Ridgegate Investments, Inc. v. Cody McCarthy / Keller Williams Real Estate LLC
Claim Number: FA1704001727947
Complainant is Ridgegate Investments, Inc. (“Complainant”), represented by Daniel J. Block of Robinson Waters & O’Dorisio, P.C., Colorado, U.S.A. Respondent is Cody McCarthy / Keller Williams Real Estate LLC (“Respondent”), Colorado, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ridgegatecoliving.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2017; the Forum received payment on April 20, 2017.
On April 21, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ridgegatecoliving.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 April 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 2017 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@ridgegatecoliving.com. Also on April 25, 2017, 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 May 25, 2017, 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
Complainant is a developer of residential and commercial communities and has rights in the RIDGEGATE mark through registering that mark with a Colorado state trademark registration on November 9, 2001. Complainant has not authorized Respondent to use its mark. Respondent has incorporated the RIDGEGATE mark into the disputed domain name and added “co” and “living” to the mark. Complainant believes that “co” refers to Colorado, the abbreviation for the State in which Complainant has its Ridgegate development, and that “living” refers to homes available for sale in the “Ridgegate” property development, making <ridgegatecoliving.com> confusingly similar to the RIDGEGATE mark.
Respondent has no rights or legitimate interests in <ridgegatecoliving.com>. “Ridgegate” identifies a real property development owned by Complainant and, as far as Complainant knows, “Ridgegate” was not in use in the area surrounding Complainant’s development for any real property, geographical area, or as the mark of a business. Respondent chose the name “Ridgegate” as part of its Internet domain name with the intention of using that domain name for a website in order to create a false association between himself and Complainant because Respondent is a residential real estate agent engaged in real estate sales and brokerage services.
Respondent registered the domain name in bad faith because Respondent registered the domain name for the purpose of attracting, for commercial gain, Internet users to his website by creating a likelihood of confusion of his company with Complainant, by creating a false association with Complainant, or by creating the deceptive impression that Complainant endorses or is affiliated with his services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
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(f), 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 (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 question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the mark RIDGEGATE based upon its registration of the mark with the Colorado Secretary of State. The Panel finds that Complainant has registered the RIDGEGATE mark with the Colorado Secretary of State. See Compl. at attached Annex 1 (ID number: 2001 1215899, registered November 9, 2001). The Panel also finds that the registration of a mark with a State authority is sufficient to establish rights in the mark. The W.J. Baker Company v. c/o BAKERTUBULAR.COM, FA 1481278 (Forum Feb. 26, 2013) (finding that Complainant’s registration of the BAKER TUBULAR METAL PRODUCTS mark through its registration with the Kentucky Secretary of State was sufficient to establish rights in the mark).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RIDGEGATE mark. Complainant submits that Respondent’s <ridgegatecoliving.com> domain name is confusingly similar to Complainant’s RIDGEGATE mark. Complainant submits that “co” in the disputed domain name refers to Colorado and that “living” refers to the sale of homes in Complainant’s development. The Panel finds that neither the addition of the geographic description “co”, nor the descriptive term “living”, nor a generic top-level domain (“gTLD”) are sufficient to eliminate confusing similarity with a trademark which is otherwise present as it is in this case.Trip Network Inc. v. Alviera, FA 914943 (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)); Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with the complainant’s business).
The Panel also finds that Complainant has a website for a real estate development in Lone Tree, Colorado. See Compl. at attached Annex 2. The Panel also finds that the WHOIS information for the disputed domain name lists “Keller Williams Real Estate, LLC.”, as the Registrant Organization. As the Panel finds that “co” in the disputed domain name refers to Colorado, and that “living” refers to the sale of homes in a real state development, then the Panel finds that the disputed domain name is confusingly similar to the RIDGEGATE trademark, since the addition of “co”, “living”, and a general top-level domain (“gTLD”) to the mark are not sufficient to eliminate confusing similarity.
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 (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 (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 RIDGEGATE mark and to use it in its domain name adding the terms “co” and “living” which imply that the domain name refers to Complainant’s Ridgegate residential development and the sale of properties in that development;
(b) Respondent registered the domain name on December 15, 2016;
(c) The domain name resolves to a webpage displaying pay-per-click links to websites in direct competition with Complainant and to goods and services unrelated to Complainant;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e)Complainant contends that Respondent is not commonly known by the disputed domain name nor has the Complainant authorized Respondent to use the RIDGEGATE mark. The Panel has examined the WHOIS information to determine whether Respondent is commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record lists “Cody McCarthy” as the registrant and the Panel finds that “Cody McCarthy” is not commonly known by the disputed domain name. Furthermore, lack of evidence in the record showing that Respondent was authorized to use the RIDGEGATE mark further supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the disputed domain name;
(f)Complainant argues that Respondent is not using the disputed domain
name for a bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent is attempting to create a false association between himself and Complainant and thereby divert Internet users to Respondent’s website for commercial gain. An attempt to divert Internet users by using a domain name incorporating a mark in which Complainant has rights, to a website for the purpose of commercial gain, especially when use of the mark was unauthorized, supports a finding that Respondent has no rights or legitimate interests in the disputed domain name. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel again notes that the WHOIS information indicates that the registrant organization is a real estate agency in Colorado and that the RIDGEGATE mark is the name of Complainant’s real estate development located in Lone Tree Colorado (see Compl. at Attached Annex 2), The Panel therefore finds that Respondent was attempting to divert Internet users by creating a false association between Complainant and Respondent. The Panel accepts Complainant’s certified submission relating to Respondent’s use of the domain name. The Panel therefore finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate non-commercial fair use.
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 does not have a right or legitimate interest 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, Complainant submits that Respondent has registered the disputed domain name in bad faith because Respondent has registered it in order to divert Internet users to Respondent’s website for commercial gain. As the Panel finds that Respondent is attempting to divert Internet users with the disputed domain name for the purpose of commercial gain, the Panel finds Respondent registered the disputed domain name in bad faith. Kmart v. Khan, FA 127708 (Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Secondly, the Panel finds that the WHOIS registration indicates that the registrant organization is “Keller Williams Real Estate, LLC.”, and that the organization is located in Colorado. The Panel also finds that the RIDGEGATE mark is the name of Complainant’s real estate development in Colorado. See Compl. at attached Annex 2. As the Panel finds that Respondent is using the disputed domain name to divert Internet users interested in purchasing real estate by associating itself with Complainant’s “Ridgegate” real estate development, the Panel also finds that Respondent registered the disputed domain name in bad faith. The Panel infers from the same evidence that Respondent is attempting to create a false association between Respondent and Complainant and therefore finds that Respondent is trying to pass itself off as Complainant. Under these circumstances, the Panel finds that Respondent registered the disputed domain name in bad faith. Cf. Gilmour v. Cenicolla, D2000-1459 (WIPO Dec. 15, 2000) (finding bad faith registration of the <davidgilmour.com> domain name where the respondent knew of the complainant’s fame long before the registration of the domain name and registered the name in order to “trade off that reputation by creating a false association between that domain name and the Complainant’s trademark”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel
finds that, in view of Respondent’s registration of the disputed domain name using the RIDGEGATE mark and in view of the conduct that Respondent has
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 <ridgegatecoliving.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: May 26, 2017
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