Regency Towers Owners’ Association, Inc. v. Atul Rawat
Claim Number: FA1504001613466
Complainant is Regency Towers Owners’ Association, Inc. (“Complainant”), represented by Amber N. Davis of Beusse Wolter Sanks Mora & Maire, P.A., Florida, USA. Respondent is Atul Rawat (“Respondent”), represented by Lacey Corona, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <regency-towers.net>, registered with BigRock Solutions Ltd.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 8, 2015; the Forum received payment on April 8, 2015.
On April 9, 2015, BigRock Solutions Ltd. confirmed by e-mail to the Forum that the <regency-towers.net> domain name is registered with BigRock Solutions Ltd. and that Respondent is the current registrant of the name. BigRock Solutions Ltd. has verified that Respondent is bound by the BigRock Solutions Ltd. 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 April 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 11, 2015 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@regency-towers.net. Also on April 10, 2015, 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 May 11, 2015.
Complainant submitted a timely Additional Submission, which was received on May 18, 2015.
On May 22, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Respondent submitted a timely Additional Submission, which was received on May 26, 2015.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant was incorporated in April 1975 and at that time began using the word mark REGENCY TOWERS in connection with its business of property management and vacation rental services at the Regency Towers condominium property. It created a website at <www.regencytowers.net> in 1999 and has used that domain name and website since then in connection with its operations. It registered its logo with the State of Florida in October 2004 (Registration No. T09000001114 for “vacation rentals” and “rental property management.” Due to its continuous and significant use of these marks in commerce, they have become distinctive in the marketplace and Complainant has established common law rights in them.
Late in 2012 Complainant entered into an arrangement with Vacation Nation LLC, d/b/a Vacation Place Rentals (“VPR”) for the latter to redesign Complainant’s website and to take over the vacation rentals side of its business. VPR is in the business of managing vacation rentals and has its own website at <vacationplacerentals.net>. Complainant supplied all of the content for the website. This arrangement lasted until late in 2014, when Complainant decided to bring the property management and vacation rental operations back in house.
Complainant believes that Respondent is a graphic artist or web designer engaged by VPR for this project.
On December 26, 2014 Respondent registered the <regency-towers.net> domain name (the “Domain Name”). VPR and/or Respondent also created a new website resolving from the Domain Name that was very similar to Complainant’s website, including the same written content, same color scheme and many of the same photos. For a time after VPR’s new website was created, Complainant’s website directed Internet traffic addressed to Complainant’s website to VPR’s new website at the Domain Name, but then it disappeared altogether.
When Complainant challenged VPR about these problems, VPR asserted that its actions were legal. It also put Complainant in touch with Respondent, who is located in India, to assist in recovering Complainant’s old website.
The Domain Name is confusingly similar to the mark, because it contains the entire word mark REGENCY TOWERS and differs only by the addition of a hyphen and the generic top-level domain (“gTLD”) “.net.”
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known as the Domain Name, nor is Respondent a licensee of Complainant. Further, the Domain Name resolves to a webpage that displays competing services, i.e., brokerage and management of rental units in the Regency Towers condominium property, which is not consistent with a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name.
Respondent has engaged in bad faith registration and use. Respondent is disrupting Complainant’s business and attempting to benefit commercially from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s trademark rights when he registered the Domain Name.
B. Respondent
Instead of filing a Response as such, Respondent filed a Notice of Concurrent Litigation and Request to Terminate/Dismiss Proceeding, in which he notified the Panel and the Complainant that his entitlement to the <regency-towers.net> domain name is the subject of a concurrent court proceeding, and asks the Panel to dismiss this Complaint, as proceeding forward would be redundant. Respondent attached a copy of its complaint in the concurrent court case as Exhibit 1 to its Notice. That complaint asserts, among other things, that Respondent and VPR are entitled to register and use the Domain Name.
Respondent further asserts that the Domain Name dispute between the parties to this proceeding is part of a larger business and contractual dispute involving Complainant, another corporation organized and controlled by it, VPR and Respondent, and involving additional claims including breach of contract, quantum meruit and unfair competition. Respondent states that there are disputed factual issues that cannot be adequately resolved in a UDRP proceeding. He also alleges that Complainant lacks standing under Florida condominium law and has not been property authorized by its constituent members to bring this proceeding.
As to the issues raised by the Complaint, Respondent asserts that the term “Regency Towers” appears ubiquitously on the internet. The regency-towers.net> Domain Name is not confusingly similar to the alleged mark because, in this crowded field, minor variations are sufficient to avoid confusion; consumers are likely to be discerning about their choices.
Respondent has rights or legitimate interests in the Domain Name. The Domain Name is being used in connection with a legitimate business, and therefore Respondent is making a bona fide offering of goods or services. Respondent’s Domain Name merely describes the location of the rental units managed by Respondent and/or VPR at the Regency Towers condominium building. The website resolving from the Domain Name clearly indicates that the owner of the website, and the entity managing the rental units, is ”Vacation Place Rentals” and not the Complainant. Thus, Respondent is using the Domain Name in connection with a bona fide offering of services and is making fair use of it.
