NGI Investments, LLC v. Terry Wayland / Incore Residential
Claim Number: FA1406001564105
Complainant is NGI Investments, LLC (“Complainant”), represented by Nancy K. Gardner of Chamberlain Hrdlicka, Georgia, USA. Respondent is Terry Wayland / Incore Residential (“Respondent”), represented by Leigh K. Fletcher of Fletcher & Fischer, P.L, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skyhousetampa.com> and <skyhousechannelside.com>, registered with GoDaddy.com, 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 11, 2014; the National Arbitration Forum received payment on June 11, 2014.
On June 12, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <skyhousetampa.com> and <skyhousechannelside.com> 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 June 16, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@skyhousetampa.com, postmaster@skyhousechannelside.com. Also on June 16, 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 July 7, 2014.
On July 11, 2014, Complainant provided a timely Additional Submission in compliance with Supplemental Rule 7. Respondent filed no additional documents.
On July 7, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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. 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is a real estate investment company in the business of developing luxury apartment towers. These towers are branded SKYHOUSE and include properties in various locales in the southern United States, including Texas, Florida, North Carolina, and Georgia. Complainant sought to protect the SKYHOUSE mark and thus obtained United States Patent and Trademark Office ("USPTO") registration (Reg. No. 4,229,732 registered Oct. 23, 2012, filed Aug. 1, 2011). These domain names are both confusingly similar to the SKYHOUSE mark, as the term “Tampa” and “Channelside” refer to specific cities and areas in Florida wherein Complainant has announced it will break ground on new SKYHOUSE towers. The addition of this generic top-level domain ("gTLD") “.com” does very little to help distinguish these domain names from the SKYHOUSE mark.
2. Respondent has no rights here. Respondent is Mr. Terry Wayland of Incore Residential, a Florida-based real estate business. Respondent has never been known by these domain names. Respondent’s behavior indicates there is no active use for the domain names beyond promoting click-through hyperlink ads to related real estate offerings. Respondent is known in the Florida community as a real estate agent and owner of “Incore Residential,” a business that competes in the multifamily residential property business. Further, Respondent registered the domain names within days of a “Tampa Tribune” article announcing Complainant’s plan to build SKYHOUSE towers in these communities.
3. Respondent registered and is using these domain names in bad faith. Complainant asked Respondent about these domain names in hopes of acquiring them, and Respondent requested $10,000 for both domain names. Second, Respondent’s decision to register these two highly identifiable domain names evidences an intent to deprive Complainant of the ability to acquire domain names to protect its operations under the SKYHOUSE mark. Third, Respondent is disrupting Complainant’s business by hosting competing advertisements on the website(s) all while ransoming the domain names for a $10,000 fee.
B. Respondent
1. Respondent is in the real property management business, thus it is not competitive with the actual leasing of tenancies to interested parties.
2. Respondent believes the phrase SKYHOUSE is being used by multiple residential development projects and thus Complainant cannot claim to have a monopoly on the mark.
3. Respondent has not acted in bad faith. First, Respondent’s negotiations with Complainant to sell these domain names occurred during good faith bargaining. Second, Respondent did not intend to cause a pattern of bad faith registration. Third, there can be no disruption because the real estate management business is distinct from real estate development.
C. Additional Submissions
Complainant asserts that Respondent misunderstands or misapplies the concept of registration priority by conflating state registration and federal registration. Complainant further contends that Respondent’s arguments regarding the fame of Complainant’s mark are irrelevant. Complainant notes that Respondent does not deny having registered the disputed domains shortly after Complainant’s announcement that it was going to develop property in the Tampa Bay area. Complainant also calls Respondent’s assertions of non-competitiveness a red herring and Respondent’s contention of non-confusion preposterous.
Complainant is NGI Investments, LLC of Atlanta, GA, USA. Complainant is a real estate investment company developing luxury apartment towers throughout the USA under the brand name SkyHouse. Complainant has 11 properties in 4 states, including several in Florida. Complainant has continuously used the SkyHouse mark since at least 2011 and in 2012 registered the SKYHOUSE mark with the USPTO. Complainant has supplemented its federal registration with several state registrations. Complainant also owns numerous domain name registrations corresponding to its mark and the location of its properties. For example Complainant owns the domains <skyhouseatlanta.com> and <skyhousebuckhead.com>.
Respondent is Terry Wayland/Incore Residential of Bonita Springs/Fort Myers, FL, USA. Respondent’s registrar’s address is Scottsdale, AZ, USA. Respondent provides property management services for single family and multi-family properties. Respondent registered <skyhousetampa.com> and <skyhousechannelside.com> on or about March 13, 2013.
