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WIPO Arbitration and Mediation Center

The Complainant is Realmark Cape Harbour L.L.C., with place of business in Cape Coral, Florida, United States of America (USA).

The Respondent is Lawrence S. Lewis, with address in Cape Coral, Florida, USA.

The disputed domain names are "capeharbour.com" and "capeharbor.com".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint by e-mail received by the WIPO Arbitration and Mediation Center ("WIPO") on October 20, 2000, and by courier mail received by WIPO on October 24, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On October 26, 2000, WIPO transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar’s Response received by WIPO on October 29, 2000). On November 3, 2000, WIPO completed its formal filing compliance requirements checklist.

(b) On November 3, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail. WIPO also transmitted such notification to Respondent’s Technical Contact and Billing Contact.

(c) Respondent’s response was received by WIPO via e-mail on November 17, 2000, and via courier mail on November 20, 2000. Respondent also transmitted the response to Complainant.

(d) On November 24, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On November 27, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

5. On November 28, 2000, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by December 11, 2000. On November 28, 2000, the Panel received an electronic file in this matter by e-mail from WIPO. The Panel subsequently received a hard copy of the file in this matter by courier mail from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Complainant claims common law trademark rights in "Cape Harbour". Complainant has not registered such mark on the Principal Register at the United States Patent and Trademark Office (USPTO). On or about October 10, 2000, Complainant filed an application for service mark registration with the Division of Corporations of the Florida Secretary of State. Complainant has advertised the Cape Harbour residential real estate development on a billboard in Ft. Myers, Florida. Complainant has advertised the Cape Harbour development with full page advertisements in a number of magazines appearing in the United States (e.g., Unique Homes, Sept. 2000; Homebuyer, Annual 2001; House and Homes, undated; Gulfshore Life, Oct. 2000; and Germany (e.g., FLWelt, July-Sept. 2000; Florida Journal, Apr.- June, 2000). Complainant prints and distributes color brochures advertising the Cape Harbour development. Complainant has submitted local newspapers from Cape Coral, Florida, showing articles describing its purchase of the Cape Harbour development from a prior owner in January 2000 ("Cape Harbour sold to Atlanta-based developer", Cape Coral Daily, Jan. 14, 2000, page 1; "Cape Harbour gets new owner today", The News Press, Jan. 14, 2000, page 1). Such newspaper articles indicate the presence of existing homes in the development, as well as extensive plans for further development. Such articles also indicate that a predecessor owner (Avatar, Inc.) began development in 1996 or 1997.

Complainant maintains a website at Internet address "www.capeharbourmarina.com". The record of such registration was created on December 16, 1999 (Response, Exhibit E).

According to the registrar’s verification response to WIPO, dated October 29, 2000, "Lawrence S. Lewis" is the listed registrant of the domain names "capeharbour.com" and "capeharbor.com". The Administrative Contact is "Lewis, Lawrence". A Network Solutions’ WHOIS database search indicates that the record of registration for "capeharbour.com" was created on March 31, 1999, and that this record was last updated on March 16, 2000 (Complaint, Exhibit A). The record of registration for "capeharbor.com" was created on March 28, 1999, and was last updated on March 26, 2000 (id.). Respondent activated a website at "www.capeharbour.com" shortly following registration of the disputed domain names (Response, para. 28, uncontradicted by Complainant). Respondent used the "capeharbor.com" domain name to redirect Internet users to the "www.capeharbour.com" website (id.).

Respondent has maintained a website with Internet address "www.capeharbour.com" that as of July 20, 2000, stated, inter alia:

"Waterfront Homes in a yachting community

Cape Coral, Florida

home of Cape Harbour yachting community

Click here to view the Cape Harbour map

The Cape Harbour recreational area and marina complex is on schedule to be completed before November said the developers….

Harbour Preserve … and Harbour Point … are sections within the Cape Harbour Development in Cape Coral…

Let our Real Estate Consultant Maria show you why Cape Coral is one of the favorite locations in the U.S. for relocation.

…

Maria L. Lewis Realtor® - Professional Realty Consultants of Lee County

…

This site is not associated with REALMARK CAPE HARBOUR, LLC, or any other entity or individual involved with the Cape Harbour Development. The official website for the Cape Harbour development has not been announced."

Said website also included photographs of signage posted by Complainant using the names of parts of the Cape Harbour development. (Complaint, Exhibit F)

On September 6, 2000, Complainant (through its counsel) sent Maria Lewis a cease and desist and transfer demand with respect to the "capeharbour.com" domain name (letter from Michael Hobbs to Maria Lewis, id., Exhibit G).

As of October 18, 2000, the web site at the "www.capeharbour.com" Internet address had been modified to add a second disclaimer to the top of the home page, to remove photographs of Complainant’s signage and replace them with photographs of local geography. The website states, inter alia, "Cape Harbour is exciting. The last of the Avatar homes are being finished in the Harbor Point area…" There is a newly-added overhead photograph with caption "This satellite view of Cape Harbour was taken by the United States Geological Survey on 9 February 1995 before home construction began." (Id., Exhibit H)

As of October 18, 2000, the web content appearing at "www.capeharbour.com" also appeared at Internet address "www.capeharbor.com" (id., Annex I).

On February 1, 2000, Complainant sent a marketing letter to "Luisa Lewis Maria" announcing the introduction at Cape Harbour of "three brand new communities" and indicating, inter alia, with respect to those new communities "(frankly we don’t have our sales materials ready") (Response, Exhibit H).

