DCS Real Estate Investments, LLC v. Terry McDonough / Truth Matters LLC
Claim Number: FA1511001649112
Complainant is DCS Real Estate Investments, LLC (“Complainant”), represented by Joseph Englander of Shutts & Bowen LLP, Florida, USA. Respondent is Terry McDonough / Truth Matters LLC (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bellacollinaorlando.org>, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 20, 2015; the Forum received payment on November 20, 2015.
On November 23, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <bellacollinaorlando.org> 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 November 24, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 14, 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@bellacollinaorlando.org. Also on November 24, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
1. Policy ¶ 4(a)(i)
Complainant has rights in the BELLA COLLINA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,936,715, registered on March 29, 2005). Respondent’s <bellacollinaorlando.org> domain name is confusingly similar to the BELLA COLLINA mark because it contains the mark, without the space between words, along with the geographic term “orlando” and the generic top-level domain (“gTLD”) “.org.”
2. Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <bellacollinaorlando.org> domain name because there is no evidence of Respondent being so known. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to host information that is defamatory to Complainant.
3. Policy ¶ 4(a)(iii)
Respondent registered and uses the <bellacollinaorlando.org> domain name in bad faith because the resolving website is used to host information that is defamatory to Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company enagaged in the development of a residential and golf club development near Orlando, Florida, USA.
2. Complainant has rights in the BELLA COLLINA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,936,715, registered on March 29, 2005).
3. The <bellacollinaorlando.org> domain name was created on November 11, 2015.
4. The resolving website is used to host information that is allegedly defamatory of Complainant.
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.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims it has rights in the BELLA COLLINA mark through its registration with the USPTO (Reg. No. 2,936,715, registered on March 29, 2005). Complainant has provided this registration in Annex 2. Accordingly, the Panel finds that Complainant has rights in the BELLA COLLINA mark under Policy ¶ 4(a)(i). See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (holding that the complainant’s trademark registrations with the USPTO had established rights in the BLOOMBERG mark).
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s BELLA COLLINA mark. Complainant argues that Respondent’s <bellacollinaorlando.org> domain name is confusingly similar to Complainant’s BELLA COLLINA mark because it contains the mark, without the space between words, along with the term “orlando” and the “gTLD “.org.” Complainant urges that the term “orlando” increases the likelihood of confusion between the mark and domain because it is a geographic term referring to Orlando, Florida, the area in which Complainant operates its business. As the Panel agrees that “orlando” is geographic and as the objective bystander would assume that the domain name and the website to which it resolves would be an official domain name and website of Complainant dealing with Complainant’s real estate development in Orlando, Florida, it finds that Respondent’s <bellacollinaorlando.org> domain name is confusingly similar to Complainant’s BELLA COLLINA mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s BELLA COLLINA mark and to use it in its domain name adding only the geographic indicator “orlando”, giving the false impression that the domain name and the website to which it resolves would be an official domain name and website of Complainant dealing with Complainant’s real estate development in Orlando, Florida;
(b) Respondent registered the disputed domain name on November 11, 2015;
(c) Respondent has used the disputed domain name to host information that is allegedly defamatory of Complainant;
(d) Complainant contends that Respondent is not commonly known by the <bellacollinaorlando.org> domain name because there is no evidence of Respondent being so known. The Panel notes that the WHOIS information lists “Terry McDonough” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain name. Therefore, the Panel finds that Respondent is not commonly known by the <bellacollinaorlando.org> domain name under Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”);
(e) Complainant alleges that Respondent fails to use the <bellacollinaorlando.org> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving website is used to host information that is defamatory to Complainant. Complainant has provided a screenshot of the website, in Annex 6, which includes links to purported former business dealings and alleged criminal behavior of the President and Vice President of Complainant’s company. Complainant urges that this use of the <bellacollinaorlando.org> domain name is not protected by the Policy on the ground of free speech, because while free speech is protected in the content of a website, such protections do not extend to the domain name itself. As the Panel agrees with Complainant’s argument, the Panel finds that Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Eastman Chem. Co. v. Patel, FA 524752 (Nat. Arb. Forum Sept. 7, 2005) (“the domain name <eastman-chemical.com> is not protected by free speech although the content of the website supported by this domain name is protected. Free speech cannot be used as a defence against the use of a confusingly similar mark as a domain name.”).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, while Complainant does not make any arguments with respect to Respondent’s bad faith that are specifically enumerated under Policy ¶ 4(b), the criteria set out in the Policy have been found to be non-exclusive and illustrative of bad faith. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).
Secondly, Complainant contends that Respondent registered and uses the <bellacollinaorlando.org> domain name in bad faith because the resolving website is used to host information that is allegedly defamatory to Complainant. Complainant has provided a screenshot of the website, in Annex 6, which includes links to purported former business dealings and alleged criminal behavior of the President and Vice President of Complainant’s company. Complainant urges that this use of the <bellacollinaorlando.org> domain name is not protected by the Policy, because while free speech is protected in the content of a website, such protections do not extend to the domain name itself. As the Panel finds this argument correct and supported by several UDRP decisions, it finds that Respondent registered and used the <bellacollinaorlando.org> domain name in bad faith under Policy ¶ 4(a)(iii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although the respondent’s complaint website did not compete with the complainant or earn commercial gain, the respondent’s appropriation of the complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith); see also Jenner & Block LLC v. Defaultdata.com, FA 117310 (Nat. Arb. Forum Sept. 27, 2002) (“Respondent’s argument that there is an inherent conflict between the Internet and the Constitutional right to free speech at the address to a business sounds impressive but is no more correct that than the argument that there is a Constitutional right to intercept telephone calls to a business in order to speak to customers. Respondent’s conduct is not the equivalent of exercising the right of free speech outside Complainant’s business street address but of impermissibly blocking traffic to that street address.”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <bellacollinaorlando.org> domain name using the BELLA COLLINA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bellacollinaorlando.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: December 24, 2015
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