national arbitration forum

 

DECISION

 

Amistad Lake Realty, LLC v. Lisa Craig

Claim Number: FA0704000964674

 

PARTIES

Complainant is Amistad Lake Realty, LLC (“Complainant”), represented by Polo Gonzalez, of Langley & Banack, Incorporated, 745 E. Mulberry, Suite 900, San Antonio, TX 78212.  Respondent is Lisa Craig (“Respondent”), P O Box 99800, Emeryville, CA 94662.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <amistadlakerealty.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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.

 

James A. Carmody, Esq.,  as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 20, 2007.

 

On April 19, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <amistadlakerealty.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  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 April 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 2007 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@amistadlakerealty.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On May 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <amistadlakerealty.com> domain name is identical to Complainant’s AMISTAD LAKE REALTY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <amistadlakerealty.com> domain name.

 

3.      Respondent registered and used the <amistadlakerealty.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the owner of the real estate business entity, Amistad Lake Realty, LLC, servicing properties on or near the Lake Amistad and Del Rio, Texas area.  Complainant uses the AMISTAD LAKE REALTY mark to identify and distinguish its properties and real estate services.  Complainant also operates a website at the <amistadlakerealtyonline.com> domain name.  Complainant has provided the uncontroverted affidavit of C. Patrick Ellis, the member-manager of Amistad Lake Realty, LLC., which indicated that Complainant has established common law rights in the AMISTAD LAKE REALTY mark through the development, promotion, and advertisement of goods and services sold and offered for sale under the AMISTAD LAKE REALTY mark. 

 

Respondent registered the <amistadlakerealty.com> domain name on March 11, 2006.  Respondent’s disputed domain name redirects Internet users to the <cadenarealty.com> website, promoting goods and services of one of Complainant’s direct competitors in the real estate industry.  Further, Respondent has offered to sell Complainant the disputed domain name for $14,000.00.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Pursuant to Policy ¶ 4(a)(i), it is not essential that Complainant own a trademark registration to establish rights in the AMISTAD LAKE REALTY mark.  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 SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist).

 

Complainant has alleged and evidenced by affidavit its common law rights in the AMISTAD LAKE REALTY mark through its use of the mark in connection with a real estate business in the Lake Amistad and Del Rio, Texas area.  Complainant has also stated that it operates a website at the <amistadlakerealtyonline.com> domain name.  There being no opposition from Respondent, the Panel accepts as true all of Complainant’s assertions.  Accordingly, the Panel concludes Complainant’s AMISTAD LAKE REALTY mark has acquired a secondary meaning sufficient to establish common law rights in the mark.  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).

 

Because Respondent’s <amistadlakerealty.com> domain name simply pairs the Complainant’s AMISTAD LAKE REALTY mark with the “.com” top-level domain, the Panel concludes the disputed domain name is identical to Complainant’s AMISTAD LAKE REALTY mark.  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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges Respondent lacks rights and legitimate interests in the <amistadlakerealty.com> domain name.  Complainant bears the initial burden of proof in establishing a lack of rights or legitimate interests in the disputed domain name.  Once Complainant has set forth a prima facie showing, the burden then shifts to the Respondent to prove Respondent holds rights or legitimate interests in the <amistadlakerealty.com> domain name pursuant to Policy ¶ 4(a)(ii).  See 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).

 

Respondent’s failure to respond to Complainant’s allegations permits the Panel to infer Respondent holds no rights or legitimate interests in the <amistadlakerealty.com> domain name.  See 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); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise); see also 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).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).

 

Further, Respondent’s WHOIS information does not suggest Respondent is commonly known by the disputed domain name.  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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).

 

Additionally, Respondent’s <amistadlakerealty.com> domain name, incorporating Complainant’s AMISTAD LAKE REALTY mark it its entirety, reroutes to the website of one of Complainant’s direct competitors in the real estate industry, likely to confuse Internet users attempting to reach Complainant.  See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).  The Panel infers from Respondent’s registration and use of the <amistadlakerealty.com> domain name that Respondent is attempting to commercially benefit from the association with Complainant’s AMISTAD LAKE REALTY mark to sell competing products and services.  As a result, the Panel finds such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or 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 Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Based on the uncontested evidence presented by Complainant, the Panel infers Respondent’s registration and use of the <amistadlakerealty.com> domain name to redirect Internet users to Complainant’s competitor amounts to bad faith registration and use under Policy ¶ 4(b)(iii) by disrupting Complainant’s business through intentional diversion.  See S. Exposure v. S.  Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).

 

The Panel further finds Respondent’s use of the disputed domain name to link Internet users to a commercial site offering goods and services in direct competition with Complainant amounts to bad faith registration and use for commercial gain under Policy ¶ 4(b)(iv).  Respondent’s use of the <amistadlakerealty.com> domain name is capable of creating a likelihood of confusion with Complainant’s AMISTAD LAKE REALTY mark while redirecting Internet users to Respondent’s own commercial site.  See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum 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).

 

Additionally, Respondent has offered to sell the <amistadlakerealty.com> domain name to Complainant for $14,000.00.  The Panel infers that such an offer to sell the disputed domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

 

The Panel finds Complainant has satisfied 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 <amistadlakerealty.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  June 6, 2007

 

 

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