Complainant is a condominium owners’ association, which under Florida law is organized as a non-profit corporation. According to its Complaint, however, it uses its domain name <regencytowers.net>, and is claiming the Domain Name, for the purpose of promoting its vacation rentals business, which is clearly a profit-making venture. There is another, for-profit corporation called Regency Towers Enterprises, Inc. (“RTE”), which was created to conduct the vacation rental business. It is this entity that actually uses the <regencytowers.net> domain name, and which should be the party bringing this claim for the Domain Name. Complainant is not the real party in interest as regards this Complaint and has no standing to bring the case.
Under Florida corporation law, as a condominium owners’ association, Complainant may bring actions or proceedings only on behalf of all unit owners concerning matters of common interest. Most unit owners do not rent their units, so bringing this proceeding is beyond Complainant’s corporate authority.
Respondent does not make specific contentions with regard to Policy ¶ 4(a)(iii).
C. Complainant’s Additional Submission
In its additional submission, Complainant argues that the lawsuit was filed in bad faith as a way to dismiss this UDRP case. The complaint in the concurrent court case was filed the same day that Respondent’s response (in this proceeding) was due. Further, the defendants in the court case (including Complainant) have yet to be served.
The concurrent court case involves issues not related to this proceeding, and therefore the Panel should not dismiss this Complaint. The domain name dispute can be resolved in this UDRP proceeding independently of the other issues involved in the parties’ business relationship, on the facts presented by the parties in this proceeding. The Panel should exercise its discretion in favor of doing so because to delay resolution of the domain name issues pending resolution of the others enables the Respondent to avoid the prompt relief available under the UDRP.
Complainant has been using the name “Regency Towers” to conduct its property management business since 1975. REGENCY TOWERS is not a descriptive or generic term requiring secondary meaning.
Respondent cannot claim fair use of Complainant’s mark in the Domain Name. The “fair use” doctrine does not give one the right to register another party’s identical trademark as a domain name.
The home page of the website resolving from the Domain Name is very similar in appearance to Complainant’s website resolving from its domain name, <regencytowers.net>. Since the commencement of this case, Respondent’s website has been changed to distinguish VPR from Complainant, but this is primarily evidence of Respondent’s attempts to mislead the Panel and further demonstrates Respondent’s bad faith.
As the owner of the REGENCY TOWERS mark, Complainant has standing to bring and maintain this proceeding. Florida non-profit corporations have broad authority to deal with their property. There is nothing illegal about a non-profit corporation creating a wholly owned for-profit subsidiary, which Complainant has done with RTE. It is neither illegal nor uncommon for a condominium association to receive non-assessment revenue.
The benefits of the arrangement between Complainant and RTE flow to every owner in the community. Even those owners renting their units through other rental programs benefit from the net profits generated from RTE. Therefore, this matter is of concern to the entire community. Complainant’s board of directors expressly authorized the filing of this proceeding. The only party that might be able to challenge this decision would be a unit owner, not Respondent.
C. Respondent Additional Submission
The Policy expressly provides for a respondent to have its matter determined by a court, and Respondent has amply demonstrated good cause for that to happen in this case.
Complainant, acting through legal counsel other than the counsel representing it in these proceedings, has accepted service of the pleadings in the concurrent court case.
The concurrent court case involves the same claims and seeks the same relief as the UDRP case, i.e., ownership and control of the Domain Name.
Complainant has alleged claims for trademark infringement, which are not appropriate for resolution in a UDRP proceeding. Disputed facts surrounding the parties’ prior business arrangements are complex and are not suitable for resolution in a UDRP case.
The words “Regency Towers” are descriptive of the geographical location of the rental units managed by Complainant. Complainant has not demonstrated that they have any secondary meaning that would entitle Complainant to trademark rights in them.
Complainant’s state registration is for a logo only, not the words “Regency Towers,” and the registration does not give any exclusive right to use the generic words per se.
There is extensive third-party use of the words “Regency Towers.” Many other entities are using “Regency Towers “ to describe their condominiums.
Respondent is making fair use of “Regency Towers” to describe the location of the rental units it manages. Its website clearly states that Vacation Place Rentals is operating the site, not Complainant.”
Complainant has not submitted any evidence that it owns the Domain Name or that it has been authorized by its members to bring this action.
When Complainant commenced this UDRP proceeding, VPR and Respondent brought an action against Complainant and RTE in the Circuit Court for Bay County, Florida, seeking (i) declaratory judgment that the Domain Name is not in violation of the Anti-Cybersquatting Protection Act , 11 U.S.C. 1125, and that it remain with Respondent, and (ii) money judgment for breach of contract, quantum meruit, and unjust enrichment for unpaid commissions. (At some point Complainant apparently ceased paying VPR its previously-agreed commission on rent for units managed by VPR at the Regency Towers building.)
Bay County, Florida is the situs of the principal offices of Complainant, Regency Towers Enterprises, Inc., and VPR. Respondent is subject to the jurisdiction of that court, as he is a named plaintiff.
