The Related Companies, L.P. v GRUPO SA Ltd Co
Claim Number: FA1206001450135
Complainant is The Related Companies, L.P. (“Complainant”), represented by Gianni P. Servodidio of Jenner & Block, New York, USA. Respondent is GRUPO SA Ltd Co (“Respondent”), represented by Gary N. Schepps, Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <relatedrealty.com>, registered with NameSilo, LLC.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 22, 2012; the Forum received payment on June 22, 2012.
On January 10, 2020, NameSilo, LLC confirmed by e-mail to the Forum that the <relatedrealty.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@relatedrealty.com. Also on January 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2020, pursuant to Complainant's request to have the dispute decided by a three-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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
Complainant, The Related Companies, L.P. is in the business of offering an array of real estate services, including brokerage, leasing, property management, and real estate development. Complainant has rights in the trademark RELATED, and other trademarks that include this word such as RELATED COMPANIES, RELATED HI-TECH HOME, RELATED RENTALS, RELATED SIGNATURE SERVICES, and others, through its use in commerce dating back to the 1970’s and its registration of these marks with the United States Patent and Trademark Office (“USPTO”), the earliest of which is dated April 26, 2005. Furthermore, Respondent’s <relatedrealty.com> domain name, first created on December 13, 2005, is confusingly similar to Complainant’s RELATED mark as Respondent merely adds the descriptive term “realty” and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondents has no rights or legitimate interests in the <relatedrealty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s RELATED mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely hosting hyperlinks to businesses that compete with Complainant on the website that resolves from the disputed domain name.
Respondent registered the disputed domain name in bad faith. Specifically, Respondent is hosting competing hyperlinks to disrupt Complainant’s business and attract Internet users for commercial gain. Additionally, Respondent had actual or constructive knowledge of Complainant’s rights in the RELATED mark at the time of registration.
B. Respondent
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;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
PROCEDURAL MATTER
As noted above, the original Complaint in this case was filed in 2012. The Forum previously stayed administration of this case due to an Order Appointing Receiver dated November 24, 2010, issued by the United States District Court for Northern District of Texas (District Court). One or more of the named Respondents in this UDRP proceeding were among the named Receivership Parties or were a related entity. It is now the understanding of the Forum that the domain name which is subject to the current dispute has been transferred and is no longer subject to receivership. The length of time that has passed between the original filing date and the commencement of this action will in no way be viewed negatively towards either party.
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."
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.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has rights in the RELATED mark through its registration of the mark with the USPTO. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”) Therefore, the Panel finds that the Complainant has rights in the RELATED mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <relatedrealty.com> domain name is confusingly similar to Complainant’s mark as Respondent merely adds the descriptive term “realty” and the “.com” gTLD. Adding a descriptive term and a gTLD to an otherwise fully incorporated mark may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”) Therefore, the Panel finds that Respondent’s <relatedrealty.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <relatedrealty.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. In considering this issue, relevant WHOIS information can be used as evidence to show whether a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes that the WHOIS of record identifies the Respondent as “GRUPO SA Ltd Co” and no information in the record indicates that Respondent is known otherwise or that it was authorized to use Complainant’s mark. Therefore, on the evidence before it and in the absence of any Response or other submission by the Respondent, the Panel finds that Respondent is not commonly known by the disputed domain name and thus has no rights or legitimate interests in the <relatedrealty.com> domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent fails to use the <relatedrealty.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely hosting competing hyperlinks at the disputed domain name’s website. Using a disputed domain name to host competing third party pay-per-click links may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”) Here, Complainant provides a screenshot of the <relatedrealty.com> domain name’s resolving webpage which shows third-party links such as those titled “Homes for Sale” and “Rent To Own Homes,” which appear to offer services that are similar to Complainant’s services. Therefore, the Panel finds that Respondent fails to use the <relatedrealty.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent had knowledge of Complainant’s rights in the RELATED mark at the time of registering the <relatedrealty.com> domain name. The Panel will here disregard arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge except where the parties are domiciled in jurisdictions where such legal theory is recognized. While the Whois record, as revealed by the concerned registrar, lists Respondent’s address in Dallas, Texas, the Panel perceives this as the address of a privacy service employed by Respondent. The use of the terms “SA Ltd.” in Respondent’s name leads this Panel to suspect that it is not, in fact, domiciled in the United States. Nevertheless, UDRP jurisprudence does hold that a respondent’s actual knowledge of a complainant’s trademark can suffice to form the foundation of a bad faith ruling. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel is free to consider the reputation of RELATED marks in determining whether Respondent had actual knowledge of Complainant's rights in such marks prior to registering the disputed domain name and actual knowledge can adequately support bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to the fame of its marks built over the last few decades and it submits into evidence a Bloomberg news article dated November 14, 2000 which discusses a $1.7 Billion project involving the construction of two 55-story towers in New York City. Also submitted, is a 2002 list of awards that have been won by Complainant. The Panel finds that this evidence, combined with the screenshot of Respondent’s website displaying monetized links to some of Complainant’s competitors, supports Complainant’s contention that its marks are well-known. As such, the Panel finds, by a preponderance of the evidence (i.e., more likely than not) that Respondent did have actual knowledge of Complainant’s right in its mark at the time it registered or acquired the disputed domain name.
Complainant next argues that Respondent registered and uses the disputed domain name in bad faith. Specifically, Respondent is hosting competing hyperlinks to disrupt Complainant’s business and attract Internet users for commercial gain. Registering a disputed domain name to merely host competing pay-per-click hyperlinks to disrupt a complainant’s business and attract Internet users for commercial gain may be evidence of bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent's use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”) Here, Complainant provides a screenshot of the <relatedrealty.com> domain name’s resolving webpage which shows links such as “Homes for Sale” and “Rent To Own Homes”, services that directly compete with Complainant’s services. As noted, Respondent has failed to submit any pleading or evidence to counter Complainant’s assertion. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <relatedrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: February 13, 2020
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