National Arbitration Forum

DECISION

Tim Flentye and Flentye Properties v. Lee Street Management c/o Michael Lee

Claim Number: FA0604000673286

PARTIES

Complainant is Tim Flentye and Flentye Properties (“Complainant”), represented by Nora Preece, of Law Offices of Alter and Weiss, 19 S. LaSalle, Suite 1650, Chicago, IL 60603. Respondent is Lee Street Management c/o Michael Lee (“Respondent”), 7601 North Eastlake Terrace, Chicago, IL 60626-1421.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain names at issue are <timflentye.com>, <flentyeproperties.com>, and <flentye.com>, registered with Register.com and Network Solutions, Inc.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

Hon. James A. Carmody, G. Gervaise Davis III, and Joel Grossman, Chair, as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on April 10, 2006.

On April 7, 2006, Register.com confirmed by e-mail to the National Arbitration Forum that the <timflentye.com> and <flentyeproperties.com> domain names are registered with Register.com. and that the Respondent is the current registrant of the names. On April 11, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <flentye.com> domain name is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Register.com and Network Solutions, Inc. have both verified that Respondent is bound by the Register.com and Network Solutions, Inc. registration agreements, respectively, and have 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 April 14, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 4, 2006 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@timflentye.com, postmaster@flentyeproperties.com, and postmaster@flentye.com by e-mail.

A timely Response was received and determined to be complete on May 3, 2006.

A timely Additional Submission was received on May 8, 2006.

A timely Surreply from Respondent was received on May 12, 2006.

An Additional Submission was submitted by Complainant on May 16, 2006 and was determined to be deficient. The Panel has chosen not to consider the Additional Submission in its Decision.

An Additional Submission was submitted by Respondent on May 17, 2006 and was determined to be deficient. The Panel has chosen not to consider the Additional Submission in its Decision.

On May 10, 2006, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Hon. James A. Carmody, G. Gervaise Davis III, and Joel Grossman as Panelists.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant’s name is Tim Flentye, and he and his family over nearly 100 years have established a common law service mark in the name Flentye Properties. The mark Flentye Properties has taken on a secondary meaning in the Chicago real estate market over many years in connection with Complainant’s apartment rental business. Complainant contends that all three domain names in dispute are identical to, or confusingly similar to its service mark. Complainant further asserts that Respondent, a direct competitor in the Chicago area apartment rental business, has no legitimate interest in the three names. Finally, Complainant asserts that the names were registered and are being used in bad faith, in a direct attempt to harm Complainant’s business.

B. Respondent

Respondent denies that Complainant has established a common law service mark in the term Flentye Properties, and contends that Complainant in fact does business using a different name, Sheridan Shores. In fact, Respondent asserts that the Complainant has ceased all use of the service mark Flentye Properties. Respondent therefore asserts that the three domain names at issue are not identical to, or confusingly similar to Complainant’s true service mark. Moreover, Respondent contends that a disclaimer on its sites nullifies the possibility of confusion, as any visitors to the sites are immediately told that the sites are not sponsored by or affiliated with Complainant. Respondent contends that it has a legitimate use for its names, namely as so-called “gripe sites” which criticize Complainant’s activities, and which are protected by the First Amendment. Respondent asserts that it is not in competition with Complainant. According to Respondent, apartment hunters are looking for apartments, not property companies, and the name of the building owner is irrelevant to the consumers. Respondent further contends that since the domain names were registered and are being used as legitimate, First Amendment-protected gripe sites, and because Respondent is not a competitor of Complainant, the domain names at issue were not registered and are not being used in bad faith.

