Kahn Development Company v. RealtyPROshop.com
c/o Carl Krause
Claim Number: FA0509000568350
PARTIES
Complainant is Kahn Development Company (“Complainant”), represented by Neil M. Batavia of Dority & Manning, Post Office Box 1449, Greenville, SC, 29602-1449. Respondent is RealtyPROshop.com c/o Carl Krause (“Respondent”), 340 Ash Ridge Court, Columbia, SC, 29229.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <villageatsandhill.com>
and <thevillageatsandhill.com>, registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that she has acted independently and
impartially and that to the best of her knowledge she has no known conflict in
serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically September 28, 2005; the National Arbitration Forum received a
hard copy of the Complaint September 30, 2005.
On September 28, 2005, Go Daddy Software, Inc. confirmed by e-mail to
the National Arbitration Forum that the <villageatsandhill.com> and <thevillageatsandhill.com> domain names are registered with Go
Daddy Software, Inc. and that the Respondent is the current registrant of the
name. Go Daddy Software, Inc. verified
that Respondent is bound by the Go Daddy Software, Inc. registration agreement
and thereby has agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On September 30, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 20, 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@villageatsandhill.com
and postmaster@thevillageatsandhill.com by e-mail.
Respondent requested a Stay of Arbitration, asserting that at the time
he received the Complaint, he was then deployed to Iraq as a member of the
United States Army Reserve. On October
13, 2005, pursuant to a Panel Order, the case was stayed until June 2006. On May 25, 2006, the Panel sent the parties
an Order to Lift Stay of Arbitration, which notified the parties that the case
would resume on June 1, 2006, and that a response was due from Respondent no
later than June 19, 2006. Complainant
originally filed the Complaint September 30, 2005, but the case was delayed,
pursuant to Respondent’s request.
A timely Response was received and determined to be complete on June 7,
2006.
Complainant timely filed an Additional Submission pursuant to The
Forum’s Supplemental Rule 7 June 13, 2006.
On June 10, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following allegations
in this dispute:
1.
Respondent
registered a domain name that is identical or confusingly similar to a mark in
which Complainant has protected rights.
2.
Respondent has
no rights to or legitimate interests in the mark or domain name in question.
3.
Respondent
registered and used the domain names in bad faith.
B. Respondent makes the following points in
response:
1.
Respondent is a
real estate agent with an office near the VILLAGE AT SANDHILL development.
2.
Respondent
registered the domain name due to interest in the VILLAGE AT SANDHILL
development and his proximity to it.
3.
Respondent
disconnected the disputed domain names after receiving a cease and desist
letter from Complainant.
4.
Respondent
denies passively holding and not developing the domain names sites but offered
no extrinsic proof in support of that claim.
5.
Respondent did
not “register the domains to disrupt the business of a competitor and … never
tried to sell, rent, or collect pay-per-click fees through ownership and use of
the disputed domain names.”
C. Additional Submissions.
Complainant makes the following reply in a Supplemental Filing.
1.
The VILLAGE AT
SANDHILL project has developed to the point that 100 retailers operate at it.
2.
Respondent has
not addressed the required elements.
3.
Respondent knew
about Complainant’s interest in the VILLAGE AT SANDHILL prior to registering
and holding the disputed domain names.
FINDINGS
Complainant owns VILLAGE AT SANDHILL, a lifestyle center featuring retail, entertainment and sports facilities near Columbia, South Carolina, and has done so since June 13, 2003.
Complainant registered VILLAGE AT SANDHILL with the South Carolina Secretary of State March 22, 2001.
Complainant filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78,699,297 filed August 24, 2005) showing a first use in commerce as early as March 22, 2001.
Complainant established common law rights to the VILLAGE AT SANDHILL mark.
Respondent registered the disputed domain names that contain Complainant’s mark June 27, 2003, with knowledge of Complainant’s rights in the development.
Respondent concedes that he registered the disputed domain names so that those seeking information about VILLAGE AT SANDHILL could obtain it through his real estate office.
