Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. v. Roy Hunter
Claim Number: FA1207001455368
Complainant is Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. (“Complainant”), represented by Douglas A. Cherry of Shumaker, Loop & Kendrick, LLP, Florida, USA. Respondent is Roy Hunter (“Respondent”), represented by Sarasota Bay Real Estate, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <waterleferealestate.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 26, 2012; the National Arbitration Forum received payment on July 27, 2012.
On July 27, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <waterleferealestate.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 July 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 20, 2012 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@waterleferealestate.com. Also on July 30, 2012, 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 31, 2012.
On August 6, 2012 an Additional Submission from the Complainant was received by the National Arbitration Forum, which was done in a timely manner according to Rule 7 of the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Dispute Resolution Policy.
Following the receipt of the Additional Submission from the Complainant, Respondent made his Additional Submission to the National Arbitration Forum on August 8, 2012, which is deemed timely pursuant to Rule 7 of the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Dispute Resolution Policy.
On August 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
i. Complainant, Waterlefe Community Development District, and Complainant, Waterlefe Master Property Owners Association, Inc., both hold trademark registrations for the WATERLEFE mark for different goods and services.
ii. Complainants entered into a consent and coexistence agreement governing Complainants’ rights in the WATERLEFE mark.
iii. Complainants jointly bring this action to protect those rights.
i. Complainants own exclusive rights in the WATERLEFE mark that Complainants use in association with the WATERLEFE community.
ii. Complainants own multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WATERLEFE mark (e.g., Reg. No. 2,449,236 registered May 8, 2001). See Complainants’ Exhibit B.
iii. Complainants’ trademark registrations and subsequent use of the WATERLEFE mark prevent the mark from being just a descriptive term.
iv. Respondent’s <waterleferealestate.com> domain name is identical or confusingly similar to Complainants’ WATERLEFE mark.
i. Respondent is not commonly known by the <waterleferealestate.com> domain name.
ii. Respondent uses the <waterleferealestate.com> domain name to provide competing real estate services.
i. Respondent offered to sell the <waterleferealestate.com> domain name to Complainants for “a one time payment of $10,000.00,” which is evidence of bad faith registration and use. See Complainants’ Exhibit F.
ii. Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s competing website by creating a likelihood of confusion as to Complainants’ affiliation with the disputed domain name.
i. Respondent is making a nominative use of the WATERLEFE mark.
ii. Using the WATERLEFE mark is the only way to describe the WATERLEFE development, which is evidenced by every residential property located within the development including the WATERLEFE mark in the legal property description.
iii. Respondent’s business partner, Christina Miller, has the right to conduct real estate related services in the WATERLEFE community.
iv. Without using the WATERLEFE mark, it is impossible for Respondent to find buyers for the properties in the WATERLEFE development.
i. Offering to sell the <waterleferealestate.com> domain name, after a website was developed for the domain name, is not evidence of bad faith registration and use because Respondent was attempting to recuperate its costs.
ii. There is no confusion created regarding the resolving website because the website clearly states “Sarasota Bay Real Estate” and the brokerages for all the properties featured on the website are identified.
iii. Respondent does not compete with Complainant because Respondent does not use the WATERLEFE mark for real estate management, real estate brokerage services in the field of land parcels, lots, and residential homes, leasing of real estate, and property management.
C. Additional Submissions
In their Additional Submission of August 6, 2012, the Complainant addresses the Respondent’s reliance of the US “nominative use” doctrine, particularly stressing that the allowable use in a nominative manner should restricted to the use of a trademark to describe the goods/services offered on the particular website, but not in the domain name in dispute.
The Complainant further notes that the Respondent should not be able to confuse consumers with a domain name that suggests they manage Waterlefe’s real estate or are endorsed by or affiliated with Waterlefe.
The Complainant further addresses the Respondent’s arguments rebutting the allegations of the Complainant’s establishing the three elements under UDRP § 4(a).
In his Additional Submission of August 8, 2012, the Respondent alleges that Respondent never has shown any intent to confuse customers with a domain name that suggests they manage Waterlefe’s real estate or are endorsed by Waterlefe since Waterlefe is a geographical location which is used to describe the geographical location of the real estate services being offered.
According to the Respondent, the Complainant has not established evidence of bad faith use as both the Respondent and his business partner, Christina Miller, have a legitimate interest in the use of the domain name.