Respondent has requested this Panel to dismiss or otherwise terminate this proceeding in deference to the concurrent court case.
Rule 18(a) of the Rules provides that if any legal proceedings are “initiated prior to or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or proceed to a decision.” Paragraph 4(k) of the Policy permits a respondent to submit the dispute to a court of competent jurisdiction. Specifically, it states that if a panel issues a decision ordering the transfer or cancellation of a domain name registration, the registrar will wait ten business days before implementing that decision. If within said ten day period the registrar receives notification and documentary proof from the respondent that it has filed a lawsuit against complainant, the registrar will not implement the panel’s decision unless the lawsuit is dismissed, withdrawn or is otherwise resolved against the respondent.
There are cases in which UDRP panels have chosen to issue a decision on the domain name, notwithstanding the pendency of concurrent court proceedings involving the same parties arising out of generally the same circumstances. For instance, in eProperty Direct LLC v. Miller, FA 836419 (Nat. Arb. Forum Jan. 3, 2007), the panel deemed it appropriate to decide the dispute “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.”). In W. Fla. Lighting v. Ramirez, D2008-1122 (WIPO Oct. 2, 2008) the panel decided to proceed under the UDRP despite concurrent court proceedings because “the Panel does not find that it is necessary or advantageous to await a judicial determination of the issues raised in the federal litigation in order to reach a decision strictly under the Policy. This administrative proceeding under the Policy concerns only control of the Domain Name, not any of the other remedies at issue in the federal litigation. It is not binding on the court, and it does not preclude the prosecution of any claims, defenses, or counterclaims in the federal litigation.” In Mary’s Futons, Inc. v. Tex. Int’l Prop. Assocs., FA 1012059 (Nat. Arb. Forum Aug. 13, 2007) the panel chose to proceed under the UDRP despite concurrent court proceedings for multiple reasons, including that the proceedings appeared to be filed in a court that did not commonly adjudicate intellectual property issues and that the court proceedings were filed by the respondent on the same day the response in these proceedings was filed. In these cases there were reasonable grounds for the panels to determine the UDRP issues notwithstanding the pendency of concurrent court cases, e.g., the court case appeared to have been resolved without touching directly upon the disposition of the domain name, the domain name issues could be resolved by the panel without precluding the other issues in the court case from being resolved, and the respondent filed the court case in a court that did not commonly adjudicate intellectual property issues on the same day its response was due in the UDRP case.
In this case, however, it seems more reasonable to defer to the concurrent court case. In the first place, while the breach of contract, quantum meruit, unjust enrichment claims asserted in the concurrent court case have no bearing whatever upon the Domain Name, Counts I and II asserted therein deal exclusively with the Domain Name. Indeed, these claims are the core issues in the case. Faced with these circumstances, other panels have determined that a UDRP panel should not hear the case on its merits. See, Salba Corp. N.A., William A. Ralston & Richard L. Ralston v. X Factor Holdings, FA 1443427 (Nat. Arb. Forum June 25, 2012) (a UDRP arbitration should not proceed where there is pending litigation involving the same issues and requesting the same relief), and Acumen Enters, Inc. v. Morgan, FA 1381503 (Nat. Arb. Forum May 17, 2011) (the dispute should be dismissed given that a lawsuit was filed requesting the same relief requested of the Panel).
Secondly, there are legal issues present in this case which in and of themselves take it outside the scope of the UDRP. Respondent has challenged Complainant’s authority to bring the Complaint based upon certain provisions of Florida corporation law. Respondent claims that, as a non-profit condominium owners’ association, Complainant is not authorized to engage in for-profit undertakings such as vacation rentals and is therefore not the real party in interest as to the Domain Name issues raised by the Complaint. Respondent also claims that, as a condominium owners’ association, Complainant is not authorized to bring the UDRP case because, since fewer than half of the unit owners in the Regency Towers condominium project rent their units, it is not brought on behalf of all unit owners, nor does it concern a matter of common interest, as required by Florida law. These claims are not frivolous, and they are material, as they have direct bearing upon Complainant’s legal authority to bring and maintain the case. Complainant asserts that its actions do not violate Florida law but this does not alter the fact that a genuine dispute exists as to the interpretation of local statutory law. Other UDRP panels have declined to issue a decision in cases involving a business dispute or interpretation of contracts. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”). Likewise, interpretation of state statutory provisions such as those involved in this case are outside the scope of the UDRP; they should be determined by a local court in the state of Florida.
Finally, as set forth above, while Rule 18(a) gives the Panel in this case clear discretion to render a decision as to the Domain Name, it is equally clear that under Policy ¶ 4(k) any such decision will not be implemented until the Domain Name issues are finally determined by the Florida state court. Neither Complainant’s concerns about prompt resolution of these issues nor any other legitimate interest would be served by the Panel issuing a decision in this case, and the better practice under these circumstances is for the Panel to defer to the concurrent court case. 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.”).
For the reasons set forth above, the Panel ORDERS that the Complaint be DISMISSED, WITHOUT PREJUDICE.
Charles A. Kuechenmeister, Panelist
Dated: June 4, 2015
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