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 is a real estate investment company in the business of developing luxury apartment towers. These towers are branded SKYHOUSE and include properties in various locales in the southern United States, including Texas, Florida, North Carolina, and Georgia. Complainant sought to protect the SKYHOUSE mark and thus obtained USPTO registration (Reg. No. 4,229,732 registered Oct. 23, 2012, filed Aug. 1, 2011). The Panel finds that USPTO registration sufficiently meets the threshold requirement of rights mandated under Policy ¶ 4(a)(i). See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (“The Panel observes that Respondent appears to reside and operate within the United States. Therefore, the Panel holds that Complainant’s registration of the MR BRAINWASH mark with the USPTO sufficiently establishes its rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant further claims these domain names are both confusingly similar to the SKYHOUSE mark, as the term “Tampa” and “Channelside” refer to specific cities and areas in Florida wherein Complainant has announced it will break ground on new SKYHOUSE towers. The addition of this gTLD “.com” does very little to help distinguish these domain names from the SKYHOUSE mark. The Panel here finds that the addition of the descriptive geographic terms and the gTLD fail to sufficiently distinguish the domain name from the mark, especially when the terms identify areas where Complainant does business. See, e.g., Warner Bros. Entm’t Inc.; New Line Prods., Inc. & DC Comics v. Procount Bus. Servs., FA 360942 (Nat. Arb. Forum Dec. 22, 2004) (finding that the addition of one or more generic terms and a gTLD as well as the omission of spaces fails to create a meaningful distinction between the disputed domain name and the mark within it because “[s]uch additions do not disguise the fact that the dominant features of the domain names are [c]omplainant’s marks, and each domain name is therefore confusingly similar to the marks pursuant to Policy ¶ 4(a)(i)”.
Respondent addresses this element by making assertions such as “…Complainant’s mark was not and is not recognized or known outside the markets in which Complainant was developing projects.” Respondent’s statements fail to recognize the import of federal registration of a trademark with the USPTO. Regardless of whether Respondent or others actually knew or know of Complainants mark, federal registration with the USPTO provides constructive notice to all throughout the country of the recognized distinctiveness of the registered mark. Registration of a mark is predicated on inherent or acquired distinctiveness and not whether a mark is famous, an issue on which Respondent spends an unnecessary period of time debating. Respondent’s assertions are even more curious in light of the fact that the disputed domains use geographical references in markets in which Complainant had announced it was going to develop projects.
The Complainant has proven this element.
The Panel recognizes that 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant first notes that Respondent is Mr. Terry Wayland of Incore Residential, a Florida-based real estate business. Complainant claims Respondent has never been known by these domain names. The Panel notes Respondent identifies in the response as “Rental Link, LLC” and its member-manager, “Terry Wayland.” The Panel finds that there is no reason to conclude that Respondent has ever been known by either the <skyhousetampa.com> or <skyhousechannelside.com> domain names. See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (noting that past panels had “declined to make findings under Policy ¶ 4(c)(ii) when the respondent did not make any claim that it was actually known by the domain names. Th[is] Panel agrees that there is no evidence that Respondent is known by the <reignwolf.com> and <reignwolfmusic.com> domain names under Policy ¶ 4(c)(ii).”).
Complainant further alleges there is no active use for the domain names by Respondent beyond promoting click-through hyperlink ads to related real estate offerings. Complainant notes that Respondent is known in the Florida community as a real estate agent and owner of “Incore Residential,” a business that operates in the multifamily residential property business. The Panel notes the Respondent’s domains resolve to a stock GoDaddy.com, LLC, parked site featuring hyperlinks to various real estate businesses. In The Standard Bank of South Africa Ltd. v. dalvinder dhillon, FA 1527717 (Nat. Arb. Forum December 10, 2013) the panel found that competing advertisements were not Policy ¶ 4(c)(i) bona fide offerings of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair uses. The Panel here finds that Respondent has no rights under Policy ¶ 4(c)(i) or (iii) to use the domain names for click-through ads.
Respondent addresses this element by stating that it was utilizing the disputed domains before Complainant secured a state trademark registration. That fact is of no assistance in light of the reality that Complainant had already long held a federal registration for its mark. Respondent’s statement that it was using the disputed domains for “legitimate commercial purposes” is a mere assertion for which Respondent fails to provide any factual evidence.
The Complainant has proven this element.
Complainant first alleges bad faith because it asked Respondent about these domain names in hopes of acquiring them, and Respondent requested $10,000 for both domain names. The Panel finds that Respondent’s offer to sell the disputed domain names for a significant profit indicates an intent to register the domain names for their resale value, and thus supports a finding of bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”)
Complainant further claims Respondent’s decision to register these two highly identifiable domain names evidence an intent to deprive Complainant of the ability to acquire domain names to protect its operations under the SKYHOUSE mark. The Panel notes that the Respondent admittedly owns hundreds of domain names. Respondent’s prior registrations, in connection with the registration of the two domain names featuring the SKYHOUSE mark is evidence of a Policy ¶ 4(b)(ii) pattern of bad faith. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant additionally claims Respondent is disrupting Complainant’s business by hosting competing advertisements on the website all while ransoming the domain names for a $10,000 fee. The Panel again notes that the domain names resolve to a parked website featuring hyperlinks to competing companies. The Panel finds that promoting competing businesses, even in the form of randomly generated hyperlink advertisements, shows bad faith commercial disruption under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent addresses this element by claiming that it was not its intent to register the domain names for the purpose of selling them to the Complainant. Respondent makes further assertions in a summary fashion such as Respondent “never suggested sponsorship affiliation, or endorsement of Rental Link, LLC by Complainant”, and “Respondent is not in competition with Complainant.” The Panel finds that these statements are unsupported both legally and factually. The arguments made in conjunction with them are generally spurious at best.
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <skyhousetampa.com> and <skyhousechannelside.com> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 30, 2014
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