National Arbitration Forum

 

DECISION

 

TB Proprietary Corp. c/o Toll Brothers, Inc. v Village at La Quinta Realtors

Claim Number: FA0502000416462

 

PARTIES

Complainant is TB Proprietary Corp. c/o Toll Brothers, Inc. (“Complainant”), represented by Robert F. Zielinski, of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097.  Respondent is Village at La Quinta Realtors (“Respondent”), represented by Stephen L. Anderson, of Anderson & Associates, 27349 Jefferson Avenue, Suite 211, Temecula, CA 92590.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <mountainviewcountryclub.com>, registered with Go Daddy Software, Inc.

 

PANEL

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.

 

Barry Schreiber as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2005; the National Arbitration Forum received a hard copy of the Complaint on February 7, 2005.

 

On February 4, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <mountainviewcountryclub.com> is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On February 14, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 7, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@mountainviewcountryclub.com by e-mail.

 

A timely Response was received and determined to be complete on March 7, 2005.

 

On March 14, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Barry Schreiber as Panelist.

 

On March 11, 2005, Complainant submitted “Complainant’s Reply in Support of     Complaint.”

 

On March 19, 2005, Respondent submitted “Respondent’s Reply to Complainant’s Additional Submission.”

 

On March 21, 2005, Complainant electronically submitted to the NAF, who in turn sent it to the Panelist, “Complainant’s Sur-Reply in Support of Complaint,” plus two attachments.  As this submission was received after the deadline for submissions, the Panelist did not consider this submission to be in compliance with Supplemental Rule #7 and therefore did not include this submission as part of the record of the case and did not consider this submission in deliberating the decision in this case.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.     Complainant

 

            Complainant is the owner of the MOUNTAIN VIEW COUNTRY CLUB mark and is the owner of U.S. Trademark Registration 2,868,994 for MOUNTAIN VIEW COUNTRY CLUB, used in connection with “land development services, namely, planning and laying out of residential communities” in International Class 37 and “residential and community golf courses,” in International Class 41.  Attached as Exhibit A is a copy of the trademark registration certificate for Complainant’s trademark.

FACTUAL AND LEGAL GROUNDS

This Complaint is based on the following factual and legal grounds, ICANN Rule 3(b)(ix): 

MOUNTAIN VIEW COUNTRY CLUB is a 370-acre luxury golf community comprising four neighborhoods of luxury homes and an 18-hole champion golf course designed by Hall of Fame professional golfer and renowned course-designer, Arnold Palmer.  On March 20, 2002, Complainant signed a land development contract for site-work at the “Mountain View Country Club” location.  Shortly thereafter, Complainant began to actively promote the MOUNTAIN VIEW COUNTRY CLUB mark in connection with the construction of its luxury golf community. 

 

In addition to owning the MOUNTAIN VIEW COUNTRY CLUB mark and the U.S. registration for the mark, Complainant has registered the domain names <mountainviewcountryclub.biz> (registered January 29, 2004) and <mountainviewcountryclub.org> (registered January 29, 2004), which incorporate the MOUNTAIN VIEW COUNTRY CLUB mark in its entirety.  Attached as Exhibit B are copies of WHOIS records for the domain names owned by Complainant.  Further, Complainant owns and operates a website promoting the MOUNTAIN VIEW COUNTRY CLUB mark located at <mountainviewatlaquinta.com>.  Attached as Exhibit C are web pages from the website of Complainant at this domain name and the WHOIS record for this domain name. 

 

Complainant and its affiliated companies, including Toll Brothers Inc., have spent considerable time and money in building up goodwill and strengthening the MOUNTAIN VIEW COUNTRY CLUB mark.  In the past two years, Complainant and its affiliates have spent roughly $2,783,000.00 in advertising and marketing expenses relating to its goods and services and the MOUNTAIN VIEW COUNTRY CLUB mark.  Moreover, Complainant and its affiliates have spent considerable time and substantial expense in developing the luxury golf community associated with the MOUNTAIN VIEW COUNTRY CLUB mark.  For example, as part of its efforts to develop the “Mountain View Country Club” community, Complainant acquired the services of Arnold Palmer, a Hall of Fame professional golfer and renowned golf course designer, to create a 18-hole champion course within the 370-acre community.

 

As a result of Complainant’s consistent use of the MOUNTAIN VIEW COUNTRY CLUB mark in connection with land development services and residential and community golf courses since it first acquired the 370-acre property in the spring of 2002, the expenditure of considerable time, resources and effort, and as a result of the quality of its services, the MOUNTAIN VIEW COUNTRY CLUB mark has become well known and represents substantial goodwill of Complainant.

 

Respondent registered the <mountainviewcountryclub.com> domain name on March 14, 2002.  Respondent’s website is accessible through the domain name and promotes real estate brokerage services.  When a user types in the <mountainviewcountryclub.com> domain name, the user is redirected to a website located at the <villageatlaquintarealtors.com> domain name  This domain name displays the website of Bonni Ison, an individual, and Village At La Quinta Realtors.  Attached hereto as Exhibit D and Exhibit E are copies of the “Whois” record for the <mountainviewcountryclub.com> domain name and web pages from the website associated with the domain name, respectively.

 

Respondent likely knew of the intended name for Complainant’s new luxury community when it registered the domain name on March 14, 2002.  As stated previously, at least as early of spring 2002, Complainant publicly announced its plans to develop its MOUNTAIN VIEW COUNTRY CLUB luxury golf community.  Accordingly, consumers who might inquire about the possibility of purchasing a home or residence, or gaining more information about the residences and golf community associated with MOUNTAIN VIEW COUNTRY CLUB, by typing in the <mountainviewcountryclub.com> domain name would instead get redirected to Respondent’s real estate website located at <villageatlaquintarealtors.com>. 

 

1.            Respondent’s Domain Name is Substantially Identical or Confusingly Similar to

Complainant’s Trademark.

The distinguishing portion of the domain name, “mountain view country club,” is identical to the MOUNTAIN VIEW COUNTRY CLUB mark and federal trademark registration owned by Complainant.  The only difference between the distinguishing portions of the Domain Name and Complainant’s MOUNTAIN VIEW COUNTRY CLUB mark is the spacing between the words “mountain,” “view,” “country” and “club.”  Such spacing, however, is immaterial in determining if the Domain Name is confusingly similar to Complainant’s mark.  See Cent. Pac. Bank v. ansony, FA0 99379 (Nat. Arb. Forum Oct. 15, 2001) (“The Panel does not consider the ‘.com’ term, spacing or capitalization when addressing the similarities between domain names and mark contained within them”).  Therefore, the first prong of the UDRP test is established.

 

2.            Respondent Does Not Have Any Rights or Legitimate Interests in the Domain Name.

Respondent has no legitimate interest in using “mountain view country club.”  Respondent is not affiliated with Complainant, its affiliates, or any other business concern claiming any interest in the term “mountain view country club.”  Furthermore, Respondent is not commonly known by the domain name, but rather by the name Bonni Ison or Village At La Quinta Realtors, as those names appear on the website associated with the domain name.  See Disney Enters., Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not known as “Disney Vacation Villas” at any time prior to its registration of <disneyvacationvillas.com> and, thus, had no rights or legitimate interests in the domain name); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest is immediately apparent to the Panel and respondent has not come forward to suggest any right or interest it may possess).

 

As stated previously, the domain name and Complainant’s MOUNTAIN VIEW COUNTRY CLUB mark are identical.  Such similarity and likelihood of confusion is also evidence of Respondent’s lack of legitimate interest in the Domain Name.  See Nasdaq Stock Market, Inc. v. Global Am., D2002-0002 (WIPO May 14, 2002) (intent of ICANN policy is to preclude registration and use of a domain name that contains the trademark of another in an attempt to mislead internet users into believing there is an association with the true trademark owner); Evans v. Marinex Multimedia Corp., FA 94347 (Nat. Arb. Forum Apr. 27, 2000) (that the domain name was so similar as to create a likelihood of confusion was evidence of the respondent’s lack of legitimate interest therein); Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to the complainant’s mark and that the respondent’s use of the domain names to market its goods was illegitimate and not a bona fide offering of goods).

 

Respondent’s website located at the domain name appears to broker the sale and purchase of residential properties located in Complainant’s “Mountain View Country Club” community as well as in communities developed by Complainant’s competitors.  Although, this in some small way may benefit Complainant, Respondent is (1) deceptively diverting customers who may already be looking for Complainant’s website and more information about Complainant’s golf community and (2) doing so for Respondent’s own financial gain. 

 

It is clear that Respondent has chosen the Domain Name to attract Internet users to Respondent’s website by creating a likelihood of confusion as to source, sponsorship, affiliation, or endorsement of Complainant’s golf community and website.  Respondent is intentionally redirecting Internet users to Respondent’s website for its own commercial gain, which is not a legitimate noncommercial or fair use of the domain name.  See Tr. of the Trust No. SR-1 v. Klopp, FA 187430 (Nat. Arb. Forum Oct. 8, 2003) (finding that the respondent’s use of a confusingly similar domain name to redirect Internet traffic to the respondent’s website, for the purpose of offering condominiums at the complainant’s development for resale, does not constitute a bona fide offering of goods or services pursuant to ICANN policy or a legitimate noncommercial or fair use); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of the respondent and that the respondent would only legitimately choose to use the complainant’s mark in a domain name if the respondent was seeking to create an impression that the two businesses were affiliated).  The fact that Complainant’s “Mountain View Country Club” luxury golf community and Respondent’s real estate firm are both located in La Quinta, California, adds considerably to the likelihood of confusion as to source, sponsorship, affiliation or endorsement.  Internet users who type in the Domain Name looking for information on Complainant’s community and, instead, are redirected to Respondent’s website may mistakenly believe that Respondent’s real estate firm is the only way to purchase homes in the “Mountain View Country Club” community or that Respondent is somehow affiliated with the community.  The second prong of the UDRP test is, therefore, established.

