Holding Company of The Villages, Inc. v. Jaime Goldsmith
Claim Number: FA1605001673212
Complainant is Holding Company of The Villages, Inc. (“Complainant”), represented by William G. Giltinan of Carlton Fields Jorden Burt, P.A., Florida, USA. Respondent is Jaime Goldsmith (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thevillagesinsurance.net>, 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 Forum electronically on May 3, 2016; the Forum received payment on May 3, 2016.
On May 4, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thevillagesinsurance.net> 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 May 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@thevillagesinsurance.net. Also on May 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 25, 2016.
On May 31, 2016 Complainant filed an additional submission that was compliant with Supplemental Rule #7.
On June 6, 2016 Respondent filed an additional submission that was also compliant with the applicable rule.
On June 2, 2016, 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 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.
A. Complainant
Policy ¶ 4(a)(i)
Complainant has rights in the THE VILLAGES mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,915,348, registered Feb. 8, 2011). Respondent’s <thevillagesinsurance.net> domain name is confusingly similar to the THE VILLAGES mark because it contains the mark combined with the generic term “insurance” and the generic top-level domain (“gTLD”) “.net.”
Policy ¶ 4(a)(ii)
Respondent is not commonly known by the <thevillagesinsurance.net> domain name, as it conducts business as “HomeTown Village Insurance.” Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is a former employee of Complainant who is using the resolving website to compete with Complainant in the insurance industry.
Policy ¶ 4(a)(iii)
Respondent uses the <thevillagesinsurance.net> domain name in bad faith because it is used to compete with Complainant in the insurance industry. Respondent registered the <thevillagesinsurance.net> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in the THE VILLAGES mark.
B. Respondent
Policy ¶ 4(a)(i)
The <thevillagesinsurance.net> domain name is not confusingly similar to the THE VILLAGES mark because the term “insurance” distinguishes the domain from the mark.
Policy ¶ 4(a)(ii)
Respondent uses the <thevillagesinsurance.net> domain name to operate a legitimate business under a distinct business name that is different from Complainant’s business name and does not attempt to mislead consumers into associating the domain name with Complainant. The words “the villages” in the domain name are generic.
Policy ¶ 4(a)(iii)
Respondent does not engage in bad faith because it uses the <thevillagesinsurance.net> domain name to operate a legitimate business under a distinct business name that is different from Complainant’s business name and does not attempt to mislead consumers into associating the domain name with Complainant. The words “the villages” in the domain name are generic.
C. Additional Submissions
Complainant’s additional submission contends that Respondent appears to raise a defense of geographic descriptiveness which is not applicable for a number of reasons. Principally, because Complainant was the originator of the mark used to describe the geographic location, and that mark, if not inherently distinctive, has acquired distinctiveness as reflected by its registration and status as an incontestable trademark.
Respondent’s additional submission contends that its actions do not amount to bad faith and that Complainant’s registration of a trademark did not guarantee it rights to a corresponding domain name.
Complainant is Holding Company of The Villages, Inc. located at The Villages, FL, USA. Complainant is the owner of numerous domestic registrations for the mark, THE VILLAGES, covering several international classes including residential retirement home real estate construction and development, real estate brokerage and management services, banking, financial and insurance services including insurance administration and brokerage for life, health, casualty and property insurance. Complainant has continuously used the mark since at least as early as 1992. Complainant also maintains a web presence at <thevillages.com> and <thevillagesinsurance.com> which it registered in 1996 and 2000 respectively.
Respondent is Jaime Goldsmith of Lady Lake, FL, USA. Respondent’s registrar’s address is listed as Phoenix, AZ, USA. Respondent has worked in the insurance industry for many years including for more than a year in the employ of Complainant. Respondent states that while working for Complainant at The Villages Insurance Agency in 2011, Respondent experienced an abrupt change in home life. Shortly thereafter, in 2012, Respondent decided to start its own insurance agency and, with the assistance of a business consultant, decided to establish a website utilizing “The Villages” as its domain name because of the popularity of the location.
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 claims rights in the THE VILLAGES mark through its registration with the USPTO (e.g., Reg. No. 3,915,348, registered Feb. 8, 2011), a copy of which Complainant has provided in its exhibits. As such, the Panel finds that Complainant holds rights in the THE VILLAGES mark under Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant alleges that Respondent’s <thevillagesinsurance.net> domain name is confusingly similar to the THE VILLAGES mark because it contains the mark combined with the generic term “insurance” and the gTLD “.net”. The Panel notes that the domain also lacks the space between the words of the mark. Prior panels have found similar changes insufficient to differentiate the mark from the domain name. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel here finds the <thevillagesinsurance.net> domain name confusingly similar to the THE VILLAGES mark.