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 Complainant to 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)
Respondent has
no rights or legitimate interests in respect of the domain name; and
(3)
the domain name
has been registered and is being used in bad faith.
Complainant is not required to own a trademark registration for the VILLAGE AT SANDHILL mark in order to establish rights in the mark, pursuant to Policy ¶ 4(a)(i). See Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
Complainant asserts that it has continuously used the VILLAGE AT SANDHILL mark to promote a lifestyle center featuring retail, entertainment and sports facilities near Columbia, South Carolina, and that it has done so since June 13, 2003. Respondent registered the disputed domain name June 27, 2003. Complainant claims that the VILLAGE AT SANDHILL real estate development is a $240 million project that was featured in a newspaper article in the The State Newspaper in early June 2003. Complainant supported with extrinsic evidence in this proceeding that it has filed for a trademark registration with the United States Patent and Trademark Office (“USPTO”) (Serial No. 78/699,297 filed August 24, 2005).
Respondent’s submission concedes that Respondent was aware of the VILLAGE AT SANDHILL development, that Respondent was doing business near the VILLAGE AT SANDHILL development prior to registering the domain names, and that Respondent registered the disputed domain names due to the interest of others in the VILLAGE AT SANDHILL.
The Panel finds that Complainant established rights in the VILLAGE AT SANDHILL mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark).
In addition, Complainant alleges
that the <villageatsandhill.com> domain name is identical to its
VILLAGE AT SANDHILL mark and the <thevillageatsandhill.com> domain
name is confusingly similar to the mark, because each incorporates the mark in
its entirety and merely adds the generic top-level domain (“gTLD”) “.com,” and
in the case of <thevillageatsandhill.com>, the article “the.” The Panel finds that the mere addition of a
gTLD does not sufficiently distinguish the <villageatsandhill.com>
domain name from Complainant’s mark, thereby rendering it identical to the
VILLAGE AT SANDHILL mark pursuant to Policy ¶ 4(a)(i), and that the addition of
the article “the” to the mark in the <thevillageatsandhill.com>
domain name renders that domain name confusingly similar to the mark under
Policy ¶ 4(a)(i). See Pomellato
S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding
<pomellato.com> identical to the complainant’s mark because the generic
top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see
also Marriott Int’l, Inc. v. Stealth Commerce, FA 109746 (Nat. Arb. Forum
May 28, 2002) (“[T]he addition of the [article] ‘the’ to the beginning of the
domain names fails to make them separate and distinct, as distinguishable from
Complainant’s marks.”).
The Panel notes that Respondent’s registration of the disputed domain names June 27, 2003 is close in time to publicity that Complainant cites in support of showing that the mark in issue acquired secondary meaning with the public. Complainant alleges that it first began using the VILLAGE AT SANDHILL mark on or around June 13, 2003, when The State Newspaper, a South Carolina newspaper, published an article about the development. Respondent alleges that the development was not completed until late 2005 and that construction did not begin until 2004. Respondent further notes that Complainant’s trademark registration filing date in 2005 does not predate Respondent’s registration of the disputed domain names. Notwithstanding, the evidences supports findings of first use in commerce in March of 2001 and Respondent concedes that Respondent knew about Complainant’s prior rights in the VILLAGE AT SANDHILL mark, and Respondent’s statements in the submission support findings that Respondent hoped to opportunistically benefit from the closeness of his real estate business to the Complainant’s development.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Complainant has the initial burden
of making a prima facie case in support of its allegations that
Respondent lacks rights and legitimate interests in the <villageatsandhill.com> and <thevillageatsandhill.com>
domain names under Policy ¶ 4(a)(ii). Once Complainant makes that prima facie showing, the
burden then shifts to Respondent to show that Respondent does have rights to or
legitimate interests in the domain names.
See Document Technologies, Inc. v. International Electronic
Communications Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph
4(a) of the Policy requires that the Complainant prove the presence of this
element (along with the other two), once a Complainant makes out a prima
facie showing, the burden of production on this factor shifts to the
Respondent to rebut the showing by providing concrete evidence that it has
rights to or legitimate interests in the Domain Name.”)
