Holland Properties, Inc. v. Relocation
Director, Inc.
Claim Number: FA0412000379669
PARTIES
Complainant
is Holland Properties, Inc. (“Complainant”),
P.O. Box 516, 751 Frederick Street, Hanover, PA 17331. Respondent is Relocation Director, Inc. (“Respondent”), 1643 Oak Tree Terrace,
Glendora, CA 91741.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <hollandproperties.com>,
registered with Dotster.
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.
Mr.
Peter L. Michaelson, Esq. as Panelist.
PROCEDURAL HISTORY
The Complaint was brought pursuant to the
Uniform Domain Name Dispute Resolution Policy (“Policy”), available at <icann.org/services/udrp/udrppolicy24oct99.htm>,
which was adopted by the Internet Corporation for Assigned Names and Numbers
(ICANN) on August 26, 1999, and approved on October 24, 1999, and in
accordance with the ICANN Rules for Uniform Domain Name Dispute Resolution
Policy (“Rules”) as approved on October 24, 1999, as supplemented by the
National Arbitration Forum Supplemental Rules for Uniform Domain Name Dispute
Resolution Policy then in effect (“Supplemental Rules”).
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on December 10, 2004; the Forum received a hard copy of the
Complaint together with Exhibits 1‑4 on December 16, 2004. Complainant, on December 20, 2004, in
response to the Forum's request of December 17, 2004 and within the time limit
allotted, submitted a slightly amended Complaint and the requisite filing fee
to the Forum.
On
December 14, 2004, the Registrar, Dotster, confirmed by e‑mail to the
Forum that the domain name <hollandproperties.com>
is registered with Dotster and that the Respondent is the current registrant of
the name. Dotster has verified that the
Respondent is bound by the Dotster registration agreement and has thereby agreed
to resolve domain name disputes brought by third parties in accordance with the
Policy.
On
December 20, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 10, 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@hollandproperties.com by e‑mail.
A
timely Response, together with a sole exhibit, i.e., Exhibit 1, was received
and determined to be complete on January 10, 2005.
Subsequently
and pursuant to Supplemental Rule 7, Complainant timely filed an additional submission
on January 17, 2004.
Thereafter
and also pursuant to Supplemental Rule 7, Respondent timely filed an additional
submission on January 18, 2004.
On January 17, 2005, pursuant to Complainant’s request
to have the dispute decided by a single‑member
Panel, the Forum appointed Mr. Peter L.
Michaelson, Esq. as the Panelist and
set a deadline of January 31, 2005 to receive the decision from the Panel. Due to exceptional circumstances experienced
by the Panel, the Forum, at the Panel's request, extended this deadline to
February 14, 2005.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Identical/Confusingly
Similar
Complainant
contends that since the disputed domain name incorporates Complainant's HOLLAND
PROPERTIES mark in its entirety, the domain name is identical to that mark.
Consequently,
Complainant believes
that it has satisfied the requirements of paragraph 4(a)(i) of the Policy
with respect to the disputed domain name.
2. Rights
and legitimate interests
Complainant
contends that Respondent has no rights or legitimate interests in the disputed
domain name.
Specifically, Complainant alleges that
Respondent deliberately registered the disputed domain name to capitalize on
Complainant’s mark, which designates Complainant as a producer of real estate
services.
Moreover, Complainant also alleges that
Respondent uses the disputed domain name to divert Internet users to another
one of Respondent's own websites, namely <relocationdirector.com>.
This site is commercial in nature and unfairly diverts Internet traffic
which, in turn, increases Respondent's business at its <relocationdirector.com> website. Citing Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA
96577 (Nat. Arb. Forum Feb. 27, 2001) and Big Dog Holdings, Inc. v. Day,
FA 93554 (Nat. Arb. Forum Mar. 9, 2000), Complainant argues that no rights or
legitimate interests can exist in Respondent when it benefits from unauthorized
use of another’s mark, here Complainant's, by diverting Internet traffic to
other websites.
Furthermore, Complainant alleges that
Respondent has no substantial affiliation with, or is known by the disputed
domain name. Rather, it is Complainant,
as it alleges, which has established itself as having legitimate rights in that
mark, rights which preceded the date on which Respondent registered the
disputed domain name.
3. Bad
faith use and registration
Complainant
contends that Respondent has registered and is using the disputed domain name
in bad faith, hence in violation of paragraph 4(a)(iii) of the Policy.
In that regard, Complainant specifically
alleges that Respondent has
placed a “for sale” pop‑up advertisement on its website indicating that
the name is for sale. Complainant
contends that Respondent purposely acquired the name to resell it for financial
gain and, by so indicating that it is for sale, has exhibited bad faith
registration and use.