Further, the Respondent points out that since the development was fully built out and completely sold off by the original Trademark holder (Watermark Communities Inc.) who subsequently assigned its rights to the current trademark holders, the developer can no longer be the source of the real property nor can the Assignee of the registered trademark be the source. Respectively, the Respondent states that transferring the Registered Trademark to the Complainant gives them the right, but not the legitimate interest, to conduct real estate related services in the Waterlefe community using the Registered Trademark since they must be licensed by the State of Florida to conduct real estate related transactions within the Waterlefe community.
The Respondent further maintains a claim the trademark “waterlefe” was used nominatively to describe a geographical location in which the Respondent has a legitimate right to provide real estate related services for. Thus, in the absence of a legal bona fide offering by either of the Complainant’s there is no likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement.
The Complainant established that it holds valid trademark rights for word and word & design marks deriving from U.S. Federal Trademark Registrations indicated in Exhibit B, particularly registered for the goods in classes 36 (real estate management; real estate brokerage services in the field of land parcels, lots, and residential homes; leasing of real estate; and property management), 35, 41, 42, 25 and 28.
The provided records show that these registrations have achieved “incontestable” status pursuant to the provisions of 15 U.S.C. § 1065, are valid and subsisting, and have not been cancelled, revoked or abandoned.
The Complainant has also established that they are also owners of several Florida Trademark Registrations for “WATERLEFE” in similar goods and services.
The provided records show that the Complainant’s rights in registrations of “WATERLEFE” with the USPTO date back to 2001.
The Complainant shows in Exhibits C, D1 and D2 that the Respondent has not been commonly known by the domain name, and that the domain name currently redirects traffic to a website called “Sarasota Bay Real Estate” located at <mysarasotafloridahomes.com/waterlefe-real-estate/>, and that there is an affiliation between Mr. Hunter and Ms. Miller whose services are being advertised.
The Complainant has also provided evidences which show that the Respondent has been formally notified to cease and desist the use of the disputed domain name and requested to transfer such domain name to the Complainant (letter dated June 8, 2011 provided in Exhibit E).
In Exhibit F, the Complainant further establishes that the Respondent made an offer to sell the disputed domain name for a “one-time payment of $10,000”.
In his Response, when relying on the “nominative use” doctrine, the Respondent submits evidences representing the Manatee County Florida tax records, particularly property bills, in support of his allegation that there is no other way to describe the geographical location of the real estate for sale within the Waterlefe development unless the registered trademark is used.
The Respondent also provided copies of records from the <web.archive.org> (Exhibit R-2 to the Response) showing the way in which the domain name was used as of the date of its development on July 21, 2010. This Exhibit also demonstrates the relationship of the real estate brokerage of the Respondent’s former client and now business partner Christina Miller.
The Respondent also provided a copy of a press-release announcing the launch of the <waterleferealestate.com> website and a list of domains in which the promotion of <waterleferealestate.com> exists on the Internet (Exhibits D-1 and R-5).
The Respondent further provided evidences showing the use of the “WATERLEFE” mark in property listings (Exhibit R-6) and provided copies of respective licenses of the State of Florida both for Christina Miller and himself (Exhibits R-3 and R-4) to support their legal interest in offering brokerage services and the right to provide full disclosure to the general public of all known facts and locations of property offered for sale.
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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The Complainants have shown that they both hold registrations for the WATERLEFE mark for different goods and services and that they entered into a consent and coexistence agreement governing Complainants’ rights in the WATERLEFE trademark.
The Panelist finds that the submitted evidences concerning the ownership of the WATERLEFE by both parties trademark are sufficient to accept their collective designation as the Complainant. See Tasty Baking, Co. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003) (treating the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names).
Preliminary Issue: Non-UDRP Legal Arguments
Respondent argues various legal points pursuant to United States common law, per the 9th Circuit of the United States, as such decisions apply to nominative fair use. Respondent also argues that the Lanham Act of 1946 bolsters and approves of its use of the domain name at issue.
The Panelist finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements. See Abbott Labs. v. Patel, FA 740337 (Nat. Arb. Forum Aug. 15, 2006) (holding that assertions of trademark infringement are “entirely misplaced and totally inappropriate for resolution” in a domain name dispute proceeding because the UDRP Policy applies only to abusive cybersquatting and nothing else).
Furthermore, in his Additional Submissions the Respondent accuses the Complainant in committing a Third Degree Felony in the state of Florida as they claim being engaged in services that require a license by the State of Florida and do not possess such a license.
The Panelist finds that these arguments are not applicable to this arbitration proceeding within the scope of the UDRP and its elements either.
Accordingly, the following analysis is strictly confined to an analysis under the UDRP and does not address any arguments made by either party with respect to United States Common Law, the Lanham Act or the Florida Statutes.
