national arbitration forum

DECISION

TB Proprietary Corp. c/o Toll Brothers, Inc. v. Andrew Norton

Claim Number: FA0501000397668

PARTIES

Complainant is TB Proprietary Corp. c/o Toll Brothers, Inc. (“Complainant”), represented by Robert F. Zielinski, of Wolf, Block, Schorr and Solis-Cohen LLP, 1650 Arch Street, 22nd Floor, Philadelphia, PA 19103-2097. Respondent is Andrew Norton (“Respondent”), 11938 Riders Lane, Reston, VA 20191.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <loudounvalleyestates.com>, registered with Enom, Inc.

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.

Louis E. Condon as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 6, 2005; the National Arbitration Forum received a hard copy of the Complaint on January 10, 2005.

On January 7, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <loudounvalleyestates.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 January 13, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2005 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@loudounvalleyestates.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On February 9, 2005, 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.

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 <loudounvalleyestates.com> domain name is identical to Complainant’s LOUDOUN VALLEY ESTATES mark.

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

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

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

FINDINGS

Complainant, TB Proprietary Corp., designs and builds luxury homes and luxury home communities throughout the United States. In 2001, Complainant built LOUDOUN VALLEY ESTATES, a luxury home community comprised of more than one thousand luxury homes situated on one-acre lots. Complainant and its affiliates have spent approximately $900,000 in advertising and marketing expenses promoting the Loudoun Valley Estates Community and the LOUDOUN VALLEY ESTATES mark since 2001. This community is located in Northern Virginia in close proximity to Maryland and metropolitan Washington, D.C.

Complainant filed a trademark registration application with the United States Patent and Trademark Office on May 10, 2004 (Serial No. 76/591,225). Additionally, Complainant has registered several domain names incorporating the LOUDOUN VALLEY ESTATES mark, including <loudounvalley-estates.com> (registered Sept. 10, 2004), <loudoun-valley-estates.com> (registered Sept. 24, 2004), <loudounvalleyestates.biz> (registered January 29, 2004), <loudounvalleyestates.net> (registered Oct. 12, 2001) and <loudounvalleyestates.info> (registered Jan. 29, 2004). Complainant owns and operates a website for LOUDOUN VALLEY ESTATES at the <loudoun-valley-estates.com> domain name.

Respondent registered the <loudounvalleyestates.com> domain name on December 19, 2002. Complainant has asserted that Respondent has made no use of the disputed domain name since its registration and no evidence has been provided to dispute that claim. Furthermore, the WHOIS information for Respondent lists the e-mail address, andy@dchomes.com, as a contact. Complainant visited the website at the <dchomes.com> domain name, which reveals that Respondent is an associate broker with RE/MAX Distinctive Real Estate, Inc. in the same area where Complainant’s LOUDOUN VALLEY ESTATES home community is located.

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.

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

Although Complainant’s LOUDOUN VALLEY ESTATES mark is not currently registered with a government authority, Complainant can still establish rights in the mark pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also 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.”).

Complainant began using its LOUDOUN VALLEY ESTATES mark in 2001 in association with its rather large luxury home community located in Northern Virginia in close proximity to metropolitan Washington, D.C. Furthermore, Complainant and its predecessors have spent approximately $900,000 in advertising and marketing expenses in promoting the LOUDOUN VALLEY ESTATES mark and community. The Panel determines that Complainant’s ongoing use and extensive advertising are sufficient to establish common law rights through secondary meaning. 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 Complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of the said name [<keppelbank.com>] in connection with its banking business, it has acquired rights under the common law).

The <loudounvalleyestates.com> domain name registered by Respondent is essentially identical to Complainant’s LOUDOUN VALLEY ESTATES mark because the disputed domain name incorporates Complainant’s mark in its entirety and merely omits the spaces between the words in the mark. The omission of spaces between the words of Complainant’s mark in an otherwise identical domain name does not negate the identical nature of the disputed domain name. Furthermore, the addition of the generic top-level domain (gTLD) “.com” is irrelevant in determining whether a domain name is identical to a mark. See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants.").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant alleges that Respondent does not have rights or legitimate interests in the <loudounvalleyestates.com> domain name that is identical to Complainant’s mark. Furthermore, the Panel finds that Complainant has made a prima facie case in support of its allegations and that, therefore, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). However, due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by Complainant that Respondent has no right or legitimate interest is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Additionally, since Complainant has made the prima facie showing and Respondent has failed to submit a response, the Panel accepts all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Complainant has asserted that Respondent has made no use of the <loudounvalleyestates.com> domain name since registering the domain name on December 19, 2002. Furthermore, Respondent has failed to respond to the Complainant and, therefore, has not provided evidence of any demonstrable preparations to use the disputed domain name. Thus, the Panel finds that Respondent’s failure to make any use of the disputed domain name for over two years is proof that Respondent lacks rights and legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and Respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established).

There is no evidence in the record to suggest that Respondent is commonly known by the <loudounvalleyestates.com> domain name or any similar variation thereof. In the WHOIS information, Respondent is listed as “Andrew Norton,” and there is no indication that Respondent has any affiliation with the disputed domain name other than as the registrant. Furthermore, Complainant asserts that Respondent is not connected with Complainant or Complainant’s affiliates in any way. In light of these circumstances, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

Thus, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

While Policy ¶ 4(b) lists four circumstances which constitute evidence of bad faith registration and use if they are found to be present, this list is not intended to be a limitation on finding evidence of bad faith registration and use. In fact, additional factors can be used by the Panel to support findings of bad faith registration and use. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Complainant contends that the WHOIS record shows Respondent’s e-mail address as andy@dchomes.com and that visiting the website at the <dchomes.com> domain name reveals that Respondent is an independent member broker for RE/MAX Distinctive Real Estate who practices in the same geographical area as Complainant. The fact that Respondent is a real estate broker in the same general vicinity as Complainant’s LOUDOUN VALLEY ESTATES community is evidence that Respondent knew of Complainant’s rights in the mark when Respondent registered the identical <loudounvalleyestates.com> domain name. The Panel finds that this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir., 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Furthermore, Complainant claims that the <loudounvalleyestates.com> domain name does not resolve to a website and remains inactive after more than two years. The Panel finds that Respondent has passively held the domain name and therefore registered and use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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 <loudounvalleyestates.com> domain name be TRANSFERRED from Respondent to Complainant.

Louis E. Condon, Panelist

Dated: February 23, 2005