 

3.         The Domain Name Was Registered and Used in Bad Faith.

Respondent has chosen <mountainviewcountryclub.com> as a domain name in bad faith.  Respondent is using the Domain Name to divert Internet users to Respondent’s website where residential properties located at the “Mountain View Country Club” golf community, as well as properties located at competing communities, may be marketed and displayed for sale.  Furthermore, Respondent appears to be a real estate broker located in La Quinta, California, which is in the same area as Complainant’s “Mountain View Country Club” golf community.  Accordingly, this intentional attempt to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion as to the source, sponsorship or affiliation of the Complainant’s luxury golf community and website evidences bad faith. 

 

Bad faith is evidenced by registration and use of a domain name similar to Complainant’s trademark for the purpose of diverting Internet customers who seek Complainant’s goods and services.  See Tr. of the Trust No. SR-1 v. Klopp, FA 187430 (Nat. Arb. Forum Oct. 8, 2003) (finding bad faith where the respondent used confusingly similar domain names to divert Internet users to the respondent’s website where property at the complainant’s development was offered for sale); see also G.D. Searle & Co. v. Celebrex Drugstore, FA123933 (Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). 

 

Respondent is trading off the value and goodwill of the MOUNTAIN VIEW COUNTRY CLUB mark owned by Complainant and, thus, registration and use of the Domain Name by Respondent is in bad faith.  Internet users looking for homes built by and located at the “Mountain View Country Club” community of Complainant would most likely type in a domain name incorporating Complainant’s mark (e.g., <mountainviewcountryclub.com>) hoping to access Complainant’s website.  Instead, such users would be redirected to Respondent’s website located at <villageatlaquintarealtors.com> where Respondent, as a real estate broker, markets and sells homes (including those of Complainant’s competitors). 

 

Respondent derives economic benefit from such conduct, specifically, in the form of commissions from sales of residential properties displayed on Respondent’s website.  More importantly, use of Complainant’s MOUNTAIN VIEW COUNTRY CLUB mark is in the geographic area encompassing the area in which Respondent conducts its real estate brokerage services.  Accordingly, such registration and use of the domain name is in bad faith. See N. Shore Tower Apartments, Inc. v. Kroll, FA 109030 (Nat. Arb. Forum July 2, 2002) (finding bad faith where (1) Complainant had established common law trademark rights in connection with cooperative living and building maintenance services in a geographic area at least encompassing the area in which Respondent conducted its real estate services and (2) Respondent’s registration of confusingly similar domain names was simply an attempt to mislead members of the public interested in the Complainant to Respondent’s website); see also MBNA America Bank, N.A. v. xcsquare@hotmail.com 225225225, FA 133635 (Nat. Arb. Forum Jan. 7, 2003) (finding that Respondent’s diversion of Internet customers, done for financial gain, qualifies as bad faith use and registration of a domain name).

 

Respondent is not affiliated with Complainant, its affiliates, or any other business concern claiming any interest in the term “mountain view country club.”  Respondent regularly deals in residential properties and communities as a real estate broker and clearly knows about Complainant’s community.  Furthermore, both Respondent’s real estate brokerage firm and the “Mountain View Country Club” golf community are located in La Quinta, California, which further evidences Respondent’s knowledge of Complainant’s rights in the MOUNTAIN VIEW COUNTRY CLUB mark.

 

Respondent’s actions are therefore an obvious attempt, for financial gain, to attract Internet users who intended to visit Complainant’s website or seek information about Complainant’s “Mountain View Country Club” golf community and divert such users to Respondent’s website.  See Tr. of the Trust No. SR-1 v. Klopp, FA 187430 (Nat. Arb. Forum Oct. 8, 2003) (“[B]ased on Respondent’s registration and use of the disputed domain names, which incorporate Complainant’s mark, to sell condominiums located at Complainant’s development, the Panel infers Respondent’s actual knowledge of Complainant’s rights in the mark”); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the connection between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”).  Accordingly, such knowledge of Complainant’s superior rights in the MOUNTAIN VIEW COUNTRY CLUB mark prior to Respondent’s registration of the domain name further evidences bad faith.

 

For all these reasons, it is clear that the domain name was registered in bad faith and that the third prong of the UDRP test is established.

 

REMEDY SOUGHT

Complainant requests that the Panel issue a decision that the registration of the domain name be transferred to Complainant.  ICANN Rule 3(b)(x); ICANN Policy ¶ 4(i).

 

B. Respondent

 

FACTUAL NARRATIVE

 

On March 14, 2002, without any knowledge of Complainant, and without any knowledge of any party ever having used or otherwise asserted any right to the name MOUNTAIN VIEW COUNTRY CLUB, Respondent registered the <mountainviewcountryclub.com> domain name which it has used since such time as a redirect page to its primary website: <villageatlaquintarealtors.com>.

 

Eighteen months after Respondent had registered the <mountainviewcountryclub.com> domain name, on August 11, 2003, Complainant filed with the United States Patent and Trademark its application for the MOUNTAIN VIEW COUNTRY CLUB service mark in International class 37 for "land development services, namely, planning and laying out of residential communities" and in class 41 for "residential and community golf courses," claiming a date of first use as October “0” 2002 as for each.  Two years and five months after Respondent’s registration of the domain name in question, on August 3, 2004, Complainant’s service mark was ultimately registered. [See: Complainant’s Exhibit “A” -  Registration No. 2,868,994]. 

 

As is undisputedly shown by Complainant’s own evidence, at the time when Respondent registered the <mountainviewcountryclub.com> domain name, Complainant did not have any trademark rights in the MOUNTAIN VIEW COUNTRY CLUB mark and had not made any use of such mark, constructive, nor actual, had no common law rights to such name and had not even, by its own admission, ever evinced any intent to use such mark.[1]

 

To the contrary, in its cited United States service mark application for MOUNTAIN VIEW COUNTRY CLUB, filed on August 11, 2003, Complainant claimed a first use date of October 0, 2002.  As such, Complainant cannot properly assert any “bad faith” on the part of Respondent herein.

 

Since registering the <mountainviewcountryclub.com> domain name, Respondent has used such "parked" domain name, only to redirect to its active website at <villageatlaquintarealtors.com>, which is also owned and maintained by Respondent.  Notably, Respondent’s website at <villageatlaquintarealtors.com>, a printout of which was attached as Exhibit “E” to the Complaint, contains no reference to MOUNTAIN VIEW COUNTRY CLUB, in the text, graphics metatags, and other online content, whatsoever.  

 

Further, since registering <mountainviewcountryclub.com> three years back on March 14, 2002, Respondent has never knowingly solicited nor received any commercial advantage by using the <mountainviewcountryclub.com> domain name; has never intended to sell, nor offered such domain name for sale or rent to any third party; has never represented any buyer or seller with respect to any property within the alleged “370-acre luxury golf community” identified by Complainant; has never prevented anyone, including Complainant from reflecting the mountain view country club in a corresponding domain name;[2] has never competed with Complainant (nor ever offered any “land development services”, nor ever planned nor layed out any residential communities, nor ever offered, owned nor maintained any golf courses); has never disrupted any business of Complainant (nor has any business disruption been alleged by Complainant herein); and has never advertised nor used the domain name in question to intentionally attract, for commercial gain any Internet users to any web site or online location whatsoever. Finally, Respondent has never had any notice, including within the Complaint, that it has ever tarnished nor ever created any likelihood of confusion with Complainant’s mark as to source, sponsorship, affiliation or endorsement.  

 

Indeed, prior to receiving the Complaint in this matter, Respondent had never had any contact or correspondence with Complainant or any of its representatives with respect to its ownership of the domain name or any other matter relative to the dispute.  Without question, before filing the instant case, Complainant made no apparent efforts to contact Respondent and never made its alleged claims known to Respondent.  

 

Inasmuch as Complainant failed to conduct any reasonable investigation into these matters, and instead chose to file this proceeding before contacting Respondent, and in light of the overwhelming authorities that support the proposition that “a complaint is brought in bad faith if the trademark postdates the disputed domain name,”[3] Respondent respectfully requests that the Panel make a finding under Paragraph 15(e) of the Rules for Uniform Domain Name Dispute Resolution that that the Complaint was brought in bad faith, for example, in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, and thus constitutes an abuse of the administrative proceeding.

 

6.   LEGAL ARGUMENT

 

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy 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 ICAAN Policy requires that the Complainant must prove each of the following elements:

 

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

 

In an administrative proceeding, the complainant must prove that each of these three elements are present.  However, in this case, Complainant has failed to meet its burden as to each of these elements.

 

A.            COMPLAINANT DOES NOT MEET ITS BURDEN TO PROVE THAT IT HAD ANY RIGHTS TO THE MOUNTAINVIEWCOUNTRYCLUB MARK AT THE TIME RESPONDENT REGISTERED THE DOMAIN NAME.

 

It has been well established that to allege any rights to a trademark or service mark, a complainant must have had the rights at the time when the disputed domain name was registered by a respondent. In Gavagai Tech. Inc. v. Gavagai, FA 135611 (Nat. Arb. Forum Feb. 3, 2003), the Panel confirmed the ruling that Policy paragraph 4(a)(i) “requires trademark or service mark rights at the time of the registration of a domain name at issue."  Citing a number of precedents, the Panel described the proper inquiry as “whether the Complainant had trademark rights at the time of the registration of the domain name.”  See Picoliter Inc. v. Sauter, FA 122205 (Nat. Arb. Forum Oct. 23, 2002); see also YesVideo Inc. v. Popovic, FA 113290 (Nat. Arb. Forum July 15, 2002); see also ProjectExchange Inc. v. Web Time, FA 109703 (Nat. Arb. Forum June 7, 2001); see also Firstgate Internet AG v. Soung, D2000-1311 (WIPO Jan. 29, 2001); see also Bus. Architecture Group, Inc. v. Reflex Publ’g, FA 97051 (Nat. Arb. Forum June 5, 2001).

