Vistancia Development LLC v. Marsha Preston
Claim Number: FA2203001989921
Complainant is Vistancia Development LLC (“Complainant”), represented by Robert J. Itri of Milligan Lawless, P.C., Arizona, USA. Respondent is Marsha Preston (“Respondent”), represented by Jay Calhoun of The Calhoun Law Firm, PLC, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com>, registered with GoDaddy.com, LLC and Wix.com 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.
Fernando Triana, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 25, 2022; the Forum received payment on March 31, 2022.
On March 29, 2022, GoDaddy.com, LLC; Wix.com Ltd. confirmed by e-mail to the Forum that the <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com> domain names are registered with GoDaddy.com, LLC and Wix.com Ltd. and that Respondent is the current registrant of the names. GoDaddy.com, LLC and Wix.com Ltd. has verified that Respondent is bound by the GoDaddy.com, LLC and Wix.com 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 6, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2022 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@northpointemagazine.net, postmaster@northpointemagazine.org, postmaster@northpointmagazine.com. Also on April 6, 2022, 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 26, 2022.
On May 5, 2022, Respondent filed an Additional Submission.
On May 6, 2022, Complainant filed an Additional Submission.
On May 4, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Fernando Triana, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant owns and developed a master-plan residential community in Arizona.
b. Complainant asserts rights in the trademark NORTHPOINTE AT VISTANCIA through its registration of the mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 6,240,261, registered on January 5, 2021).
c. The disputed domain names <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com> are identical or confusingly similar to Complainant’s trademark NORTHPOINTE AT VISTANCIA as they incorporate variations of the mark, only adding generic terms like “magazine” and generic top-level domains (gTLDs).
d. Respondent has no rights or legitimate interests in the disputed domain names.
e. Complainant has not authorized or licensed Respondent to use the trademark NORTHPOINTE AT VISTANCIA, nor is Respondent commonly known by the disputed domain names.
f. Further, Respondent is not using the disputed domain names in connection with a bona fide offering of goods and services or legitimate noncommercial or fair use as the resolving websites and domain names confuse users into believing there is an association or affiliation between Respondent and Complainant.
g. Respondent registered and uses the disputed domain names in bad faith.
h. Respondent has a pattern of registering domain names in bad faith.
i. Further, Respondent registered the domain names to attract users for commercial gain by attempting to deceive users about the association between Respondent and Complainant.
B. Respondent
a. Respondent disputes Complainant’s assertion that it has exclusive rights to the trademark NORTHPOINTE, as there are multiple other businesses that use the mark.
b. Respondent contends the domain names are not confusingly similar to Complainant’s trademark NORTHPOINTE AT VISTANCIA, as it removes part of the mark and only uses the section, NORTHPOINTE, that has previously been used by other businesses and is not exclusive.
c. Respondent has legitimate rights and interests in the disputed domain names, especially because Complainant does not have exclusive rights to the trademark NORTHPOINTE.
d. Respondent has recently filed an application to register the trademark NORTH POINTE MAGAZINE.
e. Respondent is conducting legitimate business at the disputed domain names, namely a magazine marketing to the North Phoenix / North Valley area in Arizona.
f. Respondent did not register or use the disputed domain names in bad faith as Respondent is conducting a legitimate business at the disputed domain names.
C. Additional Submissions
a. Respondent’s Additional Submission
i. There is no relief that can be provided, and the dispute should be dismissed.
b. Complainant’s Additional Submission
i. Respondent’s registration of the disputed domains was done in bad faith as Respondent knew of Complainant’s pending Judgment against DBD prohibiting it, its agents, members, officers, directors, servants, employees, attorneys, and any and all persons in active concert or participation with it from directly or indirectly using the trademark NORTHPOINTE or any colorable imitation of the trademark NORTHPOINTE in conjunction with the sale, advertising (including signage and on the Internet), or distribution of a magazine within the State of Arizona.
1. Complainant owns the trademark NORTHPOINTE AT VISTANCIA through its registration of the mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 6,240,261, registered on January 5, 2021, with first use in 2018 in international class 36), among others.
2. Respondent lacks rights or legitimate interests in the disputed domain names.
3. The registration and use of the disputed domain names was done in bad faith.
As per Exhibit 1 of Respondent’s Additional Submission, Registrar was served of an order issued by the United States District Court for the District of Arizona in the case Vistancia Development LLC, Plaintiff, v. DBD LLC, Defendant, case number: CV-21-01707-PHX-SMB, in which the court ordered the domain name <northpointemagazine.net> to be transferred to the Plaintiff.
From Exhibit 1 of Respondent’s Additional Submission, the Panel can conclude that all judicial matters between the parties are over. Moreover, Vistancia Development LLC v. DBD LLC, No. 2:21-cv-01707-SMB (D. Ariz. Jan. 26, 2022), did not involve the disputed domain names.