The Panelist finds that the Complainant owns rights in the WATERLEFE mark under Policy 4(a)(i) since the Complainant has shown (see Complainants’ Exhibit B) that they own multiple trademark registrations with the USPTO for the WATERLEFE mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (finding that a USPTO trademark registration was sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The disputed domain name contains the Complainant’s registered WATERLEFE mark, the descriptive terms “real estate,” and the generic top-level domain (“gTLD”) “.com.” In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005), the panel held that the addition of a descriptive term and the gTLD “.com” failed to remove a disputed domain name from the realm of confusing similarity. Therefore, the Panelist holds that the Respondent’s <waterleferealestate.com> domain name is confusingly similar to the Complainant’s WATERLEFE mark under Policy ¶ 4(a)(i).
The Panelist finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The Panelist does not believe that the Respondent has been commonly known by the <waterleferealestate.com> domain name. The Complainant shows that the Respondent’s business operates under the name “Sarasota Bay Real Estate,” which Complainant asserts is different from the <waterleferealestate.com> domain name. Furthermore, the WHOIS information identifies “Roy Hunter” as the registrant of the <waterleferealestate.com> domain name. In M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), the panel found that a respondent was not commonly known by a disputed domain name if the WHOIS information did not indicate such a fact and the evidence in the record indicated that the respondent was not known by the domain name. Consequently, a conclusion is made that the Respondent is not commonly known by the <waterleferealestate.com> domain name pursuant to Policy ¶ 4(c)(ii).
The Complainant shows that Respondent uses the <waterleferealestate.com> domain name to provide competing real estate services (see Complainant’s Exhibit C). Thus, the Panelist finds that Respondent’s competing use of the <waterleferealestate.com> domain name is not a Policy 4(c)(i) bona fide offering of goods or services or a Policy 4(c)(iii) legitimate noncommercial or fair use of the disputed domain name. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (use of a confusingly similar domain name to host a competing website is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name).
Even if the Respondent uses the disputed domain name to sell property located in the Waterlefe development, this use does not grant the Respondent rights or legitimate interests to use a domain name that fully incorporates the Complainant’s trademark. See Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2011).
In this regard, the Panelist believes that although the Respondent can use the “Waterlefe” trademark with reference to property offered for sale on his or his business partner’s website, it is not legitimate to use a domain name that fully incorporates the Complainant’s registered trademarks to re-direct Internet users to such a website.
The Panelist thus finds that Policy ¶ 4(a)(ii) has been satisfied.
The evidences in the case show that the Respondent offered to sell the <waterleferealestate.com> domain name to Complainant for “a one time payment of $10,000.00.” See Complainant’s Exhibit F. In George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007), the panel found that a respondent’s offer to sell a disputed domain name to a complainant for more than the respondent’s out-of-pocket costs indicated that the respondent registered and used the domain name in bad faith.
The provided evidences do not show that there have been marketing investments into the domain name in dispute that are commensurate with the requested amount which is far above possible Respondent’s out-of-pocket costs.
Therefore, the Panelist believes that the Respondent registered and uses the <waterleferealestate.com> domain name in bad faith under Policy ¶ 4(b)(i).
Furthermore, having studied the provided evidences on record, the Panelist believes that the Respondent has registered the disputed domain with full knowledge that he has no right to use this domain name. The Panelist also believes that this attracts, for commercial gain, Internet users to the Respondent’s web sites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web sites.
Respondent argues that there is no confusion created by the <waterleferealestate.com> domain name and resolving website because the website clearly states “Sarasota Bay Real Estate” and the brokerages for all the properties featured on the website are identified. However, the generic term “real estate” used in the disputed domain name is broad enough, and thus is not limited to brokerage services offered by the Respondent. This implies a full spectrum of services related to real estate which, being used along the registered trademark of the Complainant, creates an association in consumers that the services might come from the Complainant. Domain names are not only descriptive of the information the public expects to find on the website associated with the domain name, but are also indicative of sources of this information or services offered. Thus, a likelihood of confusion exists.
Respectively, the use of this domain name diverts actual and potential clients of the Complainant and is likely to cause confusion among consumers.
As follows from the submitted evidences in the case, the Respondent uses the <waterleferealestate.com> domain name to host a competing website from which Respondent commercially benefits. In Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006), the panel concluded that a respondent registered and used a disputed domain name in bad faith when the respondent used the disputed domain name to host a competing website offering services that competed with the complainant’s services.
In view of the above, the Panelist finds that Respondent registered and uses the <waterleferealestate.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thus, it is found that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <waterleferealestate.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: August 27, 2012
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