 

Similarly in Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001), the Panel ruled that:

 

… [W]e are of the unanimous view that the trademark must predate the domain name. Whether it arises because of paragraph 4(a)(iii) (requiring bad faith registration), rather than paragraph 4(a)(i) does not call for a decision by us at this time. In either case, the result is the same...

 

The Panel in the matter of Ode further clarified that “[t]here are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICAAN Policy, since it is impossible for the domain name to have been registered in bad faith.” 

 

By analogy, the relevant United States law (U.S. Code Title 15, Section 1125(d) commonly known as the "Anticybersquatting Consumer Protection Act" [4] in relevant part (Section 3002), states that:

 

(d) Cyberpiracy prevention (1) (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

            …

            (ii) registers, traffics in, or uses a domain name that—

(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;

…

 

Accordingly, a complainant cannot meet its burden if it does not have trademark rights at the time when the disputed domain name was registered. 

 

In this case, based on the following facts, Respondent's domain name registration clearly predates Complainant's trademark rights:  

 

- According to Exhibit “D” to the Complaint, on March 14, 2002, Respondent registered the disputed domain name.

 

- According to Exhibit “A” to the Complaint, on August 3, 2004, Complainant registered the MOUNTAIN VIEW COUNTRY CLUB service mark in both class 37 for "land development services, namely, planning and laying out of residential communities" and class 41 for "residential and community golf courses" which claimed a date of first use as some unidentified day in October 2002 (Registration No. 2,868,994).   Such claimed date of first use is at least nearly eight months after Respondent had registered the domain name.

 

-In its Complaint, Complainant makes no allegations that it enjoyed any common law rights, ever used the MOUNTAIN VIEW COUNTRY CLUB mark nor that it had ever spent any time or money towards building any public recognition, let alone, secondary meaning or goodwill with respect to the mark before Respondent's registration of <mountainviewcountryclub.com>. 

 

Indeed, as noted above, Complainant admits at page 3 of its own Complaint, that it did not even sign a contract to develop this real estate project until March 20, 2002, which clearly postdates Respondent's registration.  Complainant further contends that "[s]hortly thereafter, Complainant began to actively promote the MOUNTAIN VIEW COUNTRY CLUB marks in connection with the construction of its luxury golf community."  However, it is well established that trademark rights are acquired by actual usage associated with the goods, (or that constructive rights can exist following the date an application is filed with the United States Patent and Trademark Office based on the applicant’s bona fide intent to use such mark) but no trademark rights can exist based on any other mere “intention” or future probability of using such mark.

 

Complainant then appears to emphasize the effort it has made concerning its alleged goodwill and trademark rights acquired after Respondent's registration. "As a result of Complainant's consistent use of the MOUNTAIN VIEW COUNTRY CLUB mark in connection with land development services and residential and community golf courses since it first acquired the 370-acre property in the Spring of 2002, the expenditure of considerable time, resources and effort, and as a result of the quality of its services, the MOUNTAIN VIEW COUNTRY CLUB mark has become well known and represents substantial goodwill of Complainant."  Such evidence is plainly irrelevant herein.  

 

Complainant’s contention at page 4 of its Complaint that “[i]n the past two years, Complainant and its affiliates have spent roughly $2,783,000.00 in advertising and marketing expenses relating to its goods and services” is not only unsupported by any declaration or evidentiary submission, but is also vague as to what such expenditures were made, who made such expenditures, or how such alleged expenditures might result in any actual goodwill earned in favor of Complainant.  Moreover, any expenditures made “in the last two years” are simply ineffective to demonstrating any rights in the MOUNTAIN VIEW COUNTRY CLUB name prior to the date Respondent registered the domain name in question herein, nor are such alleged subsequent expenditures relevant to either the question of whether Complainant had trademark rights at the time Respondent registered the domain name nor the question of bad faith.

 

Irrespective of Complainant’s (and its unknown “affiliates’”) expenditures allegedly made in furtherance of “building up goodwill and strengthening the MOUNTAIN VIEW COUNTRY CLUB mark” in the past two years, and one year after the Respondent’s domain registration, such bald allegation does not change the undisputed fact that Complainant had no trademark rights at the time of Respondent’s domain registration. See Substance Abuse Mgmt., Inc. v. Screen Actors Modesl [sic] Int’l, Inc. (SAMI), D2001-0782 (WIPO Aug. 14, 2001) (“[I]f a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith.”).

 

In conclusion, even assuming that all of Complainant's allegations are true and correct, (which Respondent disputes herein), Complainant has simply failed to have met its burden by providing evidence to support that it had any trademark rights, constructive or actual,  at the time when Respondent registered <mountainviewcountryclub.com>.

 

B.            COMPLAINANT DOES NOT MEET ITS BURDEN TO PROVE THAT RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME

 

Paragraph 4(c)(1) of the Policy provides that registrants may show that they have rights or legitimate interests in a domain name by proving that before they had any knowledge of a domain name dispute, they were using or preparing to use the domain name "in connection with a bona fide offering of goods and services."

 

The fact that Respondent has not established a website but used the domain name to redirect viewers to one of its own website does not prove that it has no rights or legitimate interests in respect to the domain name. See Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000) (finding that Respondent has rights and legitimate interests in the domain name even though he has made no use of the website at the time of the Complaint.)

 

Furthermore, all the panel decisions that Complainant has cited to support its allegation that Respondent did not have legitimate rights in the domain name can be easily distinguished herein: specifically, because unlike the other such Complainants identified, this Complainant did not have any trademark rights in the MOUNTAIN VIEW COUNTRY CLUB mark when Respondent registered the domain name in question.

 

For example, in the Disney Enters., Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) matter cited by Complainant, the complainant in that action contended that since 1923, it or its predecessors in interest had continuously used the internationally famous DISNEY trademark (which mark was registered in 1981, twenty years before the domain registration in question) and the respondent, who conceded her prior knowledge of such mark, and despite complainant’s repeated requests had continued to use the domain name <disneyvacationvillas.com> to advertise, lease and make commercial offers to lease private vacation home rentals to visitors to the Disney theme park in Orlando, Florida.  Based on the respondent’s acknowledgement of such complainant’s famous trademark, and after specific findings that the respondent therein was in commercial competition with the complainant (regarding the provision of accommodations), and that the respondent admitted therein that she had selected the name to suggest an association with complainant’s “Disneyworld” theme park, the Panel made a proper finding of bad faith therein.  As noted however, in this case, Complainant had no trademark or service mark rights at the time Respondent registered the domain name, nor has Respondent ever used the term MOUNTAIN VIEW COUNTRY CLUB in advertising, nor ever competed with Complainant herein in any form or fashion.

 

The case of Tr. of the Trust No. SR-1 v. Klopp,  FA 187430 (Nat. Arb. Forum Oct. 8, 2003) decided on default after the respondent failed to respond to the complaint, can also be easily distinguished from the present action inasmuch as prior to respondent registering the “turnberryplace” domain names, the complainant had filed a prior pending trademark application approximately four years before such domain registrations were made.  Moreover, in such case the respondent therein had used the domain names in question to divert Internet traffic to respondent’s website which offered to sell condominiums located within such complainant’s development in Las Vegas, Nevada.

 

Finally, in the matter of N. Shore Tower Apartments, Inc. v. Kroll, FA 109030 (Nat. Arb. Forum July 2, 2002) the complainant therein had established long-term common law trademark rights with respect to a cooperatively owed, and well known landmark: an apartment complex in its own name, NORTH SHORE TOWERS which was incorporated in 1984, and was opened to the public in 1987.  It was further asserted that “Complainant’s consistent use of the name for decades, the names’ recognition in the media and by the community, and the branding that had resulted established Complainant’s common law rights.”  Furthermore, the respondent in such case had, in the past attempted to divert prospective customers by causing them to think that she was the official or primary broker for apartments in the complex. The respondent had in fact, competed with the complainant. In such case, it was further undisputed that the respondent was on notice of complainant’s rights by virtue of a warning letter sent four years before the domain registration at issue.  In this case, on the other hand, Complainant had no trademark rights to speak of at the time of the MOUNTAIN VIEW domain name in question.

 

In any event, a decision on paragraph 4(a)(ii) is not required to decide the instant case on the merits. As the Panel in Ode pointed out, "[h]owever, the circumstances in paragraph 4c of the Policy are not conclusive and, in any event, we do not believe a decision on paragraph 4a(ii) is required, since either the Complainant fails under paragraph 4a(i) for lack of trademark rights at the material time or under paragraph 4a(iii) … Accordingly, no view is required on this issue."

 

C.            COMPLAINANT HAS FAILED TO SHOW THAT <MOUNTAINVIEWCOUNTRYCLUB.COM> WAS REGISTERED IN BAD FAITH

 

Despite raising baseless allegations to the effect that “Respondent likely knew of the intended name for Complainant’s new luxury community (that did not exist nor had Complainant even sign a land development contract related thereto by such date) when it registered the Domain Name on March 14, 2002” Complainant has failed to demonstrate that Respondent registered or used the domain name in bad faith as required under paragraph 4(a)(iii) of the Policy. Such failure is because Complainant’s alleged trademark (for planning and laying out of residential communities, etc.), did not exist at the time the disputed domain name was registered, and because since registering the domain name Respondent has never acted in any way that would suggest bad faith.

 

As noted above in Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001), the Panel held that "[t]here are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith."[5]

 

See ProjectExchange Inc. v. Web Time, FA 109703 (Nat. Arb. Forum June 7, 2001). ("Each of the circumstances listed in Paragraph 4(b) which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith presuppose the existence of a trademark, whether registered or common law, at the time of registration of the disputed domain name.") (Emphasis added).

