Holding Company of The Villages, Inc. v. Deborah Gentry
Claim Number: FA1710001755756
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 Deborah Gentry (“Respondent”), represented by Stephen H. Luther of Allen, Dyer, Doppelt + Gilchrist, PA, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <thevillageshousesforsale.com>, 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 26, 2017; the Forum received payment on October 26, 2017.
On October 26, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <thevillageshousesforsale.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 October 30, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 2017 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@thevillageshousesforsale.com. Also on October 30, 2017, 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 November 30, 2017.
On December 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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
Complainant engages in business relating to luxury retirement community and various services it and its affiliates and licensees offer to the community residents and others. Complainant registered the THE VILLAGES mark with the Principle Register of the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,614,700 registered Sept. 3, 2002). Respondent’s <thevillageshousesforsale.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the generic terms “housesforsale” onto the end of Complainant’s THE VILLAGES mark.
Respondent has no rights or legitimate interests in the <thevillageshousesforsale.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent is a former independent contractor of Complainant’s affiliate, and started its engagement with Complainant on July 21, 2006, three years prior to her registration of the competing domain name. Relatedly, Respondent signed an independent contractor agreement outlining, in pertinent part, that “[Respondent] further agrees that any websites, sales paraphernalia, promotional materials or advertisements are subject to prior approval of [Complainant].” Further, Respondent does business through a competing brokerage office that uses the trade name RE/MAX PREMIER REALTY. Additionally, Respondent promotes these competing services by using the THE VILLAGES mark, giving the impression that Respondent is affiliated with Complainant and its services.
Respondent registered and uses the <thevillageshousesforsale.com> domain name in bad faith. Respondent has registered eighty-five other domain names, sixty-two of them containing the terms “the villages” or “villages,” establishing a pattern of domain name filings with an intent to misdirect traffic to Respondent’s competing website. Further, Respondent, as a former independent contractor for a complainant’s affiliate, who shortly after her contract period set up a competing business and registered a domain name identical to the mark of her former client, and distinct from her own brokerage office’s business name, can be inferred to have acted in bad faith because the diverting of internet customers to her own website both disrupts the business of the former client and does so for commercial gain. Finally, Respondent had actual or constructive knowledge of Complainant’s THE VILLAGES mark, as Respondent was a former independent contractor working with Complainant in 2007, and Complainant had federal registrations of the mark at the time Respondent registered the domain name at issue.
B. Respondent
The disputed domain name is not identical or confusingly similar to the THE VILLAGES mark. Rather, <thevillageshousesforsale.com> explains precisely what it is: a website listing homes for sale in The Villages geographical area. Because The Villages is a widely recognized geographic area, Respondent has every right to explain via a domain name or elsewhere that it has homes for sale that are located in this geographic area. Respondent does so using a domain name containing merely generic or descriptive terms which Complainant does not own exclusive control.
Respondent does have rights and legitimate interests in the <thevillageshousesforsale.com> domain name. While Complainant may have been the first to use the phrase “The Villages” in this geographic area, it has come into extensive use as a geographic area in a non-trademark sense which Complainant does not hold exclusive rights. Rather, Respondent uses the The Villages name in a non-trademark manner to explain that her real estate practice is focused on this geographic area. Further, where a mark becomes generic in the sense that it is synonymous with the product, it is no longer eligible for trademark protection. In virtually every case where a mark has become generic, it has become so through extensive marketing and promotional efforts of the former trademark owner.
Respondent did not register the <thevillageshousesforsale.com> domain name in bad faith. Rather, Respondent became aware that The Villages, Florida is a recognized geographic area and registered the domain name to inform users that it works in that area; thus, the domain name is simply a reflection of the services provided by Respondent. Respondent did not register the domain name to trade off on any alleged goodwill associated with Complainant, as the resolving webpage makes no mention of any affiliation with Complainant, and further, even provides a disclaimer on every page to expressly denounce such a notion. The disputed domain name simply contains geographic/descriptive terms, which in themselves are not evidence of bad faith. Further, Complainant owns 121 domain names, so Respondent has not prevented Complainant from registering domain names to further its business.
Respondent asserts that this proceeding should be barred by the doctrine of latches.
The Panel notes that Respondent first registered the
<thevillageshousesforsale.com> domain name on July 24, 2009.
C. Additional Submissions
Additional submissions were timely filed by both parties. Complainant seeks to suspend this arbitration proceedings pending resolution of an action filed by it against Respondent in federal court facially dated December 5, 2017. Respondent opposes the request to suspend.
