American Newland Communities L.P. v. Jason Maniecki PA
Claim Number: FA0607000765698
Complainant is American Newland Communities L.P. (“Complainant”), represented by Christina J. Hieber, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 901 New York Avenue NW, Washington, DC 20001. Respondent is Jason Maniecki PA (“Respondent”), 8855 Dr. MLK Jr Street North, Saint Petersburg, FL 33702.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2006.
On August 1, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August 4, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 24, 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@mirabayhomes.com, postmaster@mirabayrealestate.com and postmaster@mirabayrealty.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 31, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com> domain names are confusingly similar to Complainant’s MIRABAY mark.
2. Respondent does not have any rights or legitimate interests in the <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com> domain names.
3. Respondent registered and used the <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, American Newland Communities L.P., is a leading
developer of master-planned communities in the United States. Complainant operates over 40 master-planned
community developments on over 75,000 acres of land across the nation,
including the MIRABAY community in Tampa Bay, Florida. In connection with the operation of the
MIRABAY community, Complainant holds a trademark registration for the MIRABAY
mark (Reg. No. 2,696,268 issued March 11, 2003) with the United States Patent
and Trademark Office (“USPTO”).
Complainant originally filed the registration for the MIRABAY mark with
the USPTO on June 30, 2000.
Respondent registered the <mirabayhomes.com> and <mirabayrealestate.com> domain names on May 22, 2002 and the <mirabayrealty.com> domain name on May 24, 2002. The <mirabayhomes.com> and <mirabayrealestate.com> domain names resolve to websites that display Respondent’s contact information as a RE/MAX real estate agent and feature links to Respondent’s commercial real estate website. The <mirabayrealty.com> domain name resolves to a website that displays the phrase “Welcome to the temporary site of: www.mirabayrealty.com” and features advertisements.
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has established rights in the MIRABAY mark
through registration of the mark 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 Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003) (“Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.”).
Complainant’s rights in the MIRABAY mark date back to the original June
30, 2000 filing date of the trademark registration, approximately 2 years prior
to Respondent’s registration of the disputed domain names. See Planetary Soc’y v. Rosillo,
D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of
Complainant’s trademark rights date back to the application’s filing date); see
also Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As
Complainant's filing date for its valid registration of the NAF NATIONAL
ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and
Trademark Office predates Respondent's registration of the disputed domain name
by over a year, this registration is additional evidence of Complainant's
rights in the mark.”).
Complainant asserts that the disputed domain names are
confusingly similar to its MIRABAY mark.
Under Policy ¶ 4(a)(i), it is a common understanding that a domain name
is confusingly similar to a mark when it contains the mark in its entirety and
merely adds a term that either relates to or describes the business of the
entity with rights to the mark.
Accordingly, pursuant to Policy ¶ 4(a)(i), the Panel finds the <mirabayhomes.com>,
<mirabayrealestate.com> and <mirabayrealty.com>
domain names to be confusingly simlar to Complainant’s MIRABAY mark because
they contain the mark in its entirety and merely add terms that either relate
to or describe Complainant’s real estate development services. See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also
Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that the respondent’s domain name <marriott-hotel.com> is
confusingly similar to the complainant’s MARRIOTT mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant holds the initial burden to make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names. Once such a showing is successfully made, the burden shifts to Respondent to affirmatively prove that it does have rights or legitimate interests in the disputed domain names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the 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).”). The Panel finds that Complainant has successfully made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain names through its uncontested assertions in the Complaint.
Respondent’s failure to submit a Response in this proceeding suggests that it lacks rights and legitimate interests in the disputed domain names. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). The Panel, however, chooses to examine the record to determine if Respondent has rights or legitimate interests in any of the disputed domain names.
Complainant asserts that Respondent is not commonly known by
any of the disputed domain names.
According to the WHOIS database, the registrant of the disputed domain
names is either “Jason Maniecki” or “Jason Maniecki PA,” neither of which make
any indication that Respondent is commonly known by the any of the disputed
domain names. Because there is no other
evidence in the record to indicate otherwise, the Panel must find that
Respondent is not commonly known by the any of the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See
Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating
“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly
known by’ the disputed domain name” as one factor in determining that Policy ¶
4(c)(ii) does not apply); see also Am. Online, Inc. v. World Photo Video
& Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that
the respondent was not commonly known by <aolcamera.com> or
<aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
Complainant further asserts Respondent is not using the
disputed domain names in connection with a bona fide offering of goods
or services or for a legitimate noncommercial use. The <mirabayhomes.com> and <mirabayrealestate.com>
domain names resolve to websites that display Respondent’s contact
information as a RE/MAX real estate agent and feature links to Respondent’s
commercial real estate website. The
Panel finds that Respondent’s use of the aforementioned domain names that are
confusingly similar to Complainant’s mark for the purpose of promoting its own
commercial real estate website neither qualifies as a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimation
noncommercial use pursuant to Policy ¶ 4(c)(iii). See Pitney Bowes
Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or
legitimate interests in the <pitneybowe.com> domain name where the
respondent purports to resell original Pitney Bowes equipment on its website,
as well as goods of other competitors of the complainant); see also 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).”).
Additionally, the <mirabayrealty.com> domain
name resolves to a website that displays the phrase “Welcome to the temporary
site of: www.mirabayrealty.com” and features advertisements. The Panel accepts that Respondent’s use of
the confusingly similar domain name to display a placeholder web page with
advertisements for over four years as evidence that Respondent has failed to
use the disputed domain name in connection with a bona fide offering of
goods or services persuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
use persuant to Policy ¶ 4(c)(iii). See
S. Co. v. Doms, D2000-0184 (WIPO May 8, 2000) (“While Respondent’s June 14,
1999, e-mail message makes reference to its ‘global long-term development and
communication plans,’ there is no evidence in the record to support a
determination of Respondent’s 'use of, or demonstrable preparations to use,'
the domain name, within the meaning of [Paragraph 4(c)(i)] of the Policy.”); see
also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (holding that the respondent’s use of the disputed domain name to host a
series of hyperlinks and a banner advertisement was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant asserts that Respondent has registered
and used the disputed domain names in bad faith. The Panel concludes that Respondent’s use of the disputed domain
names that are confusingly similar to Complainant’s MIRABAY mark creates a
likelihood of confusion as to Complainant’s sponsorship of or affiliation with
the resulting websites. Accordingly,
the Panel finds that Repondent’s use of the <mirabayhomes.com> and
<mirabayrealestate.com> domain names to divert Internet users to
its own commercial website that promots real estate services that compete with
Complainant evidences bad faith pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of
the <saflock.com> domain name to offer goods competing with the
complainant’s illustrates the respondent’s bad faith registration and use of
the domain name, evidence of bad faith registration and use pursuant to Policy
¶ 4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the complainant’s
famous mark).
Additionally, the Panel finds that Respondent’s use
of the <mirabayrealty.com> to display advertisements, from which
Respondent presumably receives referral fees, also evidences bad faith pursuant
to Policy ¶ 4(b)(iv). See Philip
Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the
respondent’s registration of an infringing domain name to redirect Internet
users to banner advertisements constituted bad faith use of the domain name); see
also Bama Rags, Inc. v. Zuccarini,
FA 94381 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the respondent
used a misspelling of the complainant’s famous mark to attract Internet users
to a series of advertisements).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <mirabayhomes.com>, <mirabayrealestate.com> and <mirabayrealty.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: September 13, 2006
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