 

See also Landmark Group v. DegiMedia.com, L.P., FA 285459 (Nat. Arb. Forum Aug. 6, 2004) ("It may be very relevant to the third factor, and indeed dispositive of the challenge, if Complainant had no trademark rights at the time of the domain name registration, as the registrant cannot, therefore, have been in bad faith vis-à-vis Complainant.”). 

 

See, e.g., Intermap Techs. Corp. v. Salvage Elec. Inc. FA 203130, (Nat. Arb. Forum Dec, 14 2003) ("Bad faith registration, however, is not to be measured at the time of renewal; rather, it is measured at the time of initial registration.").

 

Applying these principles to the present facts, the domain name could not have been registered by Respondent in bad faith because Complainant was not doing business using the MOUNTAIN VIEW COUNTRY CLUB trademark, in any form or fashion at the time of Respondent's registration. According to its own trademark application, Complainant first used the mark in October 2002. According to its own Complaint until March 20, 2002, Complainant had not even signed the contract to develop a real estate project at the location which is currently called "Mountain View Country Club.” 

 

Even were Complainant, in its anticipated reply, to attempt to further mislead this Panel by back-dating its claim of first use, as earlier than either the October 2002 date stated in its August 2003, U.S. service mark application, or the date of March 20, 2002, by claiming any use prior to March 14, 2002 (the date of Respondent’s domain registration), Respondent notes that any future plan to “plan or lay out” a future residential community” simply is not a bona fide trademark usage, upon which any goodwill or secondary meaning could ever be acquired. 

 

Complainant's assertion that Respondent "likely knew of the intended name for Complainant's new luxury community when it registered the Domain Name on March 14, 2002" is pure speculation and does not satisfy the burden of proof required herein as Complainant has offered no direct evidence, affidavits or documents to corroborate such claim. Similarly, while it alleges that "at least as early of spring 2002, Complainant publicly announced its plans to develop its MOUNTAIN VIEW COUNTRY CLUB luxury golf community," it does not allege that it announced the plan before Respondent's registration and it has provided no documentary evidence to support its allegation.  See Holland Props., Inc. v. Relocation Dir., Inc. FA 379669 (Nat. Arb. Forum Feb. 14, 2005) ("Mere allegations do not suffice.  Sufficient proof is absolutely essential as a threshold requirement in order for the Policy to apply ‑‑ whether that proof derives from a federal or state registration, or mere use of the mark at common law.  Absent any proof, let alone sufficient proof, Complainant has simply failed to satisfy the requirements of paragraph 4(a)(i) of the Policy.  See, e.g., Nat’l Sports Servs. Inc. v. Global Media Res. S.A., FA 335580 (Nat. Arb. Forum Nov. 18, 2004); see also Cont’l Design & Mgmt. Group v. Technet, Inc., FA 96564 (Nat. Arb. Forum Mar. 21, 2001).")

 

Similarly in Do the Hustle v. Tropic Web, D2000-0624, (WIPO Aug. 23, 2000) the Panel held that "[A] Panel is not required to blindly accept . . . unsupported assertions offered by a Complainant."

 

Even assuming Respondent knew of Complainant’s intended use, relevant case law has established that even a preemptive use with the knowledge of a competitor's "intended use" does not constitute an infringement or other “bad faith.”  See Selfway, Inc. v. Travelers Petroleum, Inc., 579 F. 2d 75, 198 U.S.P.Q. 271 (C.C.P.A. 1978). ("While adoption of a mark with knowledge of a prior actual user may give rise to cognizable equities as between the parties, see, e.g., United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918), and Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916), appellant has cited no authority warranting recognition of similar equities based on knowledge of another's intent to use.")  See also Reflange, Inc. v. R-Con Int'l, 17 U.S.P.Q. 2d 1125 (T.T.A.B. 1990) (Following the Selfway case, held that party B has priority in the mark as the first user even though party A coined the mark and disclosed it to B as a proposed mark for A. But since the disclosure was not made in confidence or in the course of fiduciary relationship, the Selfway rule applies and adoption of a mark with knowledge of another's intent to use it does not give rise to "cognizable equities.").

 

Similarly in Chem. Prods. Techs., LLC v. Shadbolt, Case No. D2003-0373 (WIPO July 17, 2003), the Panel held that "[i]t suffices for present purposes to say that this material establishes a clear intent to use a herbicidal product to be called CLEAROUT and to obtain the necessary regulatory consents in this regard. What it does not establish is any actual use of that term in marketing such a product to the public, or indeed any use at all (other than the publication for opposition of the pending trademark application - see below) that would have been visible to anyone other than the Complainant or the regulatory authorities concerned."

 

Accordingly, even assuming the truth of Complainant's baseless allegations, namely, that Respondent currently has the intention to attract internet users to Respondent's website for commercial gain by using a confusingly similarly domain name, Complainant here still has failed to meet its burden by showing that Respondent registered the disputed domain name, <mountainviewcountryclub.com>, in bad faith, because trademark rights did not exist when Respondent registered the domain name. "A registration of a domain name that at inception did not breach Rule 4(a)(iii) but is found later to be used in bad faith does not fall foul of Rule 4(a)(iii)." Weatherall Green & Smith v. Everymedia.com, D2000-1528 (WIPO Feb. 20, 2001).

 

D.            COMPLAINANT HAS ENGAGED IN REVERSE DOMAIN NAME HIJACKING

 

As noted above, Complainant brought this action prior to ever contacting Respondent, and without any proper legal basis.

 

Under the Ode case, and many others, "a complaint is brought in bad faith if the trademark postdates the disputed domain name." (See, e.g., Nishan Sys., Inc. v. Nishan Ltd., D20030204 (WIPO May 1, 2003); Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001), Foresight Corp. v. Servos, AF-0473 (eResolution Dec. 15, 2000); NetLearning, Inc. v. Parisi, FA 95471 (Nat. Arb. Forum Oct. 16, 2000) (Sorkin, dissenting); ecast, Inc. v. Ecorp.com, AF-0308 (eResolution Oct. 11, 2000); see also Goldline Int’l, Inc. v. Gold Line, D2000-1151 (WIPO Jan. 4, 2001); Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) Loblaws, Inc. v. Presidentchoice.inc/ Presidentchoice.com, AF-0170a to 0170c (eResolution June 7, 2000); K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000), Qtrade Canada, Inc. v. Bank of Hydro, AF-0169 (eResolution June 19, 2000); Shirmax Retail Ltd. v. CES Mktg. Group Inc., AF-0104 (eResolution Mar. 20, 2000).

 

Based on the Panel decisions cited above, the Complaint is brought in bad faith if Respondent's registration predates Complainant's trademark rights. In the alternative, a complainant has engaged in reverse domain name hijacking if the proceeding was brought in bad faith or was brought primarily to harass the domain name holder. ProjectExchange Inc. v. Web Time, FA 109703 (Nat. Arb. Forum June 7, 2001).

 

Respondent alleges that Complainant has brought this action primarily for the purpose of harassment because without having apparently researched or investigated the facts of this matter, Complainant has invited the Panel to join in its unsubstantiated speculation, and has sought a result that it is not entitled to.  Without question, Complainant made no efforts to settle the dispute directly before filing the action, it has forced Respondent to spend thousands of dollars protecting the disputed Domain Name and it has disrupted Respondent's business.  (See: declaration of Bonni Ison attached hereto.)

 

 

C. Additional Submissions

COMPLAINANT’S REPLY IN SUPPORT OF COMPLAINT

This Reply is submitted to correct substantial misstatements of law and fact in Respondent’s “Response” to the Complaint in this matter, and to add to the record certain relevant facts, as follows:

A.            Complainant Had a Common Law Trademark Predating

            Respondent’s Domain Name Registration.

 

Respondent’s main argument in opposition to Toll Brother’s Complaint is that it is a necessary prerequisite to filing a complaint under the ICANN Uniform Domain Name Dispute Resolution Policy (the “Policy”) that Complainant have rights to the mark at the time that respondent registered its domain name, and that Respondent has not met this burden.  Thus, Respondent says that Complainant has not shown that it had rights to the MOUNTAIN VIEW COUNTRY CLUB mark on March 14, 2002, the date when Respondent registered the challenged domain name, <mountainviewcountryclub.com>. (Response at 3-6).   As Respondent recognizes, it is not necessary to have a federally registered trademark in order to establish rights to the mark; rather, it is clear even from cases cited by Respondent, that ownership of a common law mark serves the same purpose as does a federally registered mark.  See Cont’l Design & Mgmt. Group v. Technet, Inc., FA 96564 (Nat. Arb. Forum Mar. 21, 2001); see also Sealstore.com L.C. v. Sealpool Ltd., FA 96535 (Nat. Arb. Forum Mar. 8, 2001).  Here, although the Complaint does not specifically allege common law rights in the mark, it is clear that such common law rights existed before the mark was registered and before Respondent registered the domain name.

 

As stated in the Certification of Linda Hanford, submitted herewith, Complainant used the name, “Mountain View Country Club” in trade beginning as early as March 11, 2002, prior to the time when Respondent registered its domain name, <mountanviewcountryclub.com>.  A large "coming soon" sign was posted in public view on that date using name "Mountain View Country Club." 

 

It is clear that this prior use establishes MOUNTAIN VIEW COUNTRY CLUB as a common law trademark from the date of its first use on March 11, 2002, well before it became a federally registered trademark and before Respondent registered it as a domain name.   As explained by an authoritative source, McCarthy on Trademarks, § 16.3, at p. 16-5, inherently distinctive marks, including suggestive marks such as the mark here, “are so distinctive in and of themselves that legal protection is granted immediately upon adoption and use.” (Emphasis added).  Such inherently distinctive marks do not require proof of secondary meaning or consumer recognition for protection.  Id. at § 16.3, p.16-5; § 16.4, p.16-7.   Moreover, since Complainant’s mark has now been registered with the United States Patent and Trademark Office, this registration creates a rebuttable presumption that the mark is inherently distinctive and is prima facie evidence of validity.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002); RE/MAX Int’l, Inc. v. Mendoza, Claim No. FA 399346 (Nat. Arb. Forum Feb. 24, 2005).