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 Issues:
A. Request to Stay Proceedings
Complainant requests a stay of these proceedings pending resolution of a federal court action which Complainant recently filed against Respondent. Respondent replies that it was Complainant that chose this forum to resolve the pending domain name dispute, and should not now be heard to complain that the forum it chose is not the appropriate one to resolve this dispute. The Panel agrees with Respondent on this issue and denies Complainant’s request to stay these proceedings.
B. Laches
Mere delay between the registration of a domain name and the filing of a UDRP complaint does not bar Complainant from filling such a case or from potentially prevailing on the merits. See e.g. Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”) The Panel therefore declines to apply the doctrine of laches in this case.
Complainant claims to have registered the THE VILLAGES mark with the USPTO (e.g. Reg. No. 2,614,700, registered Sept. 3, 2002). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the THE VILLAGES mark per Policy ¶4(a)(i).
Complainant next argues that Respondent’s <thevillageshousesforsale.com> domain name is identical or confusingly similar to Complainant’s mark as it adds the generic terms “housesforsale” onto the end of Complainant’s THE VILLAGES mark. Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653178 (Forum Jan. 21, 2016) (determining that 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”.) The Panel therefore finds that the <thevillageshousesforsale.com> domain name is confusingly similar to the THE VILLAGES mark under Policy ¶4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <thevillageshousesforsale.com> domain name. Relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Deborah Gentry” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the THE VILLAGE mark. Panels may use these assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <thevillageshousesforsale.com> domain name under Policy ¶ 4(c)(ii).
Relatedly, Complainant alleges that Respondent is a former independent contractor of Complainant’s affiliate, and started its engagement with Complainant on July 21, 2006, three years prior to her registration of the competing domain name. Further, Respondent signed an independent contractor agreement outlining, in pertinent part, that “[Respondent] further agrees that any websites, sales paraphernalia, promotional materials or advertisements are subject to prior approval of [Complainant].” Former employees or former affiliates generally are not found to have rights and legitimate interests in domain names incorporating marks of the employer under Policy ¶ 4(a)(ii). See Dominic Vetere v. DAVE CARRIER / DC FINANCE INC, FA 1707259 (Forum Jan. 24, 2017)(holding that “former employees of a company no longer hold any rights or legitimate interests in the company’s mark”). See also, Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (Holding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer’s trademark).
Next, Complainant contends that Respondent uses the THE VILLAGE mark to benefit from Complainant’s mark to offer competing brokerage services. Panels have held that using a complainant mark to offer competing services can demonstrate a lack of a bona fide offering of goods or services and a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving webpage, which does appear to contain Complainant’s THE VILLAGE mark, and offers competing services under the business entity “RE/MAX Premier Realty.”
Respondent argues that it uses THE VILLAGES name in a non-trademark manner to indicate that her real estate practice is focused in that geographic area. This same argument was unsuccessfully raised in Big Canoe Company LLC v. Daniel T. Elliot, FA 799382 (Forum Nov. 17, 2016), a case with a very similar fact pattern to this one. The Panel in that case held: “Respondent bases its argument for rights or legitimate in interests on the assumptions that BIG CANOE is geographically descriptive. However, Respondent’s use of the disputed domain name […] is confusingly similar to Complainant’s mark [and competing with Complainant business in the offering of real estate].” For this same reason, the Panel similarly finds that Respondent’s use of this domain does not establish legitimate rights and interests.
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Finding for Complainant
Complainant further argues that Respondent registered the infringing domain name in bad faith as Respondent has a propensity for registering confusingly similar domain names containing Complainant THE VILLAGE mark. A pattern of domain name filings with an intent to misdirect traffic to a respondent’s website may constitute evidence of bad faith under Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)). Complainant provides a list of domain names registered by Respondent, which include domain names such as <debbiesellsthevillages.com> and <brownwoodatthevillages.com>. Accordingly, the Panel finds that Respondent has registered multiple domain names incorporating THE VILLAGES mark and that such constitutes evidence of bad faith conduct in the present proceeding.
Complainant next argues that Respondent was a former independent contractor of Complainant’s and had no authorization to register any domain name using the THE VILLAGE mark. Former relationships between a complainant and a respondent do not confer the right to register a domain name incorporating a complainant’s mark. See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) ("Respondent's registration of the company name of his former employer as a domain name is an act of bad faith."). Complainant provides the independent contractor’s agreement between Complainant and Respondent, which states that Respondent is not authorized to use the mark in any domain name. The Panel finds that Respondent’s former status as an independent contractor for Complainant constitutes further evidence of bad faith under Policy ¶ 4(a)(iii).
Lastly, Complainant claims that Respondent had actual knowledge of Complainant’s THE VILLAGES mark. Considering the respondent’s former independent contractor status, the Panel agrees that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name. Actual knowledge evinces bad faith registration under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thevillageshousesforsale.com> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: December 19, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page