C. Additional Submissions

Complainant’s Additional Submission seeks to refute points raised by Respondent in its Response. First, while Complainant acknowledges that is uses the mark Sheridan Shores along with the mark Flentye Properties, it has never ceased use of the service mark Flentye Properties, and continues its use today in yellow pages and other real estate listing services. Complainant supplied the Panel with photographs of some of its apartment buildings which bear a plaque engraved with the service mark Flentye Properties. In fact, Complainant notes that on the websites in dispute, Respondent displays a photo of Tim Flentye wearing a baseball cap that says Flentye Properties. Complainant also disputes Respondent’s contention that the two are not in competition. While it may be true that apartment hunters seek good apartments, not good landlords, the fact is that in deciding whether to rent, or renew a lease, the consumer takes into account the reputation of the landlord, and landlords are rated for quality on various consumer websites, bulletin boards, or through word of mouth. Finally, Complainant asserts that Respondent cannot seek First Amendment shelter in the non-commercial “gripe sites” cases because Respondent is a direct competitor of Complainant, and the Respondent’s sites’ purpose is to disrupt Complainant’s business thereby attracting new consumers for Respondent’s business.

Respondent’s Surreply reiterates its earlier arguments. Respondent again states that Complainant does business as Sheridan Shores, and not as Flentye Properties. Complainant’s non-use of Flentye Properties as a service mark is an effective abandonment of the mark. Respondent further asserts that it is not in competition with Complainant, since both are mere “imperceptible specks” in the gigantic Chicago apartment market, which includes over one million apartments. Finally, Respondent asserts that its dispute with Complainant is personal, not commercial, and its domain names are therefore protected by the cases involving First Amendment-protected gripe sites.

FINDINGS

The Panel unanimously finds as follows:

1. All three domain names are either identical to, or confusingly similar to, Complainant’s service mark Flentye Propertes.

2. Respondent has no rights or legitimate interests in any of the three domain names.

3. The three domain names were registered and are being used in bad faith.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

As a threshold question, Respondent questions Complainant’s ability to rely on the Flentye Properties service mark. Respondent claims that Complainant’s business is not known by that name, and instead is known by the name Sheridan Shores. The Panel concludes that the service mark Flentye Properties is a service mark in continuous use by Complainant for many years, and that it has acquired a secondary meaning in the Chicago area. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000). Complainant must also show that the service mark has acquired secondary meaning. See Paul Petrovich et al v. Jazz Melody, FA 290894 (Nat. Arb. Forum Sept. 10, 2004). The Panel determines that the evidence presented by Complainant, including various listings in real estate and telephone directories, photographs of plaques on buildings with the Flentye Properties service mark, and articles from local newspapers referring to Flentye Properties collectively demonstrate this secondary meaning. Having decided that Flentye Properties is a protected service mark, the Panel determines that the domain name “flentyeproperties.com” is identical to the service mark, as the top level domain may be ignored for this purpose. See Rollerblade Inc. v.McCrady, D2000-0429 (WIPO June 25, 2000). The other two domain names, “flentye.com” and “timflentye.com” are confusingly similar to the service mark, given the relative rarity of the surname “Flentye.” Respondent contends that the disclaimer he has placed on the sites will avoid any confusion. It is well-settled, however, that such disclaimers are not enough to avoid a finding of confusing similar. See Medimmune, Inc. v. Jason Tate D2006-0159 (WIPO April 14, 2006).

Rights or Legitimate Interests

As a preliminary matter, the Panel notes that where, as here, a complainant makes a prima facie showing that the challenged domain names are identical or confusingly similar to its protected mark, the burden shifts to Respondent to show that it has rights or legitimate interests in the name(s). See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Respondent cannot carry this burden. Respondent concedes that it is not known by any of the three domain names, and does not do business under any of the disputed names.

Respondent’s key argument is that its domain names fall under the umbrella of noncommercial “gripe sites,” which enjoy constitutional protection from claims of Lanham Act infringement. The Panel will discuss briefly the general law concerning gripe sites, and why in the Panel’s view Respondent’s sites fall outside this protected sphere.