 

McCarthy continues, saying that cases “are legion” holding that ownership of inherently distinctive marks are governed by priority of use. Id. § 16.4, at p. 16-6, citing, e.g., Brookfield Communications, Inc. v. West Coast Entm’t Corp., 174 F.3d 1036, 1047 (9th Cir. 1999).  As stated more fully:

 

For such marks, the first to use a designation as a mark in the sale of goods or services is the “owner” and the “senior user.”  These marks are given legal protection against infringement immediately upon adoption and use in trade. . . . [I]t is not registration, but only actual use of a designation as a mark that creates rights and priority over others.   The United States . . . has a rule of priority that is based on first-to-use, not first-to-register.”

McCarthy, supra, at § 16.4, pp. 16-6 to 16-7.

 

Even a single use in trade may sustain trademark rights if followed by continuous use. Id. at § 16.6, p. 16-9.   As established by the Hanford Certification, Complainant has continuously used the mark since it first introduced the advertisements to the public on March 11, 2002. 

 

 Promotional advertising using the mark is sufficient to establish common law trademark rights. Id. at p. 16-10; see also Hovnanian Enters., Inc. v. Covered Bridge Estates, Inc., 195 U.S.P.Q. 658 (T.T.A.B. 1977) (billboard use sufficient to establish priority).  Even a use which has not yet risen to the status of a trademark or service mark may, however, be sufficient to confer rights.  As a general rule, use analogous to trademark use is sufficient to create a proprietary right in the user for purposes of a likelihood of confusion claim.  See Chatam Int’l Inc. v. Abita Brewing Co., 49 U.S.P.Q.2d 2021, 2023 (TTAB 1998) (unpublished).  In T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 1376, 37 USPQ2d 1879, 1883 (Fed. Cir. 1996), the Court of Appeals for the Federal Circuit summarized the test for the sufficiency of analogous use efforts:  "[W]hether it was sufficiently clear, widespread and repetitive to create the required association in the minds of the potential purchasers between the mark as an indicator of a particular source and the [product or] service to become available later."  See also Jim Dandy Co. v. Martha White Foods, Inc., 458 F.2d 1397, 1399, 173 USPQ 673, 674 (CCPA 1972); Old Swiss house, Inc. v. Anheuser-Busch, Inc., 196 USPQ 808 (CCPA 1978).  In short, it is clear that through the use of the mark in promotion on March 11, 2002, Complainant established its common law trademark rights in the mark, MOUNTAIN VIEW COUNTRY CLUB, and that those superior rights existed at the time that Respondent registered its domain name.

 

B.            Respondent Does Not Dispute That the Challenged Domain Name Is Identical or Confusingly Similar to Complainant’s Mark.

 

The first requirement under paragraph 4(a) of the Policy is that Complainant must prove that the domain name registered by the respondent is identical or confusingly similar to a mark in which the complainant has rights.  (Policy ¶ 4(a)(i)).  It is obvious that the domain name at issue here is identical to Complainant’s trademark, and that therefore Complainant has met this first step in the necessary proofs.  Indeed, Respondent does not challenge the fact that the domain name and the trademark are identical, but contests Complainant’s proofs only on the ground already discussed in Section “A” above.   For the reasons stated there, Respondent cannot succeed with this argument.

 

C.            Complainant has Met Its Burden to Show that Respondent Has No Legitimate Interest in the Domain Name

 

The second requirement under paragraph 4(a) of the Policy is that Complainant must show that Respondent has no rights or legitimate interests in the domain name. (Policy ¶ 4(a)(ii)). Respondent argues that the Panel need not examine this second requirement, since, it says, Complainant had no rights in the mark at the time of its domain name registration, and so cannot succeed on this prong of proof for this reason.  As discussed in Section “A” above, Respondent is wrong, since Complainant did, in fact, have common law rights at the required time.  Respondent also argues that “[t]he fact that Respondent has not established a website but used the domain name simply to redirect viewers to … its own website does not prove that it has no rights or legitimate interests in respect to the domain name.” (Response, at 6).  In support of this argument, it cites just one case, Casual Corner Group, Inc. v. Young, FA 95112 (Nat. Arb. Forum Aug. 7, 2000).  But this is not what Casual Corner holds. 

 

Casual Corner holds only that a 10-month period during which the respondent did not establish a website using the domain name it registered was insufficient time for the Panel to conclude that respondent had a lack of bona fide interest in using the name, since it is reasonable to conclude that the respondent needed this amount of time for research and development in preparation for launching a website.  In fact, the decision said, the respondent in that case had “shown demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to notice of the dispute.”   The Casual Corner case cites another case, Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2001-0004 (WIPO Feb. 16, 2000) for the proposition that non-use of a domain name for two (2) years raises the inference of the respondent’s lack of bona fide intent.

 

In this case, the situation is quite different.  Respondent registered its domain name, <mountainviewcountryclub.com>, on March 14, 2002, almost exactly three (3) years ago.  It has not yet used that domain name in connection with any offering any goods or services.  In fact, Bonni Ison, the owner of the domain name, provided an affidavit stating that she has used the domain name since March 14, 2002, the registration date, “only for the purpose of redirecting Internet users to another website I own ....” (Affidavit. ¶ 2), has “never used the phrase MOUNTAIN VIEW COUNTRY CLUB or any such related terms on my website [to which users were directed]… nor have I ever advertised or used such terms in any offline materials.” (Affidavit, ¶ 5).   She also certified that she has “never knowingly received any business as the result of my ownership of the www.mountainviewcountryclub.com and I have never derived any economic benefit from owning such domain name.” (Affidavit, ¶ 3).  Significantly, her Affidavit is bereft of any claim that she has any intention of ever using the domain name for any purpose other than directing Internet users to her own website.  Accordingly, given the lengthy passage of time since she obtained the domain name and her own admissions about her lack of legitimate rights or interest in the domain name, it is clear that Respondent in fact has no rights or legitimate interests with respect to the domain name it registered.  

 

As held by RE/MAX Int’l, Inc. v. Mendoza, supra, because the respondent was using the disputed domain name only, as here, to redirect “unsuspecting internet users” to a website providing services in competition with complainant’s real estate brokerage services, the respondent was “making opportunistic use of Complainant’s mark” and had not established rights or legitimate interests in the domain name.  The same factors exist here.  Although Bonnie Ison inexplicably states that she has never competed with Complainant (Affidavit, ¶ 8), it is clear that she is in exactly the same line of business -- real estate brokerage services (Affidavit, ¶ 2)  --  in the same geographic area of La Quinta, California as Complainant.  Accordingly, her self-serving statement about being a non-competitor is obviously inaccurate on its face and should be given no weight by the Panel.  She obviously is a competitor.

 

The RE/MAX Int’l Panel also stated that there was, as here, no evidence before it to show that the respondent is commonly known by its registered domain name, and that this fact should be considered in determining that the second factor under Policy paragraph 4(a) has been met.

 

In short, the Response has not established that Respondent has any right or legitimate interest in the contested domain name.  Indeed, the Ison Affidavit filed with the Response only serves to prove Complainant’s point, namely that Respondent has no right or legitimate interest in the domain name, <mountainviewcountryclub.com>.  Accordingly, Complainant has met its burden under paragraph 4(a)(ii) of the Policy.

 

D.            Complainant has Clearly Shown that <mountainviewcountryclub.com> Was Registered and Is Being Used in Bad Faith.

 

The third requirement under paragraph 4(a) of the Policy is that Complainant must show that the domain name was registered and is being used in bad faith. (Policy ¶ 4(a)(iii)). Respondent argues that Complainant has not shown that it registered or is using the domain name in bad faith because: (1) Complainant’s trademark did not exist at the time the domain name was registered; and (2) it has “never acted in any way that would suggest bad faith.” (Response, at 7).  The first of these arguments has been discussed in Section “A” above, and shown to be clearly wrong in light of Complainant’s preexisting common law trademark rights.

 

As to Complainant’s second argument, it is not true, as argued, that the domain name could not have been registered in bad faith because the Complainant was not doing business using the contested mark at the time of the registration.  In fact, as discussed above, and as stated in the Hanford Certification, Complainant had already begun advertising its Mountain View Country Club development  on March 11, 2002.  As a competing real estate broker in the same geographic area as Complainant, Respondent certainly had access to this information.  It was a large sign, 9' by 8', located on a main highway.  Hanford Certification.  It was precisely because of the posting of this sign that Respondent rushed to register the contested domain name.  It had no other reason to do so, since, by its own admission (see Ison Affidavit), it is not known by that name and uses its website only to direct internet users to its own website, using its actual business identifiers.