Respondent contends that the <thevillagesinsurance.net> domain name is not confusingly similar to the THE VILLAGES mark because the term “insurance” distinguishes them. Respondent urges that “insurance” is not a meaningless word in the domain, but rather, must be evaluated with equal weight as the rest of the domain name. The Panel finds Respondent’s arguments both unsupported and unpersuasive.
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), 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 claims that Respondent is not commonly known by the <thevillagesinsurance.net> domain name, as it conducts business as “HomeTown Village Insurance.” The Panel notes that Respondent does not disagree, and instead contends only that it is known by the business name “HomeTown Village Insurance.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant contends that Respondent fails to use the <thevillagesinsurance.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent is a former employee of Complainant who is using the resolving website to compete with Complainant in the insurance industry. Respondent’s own arguments set forth her former employment with Complainant’s business. Complainant has also provided screenshots of its own website, and Respondent’s resolving website, to demonstrate competitive use by Respondent. Prior panels have found use of a confusingly similar domain name to compete with a trademarks holder’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel here finds that Respondent fails to use the <thevillagesinsurance.net> domain name to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent maintains that it uses the <thevillagesinsurance.net> domain name to operate a legitimate business under the name “HomeTown Village Insurance.” Respondent asserts that it does not claim to be associated with Complainant, or otherwise mislead consumers into believing such an association exists. However, it is clear that the domain name Respondent registered does not match the business name it utilizes. Further, as a former employee of Complainant, Respondent was acutely aware that Complainant owned the registered mark THE VILLAGES, along with domain names similar to the one it selected, including <thevillages.com> and <thevillagesinsurance.com>.
Respondent argues that its business name is distinct from Complainant’s business name such that consumers would not be confused and that the words “the villages” refer to the closest largest population center in the area in which it operates. Additionally, Respondent argues the terms, “the villages” of the <thevillagesinsurance.net> domain names are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet. However, Respondent ignores the fact that there was no entity known as “the villages” prior to Complainant’s actions to develop and brand the area. Respondent also provides no evidence that Complainant’s mark has become generic.
The Complainant has proven this element.
Complainant alleges that Respondent uses the <thevillagesinsurance.net> domain name in bad faith because it is used to compete with Complainant in the insurance industry. Complainant has provided screenshots of its own website and the resolving website to demonstrate the competitive use. The Panel finds that evidence supports the conclusion that Respondent uses the domain name in bad faith according to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Complainant argues that Respondent uses the <thevillagesinsurance.net> domain name in bad faith to attract Internet users because Respondent is a former employee of Complainant who is now competing with Complainant. Complainant draws particular attention to particular website screenshots, which display small text for the purposes of search engine rankings, that include Complainant’s business name and THE VILLAGES mark. The Panel finds that evidence further supports a finding that Respondent uses the <thevillagesinsurance.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See CAN Financial Corporation v. William Thomson / CAN Insurance, FA1401001541484 (Forum Feb. 28, 2014) (finding that the respondent had engaged in bad faith under Policy ¶ 4(b)(iv), by using a confusingly similar domain name to attract Internet users to its own website where it sold competing insurance services).
Complainant further contends that Respondent registered the <thevillagesinsurance.net> domain name in bad faith because it did so with actual knowledge of Complainant’s rights in THE VILLAGES mark. Complainant asserts that because Respondent is a former employee of Complainant, Respondent had actual knowledge of Complainant’s rights well before the domain name was registered. Respondent agrees that it was a former employee of Complainant. Respondent registered the domain after leaving Complainant’s employ and states that it engaged an agent to search for available business names before adopting the disputed domain name and designing the resolving website in a manner similar to the Complainant. The Panel finds the evidence indicates Respondent had actual knowledge of Complainant’s THE VILLAGES mark at the time of registration, and that Respondent registered and used the disputed domain name in bad faith according to Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
Respondent contends that the <thevillagesinsurance.net> domain name is comprised entirely of common terms that have many meanings apart from use in Complainant’s THE VILLAGES mark. Respondent insists that the terms refer to a specific area of Florida and has provided a list of other uses of the term as a generic phrase. While it is true the mark refers to a specific area of Florida, the mark was coined by Complainant for purposes of identifying that area which it developed, and which resulted in Complainant receiving a trademark registration for its mark from the USPTO.
Moreover, Respondent contends that the registration and use of a domain name comprising such common terms is not necessarily done in bad faith. Respondent’s arguments fail as Respondent has provided no evidence to show that Complainant’s registered incontestable trademark has become generic nor has Respondent explained why it decided to register the domain name despite being aware of Complainant’s rights in its mark, THE VILLAGES. As to others use of the words constituting the mark, Respondent’s reliance upon those examples is misplaced. The mere fact that others make use of all or part of registered mark in an ordinary fashion, in another context, has no impact on the continuing validity of the mark as it relates to the goods or services for which it was registered.
The Complainant has proven this element.
As 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 <thevillagesinsurance.net> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 16, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page