Also, the Panel finds it deceiving that Respondent tried to pass the decision against the domain name <northpointemagazine.com> as a cause for dismissal of the current UDRP case involving the disputed domain names <northpointmagazine.com>, <northpointemagazine.org>, and <northpointemagazine.net>, when the disputed domain names were not even registered at the time the judicial action was filed.
Additionally, GoDaddy served Respondent of the transference process of the domain name <northpointemagazine.net> on February 21, 2022 and then Respondent registered the disputed domain name on February 22 and 23, 2022.
Furthermore, the fact that apparently the disputed domain names <northpointemagazine.org>, and «northpointmagazine.com», were removed from an account does not prove that was in compliance of a judicial order. In fact, pages 4 and 5 of Exhibit 1 clearly show that the disputed domain names <northpointemagazine.org>, and «northpointmagazine.com», were apparently cancelled by the owner when the message says: “when you cancel a product we remove it from your account”.
Finally, the Panel verified that the disputed domain names <northpointemagazine.org>, and <northpointmagazine.com>, are registered by Marsha Preston, the Defendant.
As the Panel does not find any pending proceedings concerning the disputed domain names it will proceed with the UDRP filing.
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.
Complainant contends to be the owner of the trademark NORTHPOINTE AT VISTANCIA through its registration of the mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 6,240,261, registered on January 5, 2021, with first use in 2018 in international class 36), among others.
i) Existence of a trademark or service mark in which Complainant has rights
Firstly, it is important to point out that paragraph 4(a) of the Policy requires the existence of trademark rights. As a matter of general principle, industrial property rights are typically acquired by registration before a competent office.
The generally accepted definition of a trademark involves the concept of a distinctive force as the most relevant element. It is this “distinctiveness” that gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.
When a sign is registered as a trademark, it is surrounded by a presumption of sufficient distinctive force and the owner is granted with an exclusive right over the trademark, which entitles him or her to prevent any third party from using the registered sign or any other sign confusingly similar to it.
However, the UDRP does not discriminate between registered and unregistered trademarks[i] and thus, it is well established that a complainant is not required to own a registered trademark to invoke the Policy. It is sufficient in certain common law jurisdictions, such as the United States of America, that complainant has rights over an unregistered trademark as to deserve legal protection, based solely on its use in commerce.
In this case, Complainant has proven its rights in the trademark NORTHPOINTE AT VISTANCIA through its registration of the mark with the United States Patent and Trademark Office (USPTO) (Reg. No. 6,240,261, registered on January 5, 2021, with first use in 2018 in international class 36), among others.
This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademark and the exclusive right to use it in connection with services of international classes 36, 37 and 38. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive.
Therefore, the Panel concludes that Complainant has demonstrated rights in the trademark NORTHPOINTE AT VISTANCIA for purposes of Paragraph 4(a)(i) of the Policy.
ii) Identity or confusing similarity between the disputed domain name and Complainant’s trademark
Complainant alleges that the disputed domain names are confusingly similar with Complainant’s trademark NORTHPOINTE AT VISTANCIA.
In the first place, before establishing whether or not the disputed domain names <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com> are confusingly similar to Complainant’s trademark NORTHPOINTE AT VISTANCIA, the Panel wants to point out that the addition of generic top-level domains (gTLDs), e.g., “.com,” “.net,” “.edu,” or “.org”, may be disregarded when determining if the disputed domain name is identical or confusingly similar to the registered trademark[ii].
UDRP Panels have unanimously accepted that the inclusion of the “.com” gTLD in a disputed domain name may be disregarded in analyzing whether a disputed domain name is identical or confusingly similar to the mark in which Complainant asserts rights. In the Wal-Mart Stores, Inc. v. Walsucks and Walmart Puerto Rico, D2000-0477 (WIPO July 25, 2000), the panel stated:
“The 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, ‘.com’ is one of only several such gTLDs, and ‘.com’ does not serve to identify a specific enterprise as a source of goods or services”.
The Panel considers that the reproduction of the trademark NORTHPOINTE AT VISTANCIA, by the disputed domain names <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com>, is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[iii].
In this case, the disputed domain names partially reproduce the first element of the trademark NORTHPOINTE AT VISTANCIA, which has a stronger impact among consumers.
Moreover, the first element, creates an impression of sponsorship, affiliation, or endorsement.
Besides, the disputed domain names do not include any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain names belong to Complainant. Thus, by registering the disputed domain names, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the domain names.
In addition, the Panel agrees with the Complainant on the conclusion that including the term “magazine” and the misspelling is not sufficient to make the disputed domain name different from the trademark NORTHPOINTE AT VISTANCIA.