Furthermore, Complainant contends that
Respondent has prevented Complainant from reflecting its HOLLAND PROPERTIES
mark in a domain name. Specifically,
Complainant alleges that Respondent has
"made a pattern out of registering scores of domain names that are similar
or identical to the marks of realty companies across the United States." In that regard, Complainant notes that each
of those domain names redirects Internet users to Respondent's website at the <relocationdirector.com> domain
name, where all those domain name registrations are advertised as being “for
sale.”
Citing Gamesville.com, Inc. v.
Zuccarini, FA 95294 (Nat. Arb. Forum Aug. 30, 2000) and this Panel's prior
decision in Pep Boys Manny, Moe, & Jack v. E‑Commerce Today, Ltd.,
AF‑0145 (eResolution May 3, 2000), Complainant argues that "[t]he
coupling of intent to prevent a rightful owner of a mark from reflecting the
mark, with a pattern of such conduct is an indication of bad faith under ¶
4(b)(ii)."
Lastly, Complainant, citing to Mission
Kwa Sizabantu v. Rost, D2000‑0279 (WIPO June 7, 2000), contends that
the term "competitors" should be liberally construed. When so construed, Complainant alleges that
it and Respondent are competitors and, as such, Respondent's use of the
disputed domain name to intentionally divert Internet users from Complainant's
website constitutes bad faith.
Moreover, Complainant contends that Respondent registered the name,
which is identical to Complainant's mark, to intentionally capitalize on
Complainant's mark and hence its established reputation by attracting Internet
users to Respondent's website for commercial gain.
B. Respondent
1.
Confusing similarity/identicality
Respondent contends that, based on its
investigation of the online records of the United States Patent and Trademark
Office (“USPTO”), Complainant has never filed
a trademark application to register either the words “Holland Properties” or
the <hollandproperties.com> domain name.
Accordingly,
Respondent concludes that Complainant does not have any valid trademark rights
in its mark, and hence has failed to satisfy the requirements of paragraph
4(a)(i) of the Policy.
Moreover,
Respondent points to Complainant's mark, as provided in Exhibit 4 of the
Complaint, and notes that the mark, when taken in its entirety, includes
various design elements and other textual wording not present in the disputed
domain name. Hence, to the extent
Complainant has any trademark rights, those rights can only result from the
entire composite mark and not from just the two words "holland" and
"properties."
2. Rights and legitimate interests; Bad faith use and registration
Respondent
rebuts Complainant's contentions of bad faith registration.
Specifically,
Respondent states that it registered the name because, in its mind, the name is
generic by virtue of it being highly geographically descriptive and consumer‑intuitive
in nature, the latter reflecting its connotation as being both “Geographic‑Specific”,
i.e., “Holland”, and “Topic‑Specific”, i.e., “Properties.” In that regard, Respondent notes that
"Holland" is not only the name of a very well known country, but also
is the name of cities located in Indiana, Iowa, Kentucky, Massachusetts,
Michigan, Minnesota, Missouri, New York, Ohio and Texas. Respondent cites to Cebu Ass’n of California, Inc. v. Santo Nino De Cebu USA, Inc., 95
Cal.App.3d 129, 133‑134 (1979) for the proposition, under California law,
that "geographic and other purely descriptive words, used in a descriptive
sense, are not protected as trade names or service marks" and to In Re Nantucket, Inc. 677 F.2d 95, 213,
(CCPA 1982) for its holding that primarily geographically descriptive terms are
not susceptible of being federally registered as trademarks.
Further,
Respondent states that it never sought to register domain names that were
similar or identical to the marks of realty companies across the United States,
prevent the owner of a trademark from reflecting its mark in a corresponding
domain name, hold domain names hostage, or divert Internet traffic to
competitors in an unfair way. In that
regard, Respondent states that its goal, from the beginning, was to register
domain names that were exclusively geographic and topic‑specific, as is
the disputed domain name.
C. Additional Submissions
Inasmuch
as both Complainant and Respondent timely filed their respective additional
submission, the Panel has fully considered both of these submissions. The Panel has summarized these submissions,
to the extent relevant, as follows.
1. Complainant's Additional Submission
This
additional submission sets forth Complainant's principal rebuttal arguments as
follows:
(a)
Respondent has failed to provide any evidence that it registered the name
“Holland Properties” or operates its business under the name of “Holland
Properties” in any form.
(b)
The words “development,” “management,” “acquisition,” “investment” and
“leasing,” which do appear in the composite depiction shown in Exhibit 4 to the
Complaint, identify the services which Complainant provides but are not part of
its mark.
(c)
Though Respondent states that it did not register the disputed domain name in
order to resell it, when Complainant first endeavored to obtain the domain name
it was directed to the <relocationdirector.com> website and a pop‑up
advertisement became visible, stating that the domain name registration was for
sale. Since the inception of the
dispute, Respondent has discontinued the use of the pop‑up. Hence, this shows an attempt to cover‑up
any evidence of actively selling the domain name registration.
