Southern Highlands, LLC v. MyOnlineNeighborhood, Inc.
Claim Number: FA0605000712420
Complainant is Southern Highlands, LLC (“Complainant”), represented by Anthony D. Logan, of Ellis & Venable, P.C., 101 N. First Ave., Suite 1875, Phoenix, AZ 85003. Respondent is MyOnlineNeighborhood, Inc. (“Respondent”), 805 S. Orlando Ave., Suite J, Winter Park, FL 32789.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <mysouthernhighlands.com>, registered with Go Daddy Software, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2006.
On May 23, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <mysouthernhighlands.com> domain name is registered with Go Daddy Software, Inc. and that 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 May 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 19, 2006 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@mysouthernhighlands.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 21, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant specializes
in planning, laying out, constructing and managing residential
communities.
In connection with
its real estate services, Complainant holds numerous trademark registrations
with the United States Patent and Trademark Office (“USPTO”), including the
SOUTHERN HIGHLANDS mark (Reg. No. 2,341,729, issued April 11, 2000).
Respondent registered the <mysouthernhighlands.com> domain name on March 18, 2005.
The disputed domain name resolves to a website sponsored by
a Realtor that promotes the buying and selling of real estate within
Complainant’s Southern Highlands master planned community.
Respondent’s <mysouthernhighlands.com> domain name is confusingly similar to Complainant’s SOUTHERN HIGHLANDS mark.
Respondent does not have any rights or legitimate interests in the domain name <mysouthernhighlands.com>.
Respondent registered and uses the <mysouthernhighlands.com> disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. 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.
Complainant has established rights in the SOUTHERN HIGHLANDS mark through registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.” See also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002): “Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”
Complainant contends that the <mysouthernhighlands.com> domain name is confusingly similar to Complainant’s SOUTHERN HIGHLANDS mark. The disputed domain name contains Complainant’s mark in its entirety, and merely adds the generic term “my” and omits a space between the words “southern” and “highlands.” Neither the addition of “my” nor the omission of spaces between words sufficiently differentiate the disputed domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See ESPN, Inc. v. MySportCenter.com, FA 95326 (Nat. Arb. Forum Sept. 5, 2000) (finding that the “domain name MYSPORTSCENTER.COM registered by Respondent is confusingly similar to Complainant’s SportsCenter mark”); see also Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003):
Punctuation and spaces between words are not significant in determining
the similarity of a domain name and a mark because punctuation and spaces are
not reproducible in a domain name.
The Panel therefore finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <mysouthernhighlands.com> domain name. Under Policy ¶ 4(a)(ii), the burden rests with Complainant to prove that Respondent lacks legitimate rights and interests in the disputed domain name. Through uncontested assertion in its Complaint, Complainant has established a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. The burden therefore shifts to Respondent to present evidence establishing that Respondent has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts
to Respondent. Respondent’s failure to respond means that Respondent has not
presented any circumstances that would promote its rights or legitimate
interests in the subject domain name under Policy ¶ 4(a)(ii).
Put another way, Respondent’s failure to reply to the Complaint raises a presumption that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where a respondent fails to respond); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, a respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). However, the Panel nonetheless elects to examine the record to determine if there is any basis for making a determination that Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
In this connection, we first note
that Complainant asserts, and Respondent does not deny, that Respondent’s
domain name resolves to a website that promotes the services of a real estate
agent purporting to assist individuals in the buying and selling of real estate
within Complainant’s Southern Highlands planned residential community. The Panel concludes that Respondent’s use of
a confusingly similar domain name to divert Internet users to its own
commercial website that promotes real estate services does not amount to a bona
fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
fair use under 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 a respondent attempted
to profit using a complainant’s mark by redirecting Internet traffic to its own
website).
Furthermore, the WHOIS
database lists the registrant as
“MyOnlineNeighborhood Inc,” and, because there is no evidence in the record to
suggest otherwise, the Panel concludes that Respondent is not commonly known by the <mysouthernhighlands.com>
domain name within the meaning of Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003):
Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.
See also Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have
rights in a domain name when that respondent is not known by the mark).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <mysouthernhighlands.com> domain
name resolves to a website that promotes the services of a real estate
agent. Based on Complainant’s
uncontested assertions, the panel presumes that Respondent commercially
benefits from the promotion of such services.
Moreover, the Panel concludes that Respondent’s use of a domain name
containing Complainant’s mark in its entirety with the mere addition of a
generic term will likely cause confusion as to Complainant’s possible
sponsorship of or affiliation with the resulting website. The Panel therefore finds that Respondent’s
registration and use of the disputed domain name to divert Internet users for
commercial gain from the goodwill associated with Complainant’s mark evidences
bad faith pursuant to Policy ¶ 4(b)(iv).
See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where a respondent directed Internet users
seeking a complainant’s site to its own website for commercial gain); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where a respondent
registered the domain name <bigtex.net> to infringe on a complainant’s
goodwill and attract Internet users to that respondent’s website).
Finally under this heading, it appears that Respondent
registered the contested domain name with either actual or constructive
knowledge of Complainant’s rights in the SOUTHERN HIGHLANDS mark by virtue of
Complainant’s prior registration of that mark with the pertinent national
authorities. Registration and use of a
confusingly similar domain name despite such actual or constructive knowledge
evidences bad faith registration and use of the domain name pursuant to Policy
¶ 4(a)(iii). See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb.
Forum Oct. 4, 2002).
For these reasons, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief must be GRANTED.
Accordingly, it is Ordered that the <mysouthernhighlands.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 27, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum