Southern Land Company, LLC v. Lisa Alyn / Benchmark Realty
Claim Number: FA1403001547956
Complainant is Southern Land Company, LLC (“Complainant”), represented by Mari-Elise Taube of STITES & HARBISON, PLLC, Tennessee, USA. Respondent is Lisa Alyn / Benchmark Realty (“Respondent”), represented by Gregory D. Latham of Intellectual Property Consulting, LLC, Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <westhavenfranklin.com> and <westhavenfranklin.net>, registered with GoDaddy.com, LLC.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2014; the National Arbitration Forum received payment on March 11, 2014.
On March 11, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <westhavenfranklin.com> and <westhavenfranklin.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 March 12, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 2014 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@westhavenfranklin.com, postmaster@westhavenfranklin.net. Also on March 12, 2014, 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.
A timely Response was received and determined to be complete on April 1, 2014.
A timely Additional Submission by Complainant was received and determined to be complete on April 7, 2014.
A timely Additional Submission by Respondent was received and determined to be complete on April 14, 2014,
On April 10, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
i. Complainant, Southern Land Company, LLC, is a national community developer with expertise in the creation, design, and construction of retail, commercial, apartment homes, and residential community developments.
ii. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WESTHAVEN mark (e.g., Reg. No. 3,101,151, registered June 6, 2006).
iii. Respondent’s <westhavenfranklin.com> and <westhavenfranklin.net> domain names are confusingly similar to Complainant’s WESTHAVEN mark.
i. Respondent has no rights or legitimate interests with respect to the disputed domain names.
ii. Respondent is not commonly known by the disputed domain names.
iii. Respondent uses the disputed domain names to redirect Internet users to a competing website promoting Respondent’s real estate services.
i. The disputed domain names were registered and used by Respondent in bad faith.
ii. Respondent registered the disputed domain names primarily to disrupt Complainant’s business.
iii. Respondent is using the disputed domain names with the intent to attract users for commercial gain by creating confusion with Complainant’s mark.
iv. Respondent was aware of Complainant’s mark at the time of registration.
4. v. There are no legal proceedings that have been commenced or terminated in connection with or related to the domain names that are in dispute.
i. There are clear differences between Complainant’s trademark and Respondent’s domain names. “Westhaven” is the name of a geographical area about twenty miles south of Nashville, Tennessee.
i. Respondent uses the disputed domain names in connection with its real estate agent services in the community of Westhaven, Tennessee.
i. Respondent did not register the disputed domain names to disrupt Complainant’s business.
ii. Respondent does not use the disputed domain names to create confusion.
i. Respondent used the disputed domain names to offer its real estate services for nearly a year before Complainant’s notice of dispute. Complainant admitted that it was aware of Respondent’s use of the domain names to promote its real estate services.
i. Complainant has established trademark rights and common law rights in the WESTHAVEN mark that predate Respondent’s registration of the disputed domain names.
ii. Respondent and its counsel are mistaken as to the basic fact that WESTHAVEN is a town, municipality, or other governmental or territorial entity. WESTHAVEN is a planned community developed and managed as a business by Complainant.
iii. Coined location names are never considered “geographic” within the ordinary rules of trademark law.
i. Respondent simply lives in the WESTHAVEN community, which was created by Complainant and is a coined term.
i. Respondent is using Complainant’s mark to offer identical real estate services.
ii. Respondent is intentionally redirecting Internet users to Respondent’s website for her own commercial gain. These Internet users are very likely to confuse Respondent as being an affiliate or licensed representative of Complainant’s WESTHAVEN brand.
D. Respondents Additional Submission
1. Complainant asserts that all three of the UDRP factors can be
decided in favor or Complainant because the domain names
include the term "Westhaven."
2. Complainant's purported "Supplemental Facts" are nothing more
than unsubstantiated, conclusory allegations.
3. Whether Complainant has any Trademark Rights cannot be
determined on the basis of the UDRP record.
4. Westhaven is not a "coined" term. It is a geographical term.
5. Complainant's new assertions of common law rights should not
be considered as it was not mentioned in the original complaint
and is presented for the first time in Complainant's Additional
Submission. This is an attempt to amend its Complaint to add a
new basis for it's rights which is prohibited by Rule 7(f) of the
Forum’s Supplemental Rules.
6. Respondent use prior to this dispute establishes legitimate interests and rights.
7. Complainant fails to provide any evidence of bad faith.
Procedural Issue: Concurrent Court Proceedings
Respondent claims that on February 6, 2014, it filed a cancellation petition with the USPTO for the removal of Complainant’s WESTHAVEN trademark. Respondent believes the trademark is merely geographically descriptive. Respondent believes it has rights and legitimate interests in this domain name that cannot be questioned until the USPTO proceedings are concluded.
Complainant claims that Respondent’s cancellation proceeding has no effect on the current case. Complainant notes that Respondent’s cancellation pertains only to Class 36 registration, and as such any “cancellation” would end with Complainant retaining USPTO registration for WESTHAVEN in Classes 37, 42, and 44. Complainant states that Respondent is mistaken as to the basic fact that WESTHAVEN, as a “town,” never existed but for Complainant’s decision to incorporate a business, file for a trademark for WESTHAVEN, and then build a community under that WESTHAVEN mark. Complainant maintains that WESTHAVEN is not an ordinary geographic term (e.g., New York or London) because WESTHAVEN has no meaning beyond identifying the particular area in Tennessee where Complainant develops, manages, and sells interests in real property. Complainant has provided a copy of Respondent’s cancellation petition. See Compl. Addt’l Sub., at Attached Ex. B. Complainant does not believe that the effect of the USPTO cancellation hearing will actually have a serious impact in respect to Complainant’s rights to police the use of the WESTHAVEN mark by third-parties on the Internet.
Despite the fact that these proceedings to cancel Complainant's Registered Trademarks were filed and pending, Complainant did not identify the existence of these proceedings in its original Complaint. In fact, Complainant stated in its original complaint that there were no other legal proceedings that have been commenced or terminated in connection with or relating to the domain names that are the subject of the Complaint. In its original Complaint, Complainant based its claim of rights and legitimate interests in the domain name on its registration of the trademark which is the subject of this case. The Rules, ¶ 3 (b)(xi) provide that Complainant must identify in its Complaint any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain names that are the subject of the complaint. Certainly, if Respondent prevails in its efforts to cancel Complainant's trademark registration, that would be relevant in this proceeding. The fact that Complainant omitted to identify the existence of the proceedings in relation to the validity of Complainant's trademark rights, is questionable.
Rule ¶ 18 (a) allows the Panel the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
In situations where concurrent court proceedings are pending, as is the situation with respect to the instant Complaint, some panels have chosen to proceed with the UDRP filing. See eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007) (holding that the panel could decide the dispute under Rule 18(a) of the Policy “since the legal proceedings referred to by the parties appear to be concluded and Orders made. Moreover,… those Orders do not touch directly on the disposition of the disputed domain name or on the parties’ intellectual property rights.”).
Alternatively, other panels have chosen not to proceed with the UDRP because of the pending litigation. See AmeriPlan Corp. v. Gilbert FA105737 (Nat. Arb. Forum Apr. 22, 2002) (Regarding simultaneous court proceedings and UDRP disputes, Policy ¶ 4(k) requires that ICANN not implement an administrative panel’s decision regarding a UDRP dispute “until the court proceeding is resolved.” Therefore, a panel should not rule on a decision when there is a court proceeding pending because “no purpose is served by [the panel] rendering a decision on the merits to transfer the domain name, or have it remain, when as here, a decision regarding the domain name will have no practical consequence.”).
The present proceedings are summary proceedings that were never intended to serve as a vehicle for adjudication of traditional trademark disputes. See Family Watchdog LLC v. Lester Schweiss, No. D2008-0183 (WIPO April 23, 2008). The domain name dispute in this case is ancillary to the trademark dispute that was filed prior to the filing of the Complaint in the present proceedings.
This panel is of the opinion that this proceeding be terminated pursuant to the Rules, ¶ 18(a), without expressing a view as to the respective merits of the case and without prejudice to the filing of a future complaint after the other legal proceedings have been resolved.
For the reasons stated above, the Complaint is dismissed.
Daniel B. Banks, Jr., Panelist
Dated: April 18, 2014
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