In fact, “magazine” is the generic term for the services intended to be provided with the disputed domain names. Thus, considering Complainant’s wide presence, the disputed domain names are likely to be understood by consumers as a subproduct of Complainant’s business. Respondent merely adds a generic expression “magazine” to the distinctive trademark NORTHPOINTE AT VISTANCIA. This addition rather than distinguishing the disputed domain name from Complainant’s trademark makes it confusingly similar to the trademark. Hence, the disputed domain name should be deemed as confusingly similar to the registered trademark[iv].
Respondent’s argument that the there are other trademarks including the word NORTHPOINTE does not diminish Complainant’s trademark distinctiveness or changes the confusion similarity of the disputed domain names and the trademark; as from the consumer stand point the other registrations are irrelevant when considering a relation between Complainant and the disputed domain names.
Likewise, Respondent’s argument that there is no confusion as the trademark is not entirely reproduce, disregards any kind of evaluation of confusion similarity. If that were the case, the requirement would be only identity and would not include confusion similarity.
Paragraph 1.7. of the WIPO Jurisprudential Overview 3.0, clearly states:
“While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing”.
In consequence, as per this reasoning, the Panel finds that, in the present case, the disputed domain names are confusingly similar to Complainant’s trademark NORTHPOINTE AT VISTANCIA and thus, the requirement set forth in paragraph 4(a)(i) of the Policy is duly complied with.
Paragraph 4(c) of the Policy includes a nonexclusive listing of circumstances that prove a respondent’s rights or legitimate interests in a domain name:
(i) Before any notice of the dispute, Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Respondent proved within Exhibit R5 of the Response to have used NORTHPOINTE MAGAZINE in magazines since April 2021 and used it for the first time on February 9, 2021.
However, Complainant proved the following:
1. Complainant owns the trademark registration NORTHPOINTE AT VISTANCIA in the State of Arizona (Filing No. 9092424) since January 28, 2019, with first use since June 27, 2018.
2. Respondent initiated unduly using the trademark NORTHPOINTE for the magazine on or about February 2021.
3. On March 26, 2021, Complainant sent a cease and desist letter to Respondent, and did not receive a response.
4. On April 20, 2021, Complainant sent a second cease and desist letter to Respondent, and did not receive a response.
5. On October 6, 2021, Complainant filed a judicial action before the United States District Court for the District of Arizona, against DBD LLC, owner of the infringing magazine and the domain name <northpointemagazine.com>.
6. On January 26, 2022, the Court awarded the Judgement against DBD LLC on its claims for (i) infringement of VDL's federally registered trademarks in violation of Section 32 of the Lanham Trademark Act of 1946, as amended (the "Lanham Act"), 15 U.S.C. § 1114; (ii) federal unfair competition and false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (iii) violation of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. 1125(d); and (iv) trademark infringement and unfair competition in violation of the common law of the State of Arizona.
7. Moreover, the United States District Court for the District of Arizona ordered DBD LLC, its agents, members, officers, directors, servants, employees, attorneys and any and all persons in active concert or participation with DBD LLC, directly or indirectly to permanently enjoined from:
a) using the trademark NORTHPOINTE or any colorable imitation of the trademark NORTHPOINTE in conjunction with the sale, advertising (including signage and on the Internet) or distribution of a magazine within the State of Arizona;
b) using any marks or names that resemble, suggest, or indicate that DBD LLC is approved by, endorsed by, or otherwise affiliated with Complainant or the NORTHPOINTE AT VISTANCIA® community;
c) representing by words or conduct that any product or service provided, offered for sale, sold, advertised, or rendered by DBD LLC is authorized, sponsored, or endorsed by Complainant or the NORTHPOINTE AT VISTANCIA® community;
d) otherwise infringing the NORTHPOINTE mark.
8. The decision was served on Godaddy, Registrar of the domain name <northpointemagazine.com>.
9. GoDaddy served Respondent of the transference process of the domain name <northpointemagazine.com> on February 21, 2022.
10. In violation of the Court’s decision Respondent registered the disputed domain names on February 22 and 23, 2022.
Given the above, the Panel considers the following:
1. The supposed use of the disputed domain names is not proven and cannot be qualified as a use in connection with a bona fide offering of goods or services, since it violets a Court order.
2. Any action, either judicial or administrative, initiated against a Court decision, does not legitimate a Court order violation.
3. It is not possible to legitimate any illegal conduct as a bona fide offering of goods or services.
4. Respondent use of Complainant’s trademark as part of the disputed domain name also misleads visitors into thinking that Complainant is somehow connected to Respondent.
5. Moreover, there is no evidence to support that Respondent is and/or has been commonly known by the disputed domain name.
6. Finally, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, since the use of Complainant’s trademark as part of the disputed domain names misleads visitors into thinking that Complainant is somehow connected to Respondent.