(d)
An Internet search of Respondent uncovered that it registered thousands of
domain names that end in the words "homes," "realty" and
"properties." Respondent
operates under none of those names.
Respondent is reportedly one of the largest domain name holders in the
country and held over 33,000 different domain names as of 2001.
(e)
Complainant is not attempting to restrict the use of the word “holland” but
rather to gain use of a domain name in which it has a vested interest.
2. Respondent's Additional Submission
Respondent's
additional submission sets forth Respondent's principal surrebuttal arguments,
as follows:
(a) Respondent registered the disputed domain
name due to that name's generic and consumer‑intuitive qualities, i.e.,
the domain name is both geographic (HOLLAND) and topic (PROPERTIES) specific. Respondent, being a relocation company,
contends that its clients find its website by simply typing in a domain name
that contains descriptive terms that reflect their intuitive thought patterns, i.e.,
if that client is interested buying or selling properties in Holland, an
intuitive domain name for them to enter would be <hollandproperties.com>.
(b) Respondent's right to offer the disputed
domain name for sale does not constitute a claim that Respondent registered
that name for the purpose of selling that name. Furthermore and contrary to Complainant's view, Respondent's pop‑up
window, through which it provides its Internet users with various site
navigation options, is still operational.
(c) Respondent's business model, as Complainant
clearly points out, includes registering domain names that contain the names of
cities, states and countries followed by consumer‑intuitive real estate‑related
terms, such as "houses," "homes," "property,"
"properties," "real estate" and "realty." This plan and Respondent's actions, in
connection therewith, have been honest and honorable, and hence does not
reflect bad faith.
FINDINGS
Respondent registered the disputed
domain name on March 27, 2000.
Complainant, a Maryland
corporation, has provided real estate management and development services
throughout the mid‑Atlantic region of the United States since 1992. Though it contends that the term
"Holland Properties" is its trademark, the record is devoid of any
evidence reflective of any trademark use of that term by Complainant.
Respondent is a relocation company. Its clients obtain information from one of
Respondent's corresponding websites by simply entering a domain name that
contains suitably descriptive and intuitive terms. Specifically, if one of Respondent's clients is interested buying
or selling properties in Holland, that person would enter the disputed domain
name, <hollandproperties.com>,
and so forth for homes, realty or properties located elsewhere.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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;
(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.
Paragraph 4(a)(i) of the Policy requires
that a disputed domain name be "identical or confusingly similar to a trademark or service mark in which the
complainant has rights" (emphasis added). This devolves into two requirements that must both be met by
every complainant under the Policy, namely that (a) the complainant has rights
in a trademark or service mark, and (b) the disputed domain name is identical
or confusingly similar to that trademark or service mark.
While the Complainant alleges it has trademark
rights in the term HOLLAND PROPERTIES, based on this Panel's review, both its
Complaint and its Additional Submission collectively appear utterly devoid of
any proof whatsoever that Complainant has such rights ‑‑ let alone
as of March 27, 2000 which is the date the disputed domain name was
registered. Mere allegations do not
suffice. Sufficient proof is absolutely
essential as a threshold requirement in order for the Policy to apply ‑‑
whether that proof derives from a federal or state registration, or mere use of
the mark at common law. Absent any
proof, let alone sufficient proof, Complainant has simply failed to satisfy the
requirements of paragraph 4(a)(i) of the Policy. See, e.g., Nat’l
Sports Servs. Inc. v. Global Media Res. S.A., FA 335580 (Nat. Arb. Forum Nov. 18, 2004);
see also Cont’l Design & Mgmt. Group v.
Technet, Inc., FA 96564 (Nat.
Arb. Forum Mar. 21, 2001).
Rights or Legitimate
Interests; Registration and Use in Bad Faith
In view of the Panel's finding above that
Complainant has failed to satisfy paragraph 4(a)(i) of the Policy, then all
issues as to whether (a) under paragraph 4(a)(ii) of the Policy, Respondent has
any rights or legitimate interests in the disputed domain name; and (b) under
paragraph 4(a)(iii) of the Policy, Respondent registered and used the disputed
domain name in bad faith are now moot.
Consequently, the Panel has no need to consider any of these issues and
thus declines to do so.
Hence, Complainant has simply failed to
meet its burden under paragraph 4(a) of the Policy.
DECISION
Consequently and in accordance with
paragraphs 4(i) of the Policy and 15 of the Rules, the relief sought by
Complainant is hereby DENIED.
Peter L.
Michaelson, Esq., Panelist
Dated: February
14, 2005
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