Georgia Real Estate Investors Association, Inc. v. Dustin Griffin / ATTN GAREIA.COM / D. Griffin as Trustee
Claim Number: FA1603001667441
Complainant is Georgia Real Estate Investors Association, Inc. (“Complainant”), represented by Karen Yapp, Georgia, USA. Respondent is Dustin Griffin / ATTN GAREIA.COM / D. Griffin as Trustee (“Respondent”), represented by Thomas C. Loepp of Thomas C. Loepp, Law Offices, Co., LPA, Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gareia.com>, <gareia.org>, <gareia.info>, <gareia.net>, <gareia.co>, <gareia.biz>, <georgiareia.com>, <georgiareia.org>, <georgiareia.net>, <georgiareia.info>, and <georgiareia.co>, registered with Wild West Domains, Llc. (the “Disputed Domain Names”).
Each of the undersigned certify 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.
Sandra J. Franklin, Kendall C. Reed, and Jeffrey M. Samuels as Panelists, Kendall C. Reed as Panel Chair.
Complainant submitted a Complaint to the Forum electronically on March 25, 2016; the Forum received payment on March 25, 2016.
On March 28, 2016, Wild West Domains, Llc confirmed by e-mail to the Forum that the <gareia.com>, <gareia.org>, <gareia.info>, <gareia.net>, <gareia.co>, <gareia.biz>, <georgiareia.com>, <georgiareia.org>, <georgiareia.net>, <georgiareia.info>, and <georgiareia.co> domain names are registered with Wild West Domains, Llc and that Respondent is the current registrant of the names (sometimes referred to herein as the “Disputed Domain Names”). Wild West Domains, Llc has verified that Respondent is bound by the Wild West Domains, 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 April 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 19, 2016 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@gareia.com, postmaster@gareia.org, postmaster@gareia.info, postmaster@gareia.net, postmaster@gareia.co, postmaster@gareia.biz, postmaster@georgiareia.com, postmaster@georgiareia.org, postmaster@georgiareia.net, postmaster@georgiareia.info, and postmaster@georgiareia.co. Also on April 5, 2016, 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 May 19, 2016.
A timely Additional Submission was received from Complainant on May 24, 2016.
A timely Additional Submission was received from Respondent on May 29, 2016.
On May 27, 2016 pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the Forum appointed: Sandra J. Franklin as Panelist, Kendall C. Reed as Panelist, and Jeffrey M. Samuels as Panelist. Kendall C. Reed was appointed Panel Chair.
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
Complainant is a non-profit trade association that began in 1981. Complainant is one of the longest running real estate investors associations in the United States, and has used the GAREIA mark to identify its organization. “GA” stands on its own as an abbreviation for “Georgia” and “REIA” represents “Real Estate Investing Association” and, together, GAREIA represents a mark in which Complainant has established common law trademark rights. Further, each of Respondent’s disputed domains is either identical or confusingly similar as they incorporate the GAREIA mark entirely or simply spell out “Georgia” and include myriad generic top-level domains (“gTLDs”) or the country-code top-level domain (“ccTLD”) “.co.”
Respondent has no rights or legitimate interests in the Disputed Domain Names. Complainant has not granted Respondent permission to incorporate the GAREIA mark in any variation in connection with domain name registrations. Respondent is not commonly known by the Disputed Domain Names; rather, Respondent’s company is known by “Atlanta Reia.” Respondent has not used the Disputed Domain Names with any bona fide offering of goods or services or for any legitimate noncommercial or fair use. Instead, Respondent surreptitiously acquired <gareia.org> and allows Complainant to use it, while associating all other of the Disputed Domain Names with Respondent’s own competing website.
Respondent registered and is using the Disputed Domain Names in bad faith. Respondent’s registration of multiple infringing domains in the instant case has demonstrated a pattern of bad faith domain registrations and prevents Complainant from reflecting its mark on the Internet, imputing bad faith under Policy ¶ 4(b)(ii). The competing nature of Respondent’s redirection reflects an intent to disrupt the business of Complainant under Policy ¶ 4(b)(iii). Furthermore, Respondent is operating the Disputed Domain Names with the intent to profit from Internet user confusion, representing bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Complainant has not proven that it has rights in the GAREIA mark under Policy ¶ 4(a)(i). Complainant’s Annex 1 is merely a Certificate of Existence of the “GEORGIA REAL ESTATE INVESTORS ASSOCIATION, INC.” and does not provide relevant proof of Complainant’s rights in the GAREIA mark. Complainant cannot claim trademark rights in generic terms.