This Panel believes considers that registering the disputed domain names against a judicial order is sufficient evidence of lack of rights and legitimate interest in the disputed domain names.
Respondent knew of Complainant’s trademark NORTHPOINTE AT VISTANCIA had a judicial ordering all people related directly or indirectly with DBD LLC, and all the activity of the NorthPointe Magazine and yet Respondent partially incorporated said trademark in the disputed domain names. Thus, Respondent used the trademarks NORTHPOINTE AT VISTANCIA to create a likelihood of confusion aimed to divert consumers to Respondent’s offered products and services.
Therefore, the requirement set forth in paragraph 4(a)(ii) of the Policy is duly complied with as Respondent lacks any right or legitimate interest in the disputed domain name.
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his/her website or location or of a product or service on his/her website or location.
Complainant asserts that Respondent registered the disputed domain name in bad faith, since Respondent has intentionally attempted to attract, for commercial gain, Internet users to his/her website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
Respondent knew of the trademark NORTHPOINTE AT VISTANCIA[v], since the disputed domain names were registered the day after a previous domain name manage by the same Respondent (as related person) was judicially transferred to Complainant.
Respondent knew of the trademark NORTHPOINTE AT VISTANCIA, as Complainant had previously sent two cease and desist letters.
It is highly important to note that, the disputed domain names were registered despite of the judicial order issued by the United States District Court for the District of Arizona, according to which, DBD LLC, its agents, members, officers, directors, servants, employees, attorneys and any and all persons in active concert or participation with DBD LLC, directly or indirectly were ordered to permanently enjoined from using the trademark NORTHPOINTE or any colorable imitation of the trademark NORTHPOINTE in conjunction with the sale, advertising (including signage and on the Internet) or distribution of a magazine within the State of Arizona. This alone is sufficient evidence of bad faith registration and use.
As noted in the evidence, the defendant DBD LLC, has a clear bond with Respondent and can be treated as one, since they have acted as one. That is why, the evidence of the magazines, with which Respondent tries to prove her rights and legitimate interests, come from DBD LLC.
The Panel finds Respondent deliberately took someone else’s trademark to register a domain name and to create a business around it.
Thus, this Panel considers that the mere fact of knowingly incorporating a third-party’s trademark in a domain name constitutes registration in bad faith[vi]. See Compagnie Générale des Etablissements Michelin v. Above.com Domain Privacy / Direct Navigation Data Inc., WIPO Case No. D2012-1448, where the panel found: “The selection of this word is certainly not a random decision; the Panel finds that it is a consequence of Respondent’s prior knowledge of the mark. This fact, by itself, is registration in bad faith in the Panel’s opinion”.
In addition, the Panel considers that Respondent must have known that the word “NORTHPOINTE” within the disputed domain names would attract Internet users seeking Complainant’s trademark, to the website from which expected to earn money. Thus, Respondent intentionally attempted to attract Internet users by creating a likelihood of confusion with Complainant’s trademark.
Furthermore, Respondent intentionally attempted to attract, for commercial gain, Internet users to its website due to the inclusion of Complainant’s trademark in the disputed domain name. Hence, consumers would not be able to differentiate the source of origin, creating a likelihood of confusion with Complainant’s mark and making consumers believe there was a relationship of sponsorship, affiliation, or endorsement between Complainant and Respondent, is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Finally, the incorporation of Complainant’s trademark in the disputed domain name and the use of Complainant’s trademarks within the website can also disrupt Complainant’s business, which is indicative of bad faith registration and use pursuant to Policy ¶ 4(b).
Therefore, the three elements of the Policy ¶ 4 are satisfied in the present case in respect to Respondent of the disputed domain name.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the disputed domain names <northpointemagazine.net>, <northpointemagazine.org>, and <northpointmagazine.com> be TRANSFERRED from Respondent to Complainant.
Fernando Triana, Esq., Panelist
Dated: May 16, 2022
[i] See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000); see also The British Broadcasting Corporation v. Jamie Renteria, D2000-0050 (WIPO Mar. 27, 2000).
[ii] See Altec Industries, Inc. v. I 80 Equipment, FA 1437753 (Forum May 18, 2012).
[iii] See ER Marks, Inc. and QVC, Inc. v. Hansmann, FA 1381755 (Forum May 6, 2011); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001).
[iv] See Forest Laboratories, Inc. v. candrug, D2008-0382 (WIPO April 24, 2008) (“when a respondent merely adds generic or descriptive terms to a distinctive trademark, the domain name should be considered confusingly similar to the registered trademark”.); see also Bayer Aktiengesellschaft v. Monseen, D2003-0275 (WIPO May 30, 2003).
[v] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, WIPO Case No. D2012-0474.
[vi] See F. Hoffmann-La Roche AG v. Bargin Register, Inc. - Client Services, supra.
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page