1. Gripe Sites Such As “XYZCorporationsucks.com”

It is true that a number of decisions protect non-commercial “gripe sites, ” whose purpose is to criticize a person or a business, such as XYZCorporationsucks.com, and that the mark may be incorporated in some fashion for this purpose. See. e.g., Homer TLC, Inc. v. GreenPeople FA 550345 (Nat. Arb. Forum Oct. 25, 2005) allowing the use of the domain name “homedepotsucks.com.” Thus, even though the domain name “homedepotsucks.com” appropriates the protected trademark of a famous retailer, and might otherwise be deemed confusingly similar to the mark, the First Amendment protects the respondent’s right to incorporate the mark in its domain name to tell the world of its criticisms of the mark’s owner. This concept is fully developed in a Ninth Circuit decision in which an unhappy customer of a hair replacement clinic created a website using the trademark of the hair clinic as the domain name, without even adding the word “sucks” or a similar negative terms. See Bosley Medical Institute, Inc. v. Kremer, 403 F. 3d 672 (9^th Cir. 2005) (holding that “noncommercial use of a trademark as the domain name of a website—the subject of which is consumer commentary about the products and services represented by the mark—does not constitute infringement under the Lanham Act.”).

2. Gripe Sites Must Be Non-Commercial

While true gripe sites may use the mark of the subject company in their domain name as explained above, it is well settled that such usage only applies to non-commercial sites. Thus, in the Bosley case quoted above the Ninth Circuit specifically referred to the “non commercial” use of the trademark as permissible. If the use of the mark is commercial, the protection of the First Amendment is lost. For this reason, in spite of the general rule allowing gripe sites that can generically be described as “XYZCorporationsucks.com,” panels have transferred names such as “dellcomputerssuck.com” and “wachoviasucks.com” because the respondents in those cases were not just criticizing the companies whose marks they were using, they were using the websites to compete with the owners of the marks. See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005); see also Wachovia Corp. v. Flanders D2003-0596 (WIPO Sept. 19, 2003.) See generally Medimmune, Inc. v. Jason Tate, supra, D2006-0159 (WIPO April 14, 2006). In short, the cases clearly distinguish between a domain name whose purpose is to criticize the owner of a mark, and a domain name being used for commercial purposes.

3. Respondent’s Three Domain Names Do Not Constitute Protected Gripe Sites

In the instant case, Respondent is not just a critic of Complainant; it is a competitor of Complainant in the Chicago apartment rental business. Clearly, at least one purpose of Respondent’s use of the Complainant’s mark is to attract potential customers of Complainant’s business, and then to discourage them from doing business with Complainant, thereby harming Complainant’s business to the benefit of Respondent’s business.

4. Litigation Between Respondent and Complainant

The record before the Panel also includes abundant references to commercially-related litigation between Complainant and Respondent. While Respondent argues to the Panel that its dispute with Complainant is purely personal and not commercial, the litigation is strong evidence to the contrary. Respondent may not in this case wrap itself in the flag of First Amendment-protected gripe sites. Thus, Respondent has not met its burden to show that it has rights or legitimate interests in the domain names.

Registration and Use in Bad Faith

Because the Panel has determined that the domain names were registered in order to disrupt Complainant’s business, the Panel concludes that the names were registered and are being used in bad faith. See Policy, at 4(b) (iii). Respondent’s bad faith is further evidenced by the registration of three domain names, two of which—“flentye.com” and “timflentye.com” serve no independent purpose and instead immediately redirect the visitor to the “flentyeproperties.com” site. It requires no citation to state that it is bad faith to register a domain name, or in this case two domain names, that have no use or purpose. For both of these reasons the Panel finds that all three names were registered and are being used in bad faith.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <timflentye.com>, <flentyeproperties.com>, <flentye.com> domain name be TRANSFERRED from Respondent to Complainant.

Joel Grossman, Chair

Hon James A. Carmody, G. Gervaise Davis III Panelists
Dated: May 17, 2006

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