and legitimate interests in the <springwoodsrealty.com> domain name. Respondent (or at least one of its affiliates) has been commonly known by the disputed domain since it registered the disputed domain name on December 8, 2012 (admittedly after Complainant obtained its USPTO registration). Respondent obtained fictitious name registrations for “Springwoods Realty” in both Harris County and Montgomery County, Texas. Two years later, Complainant changed its name to “Springwoods Realty Inc.” from “Springwoods Village Company of New York” on Dec. 31, 2014. Prior panels have found legitimate rights and interests where a respondent operated a business under the disputed domain name and had become commonly known by that name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that as the respondent had registered its domain name as its business identity with the New York County Clerk a month after registering the domain name and then conducted his prop rental business under that name, it had demonstrated rights and legitimate interests in the domain name). Respondent has rights and legitimate interests in the <springwoodsrealty.com> domain name for purposes of Policy ¶4(a)(ii).
This Panel must admit it is troubled by Respondent’s registration of its domain name using a privacy service. The Panel is also troubled that Respondent seems to treat itself as the alter ego of Don Lacy. This might be explained by the fact Respondent is pro se (although Respondent has been represented by counsel in the past). However, Don Lacy has clearly associated himself with the disputed domain name by listing his contact information on the web site. He lists his broker’s license and the real estate courses he has taken (presumably for Texas required continuing education). This overcomes the presumption Respondent acquires no rights to a domain name when it registers it with a privacy service in a commercial context.
The Panel finds Policy ¶4(a)(ii) NOT satisfied.
At the onset, the Panel notes this particular dispute is not well suited to resolution by the “documents only” UDRP procedure. This seems to be an unfair competition case between the parties, which is better suited to resolution by live testimony before a judge. The facts do not appear well settled. Indeed, some of them appear very hotly contested.
Nevertheless, this Panel finds Complainant has failed to meet the burden of proof of bad faith registration and use under Policy ¶4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Since Respondent has rights or legitimate interests in the <springwoodsrealty.com> domain name pursuant to Policy ¶4(a)(ii), Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has not registered or used the <springwoodsrealty.com> domain name in bad faith because Respondent has not violated any of the factors listed in Policy ¶4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶4(a)(iii)).
Respondent claims it did not register the disputed domain name in bad faith. Contrary to Complainant’s assertion, Respondent has not tried to falsely pass itself off as Complainant or make any attempt to deceive prospective clients of Respondent’s business as to the source of Respondent’s services. Previous panels have refused to transfer domain names where the respondent does not participate in bad faith activities, and where the respondent operates a legitimate business under the disputed domain name. See Mule Lighting, Inc. v. CPA, FA 95558 (Nat. Arb. Forum Oct. 17, 2000) (finding no bad faith where the respondent has an active website that has been in use for two years and where there was no intent to cause confusion with the complainant’s website and business); see also DJF Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000) (finding the respondent has shown that it has a legitimate interest in the domain name because the respondent selected the name in good faith for its website, and was offering services under the domain name prior to the initiation of the dispute). Respondent has not engaged in bad faith under Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) NOT satisfied.
Having not established all three elements required under the ICANN Policy, the Panel concludes relief shall be DENIED.
Accordingly, it is Ordered the <springwoodsrealty.com> domain name REMAIN WITH Respondent.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, July 16, 2015
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