 

In this case, it is clear that Respondent has acted in bad faith by using the disputed domain name intentionally to attract, for commercial gain, internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Complainant’s website.  Policy ¶ 4(b)(iv).  Arbitration Panels have found bad faith under paragraph 4(b)(iv) in precisely the situation here, where a domain name registrant used a domain name “to ensnare unsuspecting Internet users” by diverting them to its own website. E.g., RE/MAX Int’l, Inc., supra, at p.4, citing G.D.  Searle & Co. v. Celebrex Drugstore, FA 12933 (Nat. Arb. Forum Nov. 21, 2002) (finding that respondent registered and used the domain name in bad faith because respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

 

In addition, Respondent has shown bad faith pursuant to Policy ¶ 4(b)(iii), by registering a domain name primarily for the purpose of disrupting the business of a competitor.  Here, as discussed above, Complainant and Respondent are competitors, both selling real estate in the La Quinta, California area.  By registering and using a domain name which is not only confusingly similar but actually identical to Complainant’s mark and using it for the sole purpose of “redirecting Internet users to another website” which she owns (Ison Affidavit, ¶ 1), Respondent is clearly acting in bad faith.  RE/MAX Int’l, Inc. supra, at 4, citing EthnicGrocer.com, Inc. v. Latingrocer.com, FA94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where respondent’s sites pass users through to respondent’s competing business).  The RE/MAX Int’l Panel also found based on the totality of the circumstances that the respondent, a competitor of complainant in the real estate business, as here, had engaged in bad faith because the “domain name resolves to a website that prominently features Complainant’s registered logos and marks.”  Finally, it is evidence of Respondent’s registration of the domain name in bad faith for the purpose of disrupting Complainant’s business that the domain name chosen by Respondent is identical to Complainant’s mark.  See, e.g., Ethnicgrocer.com v. Latin Grocer.com., supra, at p. 4. 

 

In short, it is abundantly clear that Respondent has acted in bad faith.  It learned of Complainant’s plans to market real estate in the La Quinta area under the name “Mountain View Country Club” through a promotion poster by Complainant and promptly registered the identical domain name.  It then used that domain name over a three year period only to confusingly divert Internet users to its own website -- the website of a competitor in the real estate business.  Moreover, the Panel should note that Affidavit of Bonnie Ison, owner of the contested domain name, is misleading, disingenuous, and outright untrue on its face in several of its claims, in particular its claim that although she is real estate broker, she does not compete with Complainant (¶ 8) whose business is selling real estate in exactly the same geographic area.

For all of these reasons, it is clear that Complainant has easily met its burden in showing that Respondent has registered and is using its domain name in bad faith, as required by the Policy ¶ 4(a)(iii).

 

E.            Complainant Has Not Engaged in Reverse Domain Name Hijacking

 

For all of the reasons discussed above, Complainant was well within its rights in filing the Complaint in this case.  The Panel should find that the filing was done in good faith and that there was no attempt by Complainant to harass Respondent or engage in reverse domain name hijacking.

 

RESPONDENT’S REPLY TO COMPLAINANT’S ADDITIONAL SUBMISSION

 

Respondent, Village at La Quinta Realtors, hereby objects to and replies to the Additional Submission by Complainant and the declarations and thereto on the following grounds:

 

   1.            RESPONDENT OBJECTS TO COMPLAINANT’S ADDITIONAL SUBMISSION WHICH HAS SURPRISED RESPONDENT BY RAISING NEW ALLEGATIONS AND INTRODUCING A NEW DECLARATION WHICH ARE NOT IN THE SCOPE OF, AND CONTRADICT THE MATTERS STATED IN ITS COMPLAINT.

 

Under the UDRP "Supplemental Rules to ICANN's Uniform Domain Dispute Resolution Policy," Rule 7(d), "[a]dditional submissions and responses to additional submissions may not amend the original Complaint or Response."

 

As further illustrated below, Complainant, in its Reply, introduces new allegations which were not included within, and indeed, contradict its original Complaint. Respondent objects to the introduction of such factual allegations and purported evidence as it effectively amends the allegations contained in its Complaint.

 

Specifically, in its Reply, Complainant does not dispute the well-established proposition that to allege any rights to a trademark or service mark, a complainant must have had the rights at the time when the disputed domain name was registered by a respondent. Indeed, rather than following its argument in the original Complaint wherein it emphasized its federally registered trademark and the marketing, advertising efforts of the mark occurring after Respondent's domain registration, Complainant in its Reply attempts to "back date" its position by now claiming "common law" rights which it incorrectly asserts are established by virtue of a "coming soon" sign allegedly posted on March 11, 2002, just three days before the domain registration at issue.  

 

Again, for the first time, Complainant in its Reply alleges that it posted an advertising sign containing the terms "Mountain View Country Club" and the words "coming soon." See Complainant's Reply in Support of Complaint, page 4.

 

Unlike federal trademark registration, allegations of "common law rights" based on alleged use in commerce must be supported by concrete and specific facts. Here, Complainant fails to provide any photos, pictures or receipts of the advertising or any other "hard" evidence other than an uncorroborated declaration and its allegations in the Reply itself. Notably, even the allegation of a large "coming soon" sign is not supported by its declaration.

 

Furthermore, as it has only introduced such new allegation and supporting declaration for the first time in its Reply, Respondent has been afforded no reasonable opportunity to investigate or dispute such allegations in its Response to the Complaint. Such "sandbagging" engaged in now that Complainant has reviewed and failed to refute the many precedents cited by Respondent in its Reply, was obviously made in the hope that Respondent would have no opportunity to respond to such unmeritorious claims is simply unfair to Respondent and violates Rule 7(d) of the ICAAN Supplemental Rules.  As such, this "sur-reply" was necessitated, which in and of itself, further demonstrates that Complainant has engaged in bad faith and harassment of its own, herein, in violation of Paragraph 15 of the Policy.  

 

In essence, as the result of Complainant's attempt to unfairly amend the Complaint herein, Respondent respectfully requests that the Panel disregard the whole Reply and the accompanied declaration, unless Respondent is afforded an equitable opportunity to respond to the newly raised allegations.  See Chromalloy Men's Apparel Group, Inc. v. Burch & Hatfield Formal Shops, Inc. Case No. D2000-1046 (WIPO Oct. 25, 2000) ("It is essential to dispute resolution proceedings that fundamental due process requirements be met.").

 

Moreover, unlike a court proceeding, under the Policy, Complainant is not typically allowed to submit further evidence, if any, to substantiate its claims. See County Bookshops Ltd. v. Loveday, Case No. D2000-0655 (WIPO Sept. 22, 2000)

 

“The Policy is specifically directed at the cheap and speedy determination of disputes. The parties have each had an opportunity to make their respective case. If the Complainant were to be allowed a further opportunity to present supplementary evidence in these proceedings then this would inevitably require a significant extension of time and an additional period for the Respondent to consider the additional evidence and provide a reply. The dispute resolution service provider would be put to significant extra work and unrecoverable expense dealing with the administrative aspects, and the Panelist would also be required to delay a decision and take additional time reviewing the supplementary evidence.”

 

Such precedent further supports a finding of bad faith on the part of Complainant despite that it too fails to address Respondent's additional filing fees, attorneys' fees and costs incurred with respect to filing a supplemental brief, in this case. For the foregoing reasons, Respondent formally objects to Complainant's submission, which amends and contradicts its original Complaint herein.

 

2.     EVEN ASSUMING THE TRUTH OF COMPLAINANT’S ADDITIONAL SUBMISSION IT STILL FAILS TO ESTABLISH ANY VALID COMMON LAW RIGHTS IN THE MARK "MOUNTAIN VIEW COUNTRY CLUB" HAVING BEEN SECURED BEFORE RESPONDENT'S REGISTRATION OF THE DOMAIN NAME AT ISSUE HEREIN.

 

Despite its newly claimed allegations and uncorroborated declaration, even assuming the veracity thereof, Complainant’s additional submissions still fail to establish any common law rights in the mark MOUNTAIN VIEW COUNTRY CLUB mark before Respondent's registration.

 

Assuming, arguendo, that Complainant did on March 11, 2002, post a sign to advertise that the "Mountain View Country Club" would be "coming soon," (which Respondent disputes herein), such a short period (three days) advertising cannot establish any meaningful goodwill or usage in commerce that can secure any common law rights.  More importantly, a notice that certain services will at some future date be available does not constitute a valid use in commerce as is required for the establishment of any common law trademark rights.

 

Lanham Act §45, 15 U.S.C.A. §1127 states in relevant part: 

 

Use in Commerce. The term "use in commerce" means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark. For purpose of this Act, a mark shall be deemed to be in use in commerce—

                                    * * *

(2) on services when it is used or displayed in the sale or advertising of services and the services are rendered in commerce, or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.

 

It has been well established that use of a service mark prior to the actual rendering of services does not establish a date of first use upon which any trademark rights can exist. See Steer Inn Sys., Inc. v. Laughner's Drive-In, Inc., 405 F. 2d 1401, 160 U.S.P.Q. 626 (C.C.P.A. 1969); see also Daltronics, Inc. v. H. L. Dalis, Inc., 158 U.S.P.Q. 475 (T.T.A.B. 1968) (use of a term in advertising coy prepared by a printer is not held to establish a date of first use.) In re Holiday Mobile Home Resorts, Inc., 144 U.S.P.Q. 510 (T.T.A.B. 1965); Selfway, Inc. v. Travelers Petroleum, Inc., 579 F. 2d 75, 198 U.S.P.Q. 271 (C.C.P.A. 1978) (use of a term in a prospectus for sale of stock and in financial statements preparatory to doing business does not establish priority of use).

 

In the matter of In re Cedar Point, Inc., 220 U.S.P.Q. 533 (T.T.A.B. 1983), the Trademark Trial and Appeal Board held that the advertising of a service to be available in the future, but which was not yet available at the time of filing the application, does not support the grant of a registration, nor any common law rights with respect thereto.

 

Here, Complainant contends that when the sign was posted on March 11, 2002, it only indicated that "Mountain View Country Club" would be "coming soon." Apparently, such advertising of a prospective service to be available in the future does not support any actual use as required to secure trademark rights under common law.

 

Contrary to Complainant's argument that a single use is enough to establish trademark rights, many cases have established that even a few sales would not secure trademark rights. See Sweetarts v. Sunline, Inc., 380 F. 2d 923, 154 U.S.P.Q. 459 (8th Cir. 1967); Chandon Champagne Corp. v. San Marino Wine Corp., 335 F. 2d 531, 142 U.S.P.Q. 239 (2d Cir. 1964) (sale of a few hundred cases of champagne gave plaintiff a priority of a "rather sterile nature").