The <gareia.org> and <gareia.net> domain names were knowingly transferred to Respondent and they have been maintained faithfully and in good faith, at his own expense.
Respondent has not prevented Complainant from reflecting its alleged mark online as there are many available domains incorporating “GAREIA” that are available as of May 18, 2016 (date of Response). There is no evidence on record that Respondent’s use of the Disputed Domain Names has caused any disruption of Complainant’s business. On the contrary, Respondent maintains two of the Disputed Domains Names, as part of its fiduciary duty to Complainant, for Complainant’s commercial benefit.
C. Complainant’s Additional Submission
On the issue of Complainant’s rights in a trademark, Complainant makes the following assertions: that the <gareia.org> domain name was registered by or for its benefit on November 8, 1998, and that “…That alone is sufficient proof to establish GAREIA’s first in use of its trade name in the State of Georgia vis-a-vis Respondent”; that GAREIA has recently sought to register the trademark and tradename GAREIA with the Georgia Secretary of State’s office and Dekalb County; that its common law rights to its trade name pre-date by decades any use of that trade name by Respondent or any of his entities; and that Respondent acknowledges a fiduciary duty to maintain and protect the <gareia.org> and <gareia.net> domain names.
D. Respondent’s Additional Submission
On the issue of Complainant’s rights in a trademark, Complainant admits that it currently has not registered trademarks such as “GAREIA” or “Georgia REIA.” Further, Complainant cannot assert trademark rights over the common word “Georgia” and the commonly used term “Real Estate Investing Service” and its acronym, “REIS”, which are used by numerous organizations both in Georgia and throughout the United States, without having ever filed a trademark registration with respect to Complainant’s use of them. Complainant might not have ever cared about the issue or “…really never thought of GAREIA as anything other than a nickname, a domain name or an acronym.” Complainant’s name is “Georgia Real Estate Investors Association,” and it did not register this name as a domain name before it was registered by a third party in 2011. “[T]he facts remain, GAREIA is not a valid trademark that is exclusive to the Complainant…”
In light of the Panel’s determination to dismiss the complaint, it is not necessary to render findings.
After reviewing the parties’ original and supplemental submissions, the Panel finds that this dispute is more appropriately resolved in a court of law, and for this reason the Panel hereby dismisses the complaint. See Love v. Barnett, FA 944826 (Forum May 14, 2007), wherein the panel stated:
“A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint…When parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility. “
See also Luvilon Indus. NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
“[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.”
See also Bracemart, LLC v. Drew Lima FA 1494699 (Mar. 28, 2013), wherein the panel declined to make any findings under the UDRP when there was evidence that both the complainant and the respondent at some point acted in an official capacity in the management of the company, and that “[b]ased upon this reasoning, the Panel concludes that the instant dispute relates to contractual interpretation and/or whether the relationship between Complainant and Respondent was one of employer-employee or one of partnership, which determination falls outside the scope of the Policy.”
Like the facts in these prior UDRP matters, the present matter presents complex factual disputes and issues, such as whether the term “gareia” is used by Complainant as a trademark or service mark, whether such term, even if used as a trademark or service mark, is sufficiently distinctive to warrant protection, whether Respondent is a fiduciary with respect to the domain names <gareia.org> and <gareia.net> and, if so, the metes and bounds of his fiduciary obligations, and whether Respondent has a legitimate basis for asserting independent rights over the remaining disputed domain names.
The Panel further notes that Respondent, in his additional submission, contends that the mark “gareia” is in dispute between the parties and “this trademark dispute will likely have to resolved in court if [Complainant] is unwilling to amicably resolve this matter.”
Having decided not to act on this matter, the Panel concludes that the complaint herein is dismissed.
Accordingly, the <gareia.com>, <gareia.org>, <gareia.info>, <gareia.net>, <gareia.co>, <gareia.biz>, <georgiareia.com>, <georgiareia.org>, <georgiareia.net>, <georgiareia.info>, and <georgiareia.co> domain names REMAIN WITH RESPONDENT.
Kendall C. Reed (Panel Chair), Sandra J. Franklin, and Jeffrey M. Samuels
Panelists
Dated: June 9, 2016
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