Complainant alleged that Respondent is not commonly known by the <villageatsandhill.com> and <thevillageatsandhill.com> domain names, because Respondent registered the domain names as “RealtyPROshop.com c/o Carl Krause.” No evidence in the record suggests that Respondent is commonly known by the disputed domain names. Complainant also asserted that it has not authorized or licensed Respondent to register or use domain names incorporating Complainant’s VILLAGE AT SANDHILL mark or any variation and Respondent produced no evidence to the contrary.
The record on its
face establishes that Respondent is not commonly known by the disputed domain
names, and the Panel finds that Respondent does not have rights or legitimate
interests in the domain names pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require
a showing that one has been commonly known by the domain name prior to registration
of the domain name to prevail"); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb.
5, 2001) (finding no rights or legitimate interests because the respondent is
not commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use).
Furthermore, Complainant alleged that
Respondent was using the <villageatsandhill.com> and <thevillageatsandhill.com>
domain names to redirect Internet users seeking information on Complainant’s VILLAGE
AT SANDHILL development to Respondent’s business website, Asset Realty
Inc. Complainant contended that
Respondent ceased redirecting Internet users to its website after Complainant
filed the Complaint, and that Respondent is not using the disputed domain name
for any purpose.
The Panel finds that Respondent knowingly
used Complainant’s mark in domain names and diverted Internet users to
Respondents own website for anticipated commercial gain until Complainant filed
this Complaint. Such use does not
constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate, noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free
Cmty. Access, FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also MSNBC
Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights
or legitimate interests in the famous MSNBC mark where the respondent attempted
to profit using the complainant’s mark by redirecting Internet traffic to its
own website).
Respondent alleged that Respondent was using the
disputed domain name for a bona fide offering of goods or services
because it was operating a website providing community information for the
northeastern section of Columbia, South Carolina, where Complainant’s VILLAGE
AT SANDHILL real estate development is located. Respondent concedes that he chose the disputed domain names
because he is a real estate agent and his potential clients wanted more
information about the development when considering moving into the area. Respondent also claimed that it only took
down the website because it was unaware of its legal rights after commencement
of this proceeding, and that Respondent has recently reactivated the
website.
The Panel finds that Respondent has failed to
show use of the <villageatsandhill.com> and <thevillageatsandhill.com>
domain names such as would support findings of bona fide use of Complainant’s
VILLAGE AT SANDHILL mark in Respondent’s real estate business.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant alleged that Respondent
registered and was using the <villageatsandhill.com> and <thevillageatsandhill.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv), because prior to the
filing of the Complaint, Respondent was diverting Internet users seeking
information on Complainant’s real estate development under the VILLAGE AT
SANDHILL mark to Respondent’s own website, where Respondent offers similar
information on the development and also offers real estate services. The Panel finds that Respondent used
Complainants protected mark to attract Internet users seeking Complainant’s
goods and services and diverted them for Respondent’s own commercial gain in
order to profit from the goodwill associated with the VILLAGE AT SANDHILL
mark. This supports findings that
Respondent registered and used the domain names in bad faith pursuant to Policy
¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent
registered the domain name <bigtex.net> to infringe on the complainant’s
goodwill and attract Internet users to the respondent’s website).
Complainant also contended that
Respondent disrupted its business by redirecting Internet users seeking
information on Complainant’s Village at Sandhill real estate development to
Respondent’s own real estate website.
Respondent conceded that he used the Complainant’s VILLAGE AT SANDHILL
mark to attract those seeking information about the development. This supports findings that Respondent
registered and used the <villageatsandhill.com> and <thevillageatsandhill.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see also Lubbock
Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23,
2000) (concluding that domain names were registered and used in bad faith where
the respondent and the complainant were in the same line of business in the
same market area).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <villageatsandhill.com>
and <thevillageatsandhill.com> domain names be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 23, 2006.
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