 

Moreover, contrary to Complainant's argument, case law has established that prior usage on bulletin board, without more, would not be sufficient to establish any common law rights in a trade or service mark. In Jim Dandy Co. v. Martha White Foods, Inc., 458 F. 2d 1397, 173 U.S.P.Q. 673 (C.C.P.A. 1972), a case cited by Complainant itself, the Court held that:

 

Since the slogans here involved are virtually identical in their composition and are both used on dog foods, the only question to be determined herein is that of priority of use of the slogan. In this regard, while a party may rely on advertising and promotional use of a term or slogan to show superior rights over a subsequent trademark use of a term, the prior advertising must have been of such a nature and extent that the term or slogan has become popularized in the public mind as identifying the product of the user thereof. John Wood Manufacturing Co. v. Servel, Inc., [22 CCPA 1370, 77 F.2d 946] 25 USPQ 488 (CCPA, 1935); Lever Brothers Company v. Nobio Products, Inc., [26 CCPA 1253, 103 F.2d 917] 41 USPQ 677 (CCPA, 1939); Woodmark Originals, Inc. v. Purified Down Prods Corp., 157 USPQ 543 (TT&A Bd., 1968). We are firmly of the opinion that the senior party has not met this shifted burden of proof. While it may be that "DOG FOOD OF THE CHAMPIONS" was used on billboards during the latter 1950's around Birmingham, Alabama, the record on advertising use from 1960 to 1966 is far from clear, definite or concise as to the extent of use of the slogan during this period. We can only surmise that since no real documentary evidence of advertising in magazines, newspapers and television was produced, that any use made of the slogan was minuscule in nature. Since * * * [Dandy] has failed to establish by acceptable evidence that its advertising use of its slogan had made any impact on the public mind prior to the entry of the junior party into the field with its trademark use in November 1964, we must conclude that the junior party has acquired superior rights in its slogan.

 

In the instant dispute, Complainant's supporting evidence to establish common law rights is even weaker. Rather than using billboards for several years at different locations for products available at the same time, Complainant only alleges a three-day usage at a single location with a sign stating "coming soon" without any alleged connection to Complainant.  That is to say that the declaration fails to even allege that Toll Brothers was in any way associated with the "coming soon" sign or that any consumer might have been led to believe that Complainant herein was asserting any common law rights in connection therewith.  In addition, Complainant fails to allege any advertising in magazines, newspapers and television, nor has it offered or provided any "real documentary evidence" to support its ever-changing claims.  Accordingly, such alleged usage is at best "minuscule in nature" and Complainant has failed to establish any common law rights by virtue of a single sign that in no way identified Complainant and failed even to identify any goods or services (aside from a country club) Complainant might someday claim in connection therewith. .

 

Taking all these issues into consideration, the self-serving "new" evidence presented by Complainant falls well short of that which would be desirable to support the claims to proprietary rights in the MOUNTAIN VIEW COUNTRY CLUB mark in this case. In sum, the particular deficiencies include:

 

- no "hard" evidence of the form in which the mark is actually used (e.g. photos, pictures and receipts of actual advertising);

 

- no evidence to show how Complainant acquired any purported rights or goodwill in the MOUNTAIN VIEW COUNTRY CLUB designation during the three days that such sign allegedly was posted, absent Complainant's name;

 

- no evidence to confirm the extent of use or the actual expenditure incurred in establishing the claimed goodwill in the mark during the no more than 72 hours that such sign was allegedly posted;

 

-no public opinion poll or consumer testimony provided regarding the market effect of its alleged three days advertising; 

 

In the circumstances, Complainant has not adequately discharged its obligation to show that its claim to common law rights in the trademark. The evidence as submitted is simply insufficient that Complainant is entitled to assert such rights.

 

Moreover, notwithstanding the above, Respondent calls into question the veracity of Complainant's "moving target" relative to the date of its claimed first use and notes the following:

 

- in Exhibit "A" attached to its Complaint, and in its underlying application for trademark registration filed on August 11, 2003, Complainant alleged (under penalty of perjury) that its date of first use of the MOUNTAIN VIEW COUNTRY CLUB mark was first made on October xx 2002. 

 

- At page 3 of its Complaint in this matter, (certified as complete and accurate) it was alleged that "on March 20, 2002, Complainant signed a land development contract for site-work at the ""Mountain View Country Club" location.”

 

Now, in its Reply to Respondent's response, Complainant would have this Panel believe that even before it signed a land development deal, it was already placing "coming soon" signage at or near the property.  Such allegation simply defies logic and common sense.  Moreover, had Complainant placed advertising on property absent a city permit to do so, it likely would have violated municipal regulations. In any event, as is discussed above, Complainant has failed to establish any common law rights in the mark as the result of any alleged "coming soon" signage.

 

3.            COMPLAINANT STILL FAILS TO MEET ITS BURDEN TO PROVE THAT RESPONDENT HAS NO RIGHTS OR LEGITIMATE INTERESTS IN RESPECT OF THE DOMAIN NAME

 

Complainant here does not dispute that it has the burden to show that Respondent has no rights or legitimate interests in the domain name. See Complainant's Reply in Support of Complaint, Page 4. "The second requirement under paragraph 4(a) of the Policy is that Complainant must show that Respondent has no rights or legitimate interests in the domain name. (Policy ¶ 4(a)(ii))."

 

In this case, Complainant has asserted its Federal Trademark registration for the mark as allegedly used since October 2002, for  "land development services, namely, planning and laying out of residential communities, and residential and community golf courses."   Notwithstanding the same, in its Reply, Complainant now asserts it is "in exactly the same line of business – real estate brokerage services" as Respondent.[6]  Despite that it is obviously a developer of properties rather than a real estate broker, Complainant now alleges that the two are in direct competition. Respondent disputes such contention.

 

Indeed, rather than submitting any probative evidence to establish Respondent's alleged bad faith herein, Complainant has simply invited the Panel to presume bad faith, by alleging in essence that Respondent "must have known" of their prospective claims, and/or that "because of the posting of this (coming soon) sign" that Respondent "rushed to register the contested domain name".  Under the facts of this case, and pursuant to the many precedential citations included in Respondent's Response, such "presumption" must fail.

 

Likewise, Complainant has provided no evidence that any business was actually diverted. See Deutsche Telekom AG v. callisto germany.net, D2000-0951 (WIPO Nov. 1, 2000) ("Under that aspect, the Policy does not raise the question as to whether Respondent registered the domain name with the intention of making a legitimate noncommercial or fair use, but whether he actually makes such use.").

 

Accordingly, Complainant has failed to meet its burden to show any bad faith on the part of Respondent.

 

In any event, a decision on the issue whether Respondent has rights or legitimate interests with respect to the domain name is not required to decide the case on the merits as Complainant still fails to meet its burden to prove that it had secured any senior trademark rights before Respondent's domain registration. As the Panel in Ode pointed out, "[h]owever, the circumstances in paragraph 4c of the Policy are not conclusive and, in any event, we do not believe a decision on paragraph 4a(ii) is required, since either the Complainant fails under paragraph 4a(i) for lack of trademark rights at the material time or under paragraph 4a(iii) … Accordingly, no view is required on this issue."

 

4.            COMPLAINANT AGAIN HAS FAILED TO SHOW THAT <MOUNTAINVIEWCOUNTRYCLUB.COM> WAS REGISTERED IN BAD FAITH

 

Complainant's analysis of the alleged bad faith relies on the assumption that Complainant has senior trademark rights before Respondent's registration. Because Complainant fails to provide any real evidence to support this assumption and thusly fails to meet its burden, Complainant's analysis relying on this assumption must fail and becomes inconsequential.

 

As Respondent pointed out in its Response, there are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith. See, e.g., Response, page 7 and Footnote 5. 

 

Accordingly, Complainant has failed to meet its burden and its request to transfer the domain name must be rejected in entity.

 

5.  THE COMPLAINANT HAS ENGAGED IN REVERSE DOMAIN NAME HIJACKING

In its Reply, Complainant has yet to provide any reason why its action is not reverse domain name hijacking. To the contrary, by virtue of its attempt to "back date" its claims when faced with authorities which have conclusively established that it had no rights in the mark at the time Respondent registered the domain name, Complainant's Reply was further made in bad faith, for example in an attempt at Reverse Domain Name Hijacking or otherwise was filed primarily to harass the domain-name holder and therefore constitutes an abuse of the administrative proceeding under Rule 15(e) of the ICAAN Rules for Uniform Domain Name Dispute Resolution. For all the reasons stated in Respondent's Response and above, Respondent respectfully requests that this Panel reject the Complaint and enter a finding of bad faith as against Complainant herein.

 

FINDINGS

The Panel finds that Complainant has not proven each of the required three elements of Paragraph 4(a) of the Policy, subsections (1), (2) and (3), to wit: (1) Respondent’s domain name is identical or confusingly similar to Complainant’s MOUNTAIN VIEW COUNTRY CLUB trademark; (2) Respondent has no legitimate interests with respect to the domain name; and (3) Respondent registered the domain name in bad faith and hence the relief sought by Complainant should be denied.

As to Respondent’s contention that Complainant has engaged in reverse domain name hijacking, the Panelist finds that Complainant failed to take any action from January 29, 2004, by contacting Respondent to discuss a purchase of the disputed domain name, that Complainant’s first contact with Respondent was the filing of these proceedings, that Complainant made certain allegations in its original Complaint which were later contradicted in its subsequent submissions and that Complainant failed to show any economic loss to Complainant by virtue of Respondent having registered the disputed domain name on March 14, 2002.  By virtue of these findings, the Panelist finds that Complainant has engaged in Reverse Domain Name Hijacking and bad faith in instituting these proceedings.

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

General Discussions and Findings of Fact:

 

After carefully reading all the submissions of the parties, including the Complaint, the Response and the additional materials submitted by both sides, the Panelist constructed a chronological time frame as to the occurrence of events regarding Complainant’s assertion that Complainant had rights to the disputed domain name, <mountainviewcountryclub.com>.

 

What is clear and undeniable is that Respondent registered the subject domain name on March, 14, 2002, that Complainant signed the development contract for the underlying real estate project on March 20, 2002, (6 days later), that Complainant stated that the first time the trademark filed with the U.S. on August 3, 2004, was first used in commerce was October, ‘0’, 2002.  At this point, the date Respondent registered the domain name, <mountainviewcountryclub.com>, is first in time.  By virtue of this fact alone, the Panelist concluded that, from the submissions by the parties, there was no bad faith on the part of Respondent when registering the subject domain name. 

 

What is not clear however, based upon Complainant’s additional submission, is whether or not Respondent actually saw the “huge 9’ by 8’ sign” allegedly posted on a main highway in the area marketed by both Complainant and Respondent and placed on location but three days prior to Respondent registering the domain name.

 

What is also not clear from the submissions of the parties is Respondent’s frame of mind if and when Respondent actually saw the huge sign.  Did Respondent rush to register the disputed domain name and was this sign the impetus to do so? 

 

If, as the Complainant alleges, “It was precisely because of the posting of the sign that Respondent rushed to register the contested domain name”, then why did the Respondent wait 3 days to do so?  It would have been more logical, if not more convincing, for the Respondent to have registered the disputed domain name the same day Respondent saw the sign, which theoretically could have been the day the sign was erected, March 11, 2002. It is therefore possible for the Panelist to conclude that Respondent did not see the sign at all.  Nevertheless, from the facts in the record, the circumstances surrounding Respondent’s reason for registration or frame of mind at the time of registration, can in no way impute bad faith,  a critical element necessary for Complainant to have proven to have prevailed on the issue of bad faith.  At most, if the Panelist accepted Complainant’s version and theory of the facts and case, we would have ‘assumptions upon assumptions,’ which clearly could not substantiate bad faith on the part of Respondent.

 

What is also not clear to the Panelist and left unaddressed by both parties, is why did the Complainant, when it registered the <mountainviewcountryclub.biz> and <mountainviewcountryclub.org> domain names on January 29, 2004, not contact the Respondent at that point in time and discuss the possibility of resolving the domain name dispute.  From the record, Complainant never approached Respondent until the filing of the Complaint in the case herein. Additionally, Respondent never approached Complainant in an effort to sell the domain name to Complainant.  Apparently, during this period of time, from January 29, 2004, and even going back to the date Complainant signed the development contract to develop the property, the fact that some other entity, not Complainant, had registered the domain name, did not adversely affect Complainant’s business in any material way.

 

This fact alone gave the Panelist the comfort level of not finding that the element of bad faith had been proven by Complainant.  This fact too, led the Panelist to thoroughly consider Respondent’s claim of Reverse Domain Name Hijacking by Complainant.

 

“- in Exhibit "A" attached to its Complaint, and in its underlying application for trademark registration filed on August 11, 2003, Complainant alleged (under penalty of perjury) that its date of first use of the "Mountain View Country Club" mark was first made on October xx 2002.

 

- At page 3 of its Complaint in this matter, (certified as complete and accurate) it was alleged that "on March 20, 2002, Complainant signed a land development contract for site-work at the "Mountain View Country Club" location.

 

Now, in its Reply to Respondent's response, Complainant would have this Panel believe that even before it signed a land development deal, it was already placing "coming soon" signage at or near the property.  Such allegation simply defies logic and common sense.  Moreover, had Complainant placed advertising on property absent a city permit to do so, it likely would have violated municipal regulations. In any event, as is discussed above, Complainant has failed to establish any common law rights in the mark as the result of any alleged "coming soon" signage.”

(Page 31 of Respondent’s Reply to Complainant’s Additional Submission)

 

Based upon the above, the Panelist, finding that Complainant had not proven, from the record submitted, including all submissions, bad faith on the part of Respondent, could have decided to rule in favor of Respondent on that issue alone.  Nevertheless, the Panelist felt the issues, presented by the parties, deserved a full discussion on the other 2 remaining elements Complainant must prove to prevail is this cause, i.e., that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

 

(4)    the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(5)    the Respondent has no rights or legitimate interests in respect of the domain name; and

(6)    the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Respondent asserts that Complainant cannot satisfy the requirements of Policy ¶ 4(a)(i) because Respondent’s March 14, 2002 registration of the <mountainviewcountryclub.com> domain name predates Complainant’s establishment of rights in the MOUNTAIN VIEW COUNTRY CLUB mark.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶ 4(a) (i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that Complainant may have in its common law mark did not predate Respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied).

 

Furthermore, the Panel finds that Complainant has failed to satisfy the requirements of Policy ¶ 4(a) (i) because the Complainant’s MOUNTAIN VIEW COUNTRY CLUB mark is composed entirely of the generic or descriptive terms “mountain,” “view,” “country” and “club.”  See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Rollerblade, Inc. v. CBNO, D2000-0427 (WIPO Aug. 24, 2000) (“[G]enericness, if established, will defeat a claim of trademark rights, even in a mark which is the subject of an incontestable registration.”).

 

Moreover, the Panel has also found that Respondent’s addition of the generic top-level domain “.com” is sufficient to distinguish Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002) ("Similarity of marks or lack thereof are context-specific concepts. In the Internet context, consumers are aware that domain names for different Web sites are quite often similar, because of the need for language economy, and that very small differences matter."). 

 

Rights or Legitimate Interests

 

The Panel, by finding that Respondent’s registration of the <mountainviewcountryclub.com> domain name predates Complainant’s establishment of rights in the MOUNTAIN VIEW COUNTRY CLUB mark, the Panel has concluded that Respondent has rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii).  See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because Respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by Complainant); see also Warm Things, Inc. v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that Respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before Complainant had established rights in its alleged mark).

 

Furthermore, the Panel finds that Complainant’s mark is merely generic or descriptive, hence, the Panel concludes that Respondent has rights and legitimate interests in the <mountainviewcountryclub.com> domain name pursuant to Policy ¶ 4(a)(ii).  See FilmNet Inc. v. Onetz, FA 96196 (Nat. Arb. Forum Feb. 12, 2001) (finding that Complainant failed to establish that Respondent did not have rights or legitimate interests in the <filmnet.com> domain name, where the disputed domain name is wholly comprised of generic words, even though Complainant is the owner of the FILMNET mark); see also Healy v. Kuhlen, D2000-0698 (WIPO Aug. 24, 2000) (finding that Respondent had rights and legitimate interests in the <dvdnews.com> domain name where he was creating a "web of DVD sites" or a DVD community despite the fact that Complainant had registered a mark for DVD NEWS).

 

Registration and Use in Bad Faith

 

The Panel, by finding that Respondent’s registration of the <mountainviewcountryclub.com> domain name predates Complainant’s establishment of rights in the MOUNTAIN VIEW COUTNRY CLUB mark, is of the opinion and therefore finds that there was no bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”); see also Interep Nat'l Radio Sales, Inc. v. Internet Domain Names, Inc., D2000-0174 (WIPO May 26, 2000) (finding no bad faith where Respondent registered the domain prior to Complainant’s use of the mark).

 

Furthermore, the Panel finds that Complainant’s mark is composed entirely of merely generic or descriptive terms, the Panel therefore concludes that Respondent did not register and use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Canned Foods Inc. v. Ult. Search Inc., FA 96320 (Nat. Arb. Forum Feb. 13, 2001) (holding that where the domain name is a generic term, it is difficult to conclude that there was a deliberate attempt to confuse on behalf of Respondent, and stating that “[i]t is precisely because generic words are incapable of distinguishing one provider from another that trademark protection is denied them”); see also Lowestfare.com LLC v. US Tours & Travel, Inc., AF-0284 (eResolution Sept. 9, 2000) (finding no bad faith where Respondent was using the descriptive domain name <thelowestfare.com> to lead consumers to a source of lowest fares in good faith).

 

Reverse Domain Name Hijacking by the Complainant

                                             

The Panelist further finds that Complainant has engaged in Reverse Domain Name Hijacking and bad faith in instituting these proceedings.

 

The Panel has determined that by bringing the Complaint in bad faith, Complainant has engaged in reverse domain name hijacking.  See UDRP Rule 1 (“Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”)  see also Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan 2, 2001) (Complaint considered to be brought in bad faith where Complainant must have known that Respondent was not a cybersquatter prior to the filing of the Complaint); see also Curb King Borderline Edging Inc. v. Edgetec Int’l Pty., FA 105892 (Nat. Arb. Forum May 10, 2002) (finding that, when Complainant is aware of facts that bear a direct relation to the dispute and fails to include them in its Complaint, Complainant’s omission constitutes an abuse of the administrative proceeding, warranting a finding of Reverse Domain Name Hijacking); see also G.A. Modefine S.A. v. A.R. Mani, D2001-0537 (WIPO July 20, 2001) (finding that Complainant, by omitting several relevant facts that would have undermined its position, had brought the Complaint in bad faith, which constituted an abuse of the administrative proceeding).

 

 

DECISION

 

Having found that Complainant has not established all three elements required under the ICANN Policy, the Panel concludes the relief sought by Complainant shall be DENIED.

 

The Panelist further has found the Complainant engaged in Reverse Domain Name Hijacking and brought these proceeding against Respondent in bad faith.

 

Accordingly, it is Ordered that the < mountainviewcountryclub.com > domain name remain as presently registered, with the right of the Respondent to do what it deems fit with the domain name.

 

 

 

 

Barry Schreiber, Panelist
Dated: March 28, 2005

 

 

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