There are a number of geographical locations in the United States and other countries with the name "Cape Harbor" or "Cape Harbour". These geographical locations are sometimes associated with businesses, such as "Cape Harbor Apartments" (Wilmington, North Carolina; USA, "Cape Harbor Yacht Club", Cape May, New Jersey, USA; "False Cape Harbour Development Site", Cairns, Queensland, Australia; "White Cape Harbour", Newfoundland) (id. Exhibit L).

On April 8, 1999, Complainant accepted a deposit receipt from Respondent for purchase of a condominium at Marine Point Cape Harbour Condominium. The map identifying the property site for such condominium is headed "Marina Point, Cape Harbour" (id., Exhibit M).

Real estate brokers in Cape Coral, Florida, routinely identify homes in the Cape Harbour development as "Cape Harbour" homes. Homes around the development are sometimes identified by "Cape Harbour area" and similar designations (Id., Exhibit N).

A federal trademark search dated February 12, 2000, indicated no "Cape Harbour" trademark registered (id., Exhibit P).

In February 2000, Complainant offered to purchase the "capeharbour.com" domain name from Respondent for $500. Respondent declined such offer, stating, inter alia, "We registered the name last year with a goal to establish a presence in the community for purposes of listing homes for resale. That goal has not changed (Fax letter from Lawrence Lewis to Willam Stout, id., Exhibit Q)

Maria Lewis acted as real estate broker on a sale and purchase of a dwelling at Cape Harbour in April 1999 (id., Exhibit R).

By letter of September 27, 2000, Respondent (through its counsel) replied to a cease and desist and transfer demand from Complainant, stating, inter alia, "Ms. Lewis carefully researched the name ‘Cape Harbour’ in early 1999 and determined that there were no trademark or domain name registrations existent or pending for that name. She then registered the domain name "capeharbour.com" for her website. For at least a year, Ms. Lewis operated her site without receving any objection from the prior developers of Cape Harbour. My client’s website lists resale properties only and not new construction." (Letter from William Noonan to Michael Hobbs, id., Exhibit V).

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)).

Complainant states in its own words:

"FACTUAL BACKGROUND

"11. Complainant is engaged in developing, promoting and selling new homes in an exclusive waterfront, deep-water marina community known as CAPE HARBOUR and located in Cape Coral, Florida. Complainant purchased the CAPE HARBOUR development from its predecessors in interest in January 2000. The CAPE HARBOUR development includes the planned construction of more than 300 luxury homes, as well as a marina with 76 slips to accommodate boats up to 70 feet."

"12. Complainant and its predecessors in interest have been developing the CAPE HARBOUR community for more than three years and, during that time, have continuously and extensively used the CAPE HARBOUR mark to identify, advertise, and promote the CAPE HARBOUR development. Development and sales of homes in the CAPE HARBOUR community are projected to continue for approximately the next four years."

"13. Complainant employs a staff of eight individuals, and numerous other contractors, who work in connection with the CAPE HARBOUR development. Complainant’s sales staff located at the CAPE HARBOUR development is responsible for promoting, showing, and selling luxury homes located within the exclusive CAPE HARBOUR community."

"14. The impact of the CAPE HARBOUR development on the Cape Coral, Florida, community is tremendous. It is anticipated that the CAPE HARBOUR development will add an estimated $250 million to the city’s tax base."

"15. In addition to advertising and promotional expenditures by its predecessors in interest, Complainant alone has spent hundreds of thousands of dollars advertising and promoting its CAPE HARBOUR development and corresponding mark in the United States and abroad. Not only has Complainant purchased a billboard advertisement in Ft. Myers, Florida, at the Cape Coral Bridge, but also Complainant has advertised extensively in various magazines and newspapers targeting consumers in the United States and various European countries. In all such advertising and promotional materials, Complainant’s CAPE HARBOUR mark is prominently featured. Copies of representative samples of Complainant’s advertising and promotional materials are attached as Exhibit [hereto]."

"16. In addition, Complainant’s CAPE HARBOUR development has received media coverage. Copies of news articles about Complainant’s CAPE HARBOUR development are attached as Exhibit [hereto]."

"17. Complainant has acquired common law trademark rights in the CAPE HARBOUR mark through its extensive use of the mark in connection with its waterfront, deep-water marina community, thereby giving Complainant exclusive rights to use its CAPE HARBOUR mark on and in connection with its products and services. Complainant has also applied for registration of its CAPE HARBOUR mark with the Florida Secretary of State. A copy of Complainant’s application for state trademark registration, and proof of payment of the applicable fee, is attached as Exhibit [hereto]".

"18. As a result of the extensive and long-standing advertising, promotion, and use of the CAPE HARBOUR mark by Complainant and its predecessors in interest, Complainant’s CAPE HARBOUR mark has developed substantial goodwill and name and brand recognition. The CAPE HARBOUR mark is well-known in Cape Coral, Florida, and in other areas of Florida and beyond, as uniquely identifying Complainant’s exclusive CAPE HARBOUR development."

"19. Respondent is a resident of Cape Coral, Florida. Respondent’s wife, Maria L. Lewis, is a realtor in Cape Coral who has no affiliation with Complainant or with the CAPE HARBOUR development."

"20. Respondent registered the <capeharbour.com> and <capeharbor.com> domain names more than two years after Complainant’s predecessors in interest established common law rights in and to the CAPE HARBOUR mark. Respondent registered the domain names with full knowledge that the rights in and to the CAPE HARBOUR mark belonged to Complainant’s predecessors in interest. Respondent and his wife, Ms. Lewis, have used the <capeharbour.com> and <capeharbor.com> domain names to divert people looking for information about Complainant and its CAPE HARBOUR development to a web site devoted to Ms. Lewis’ real estate business. Copies of these Internet pages as they appeared on July 20, 2000, are attached as Exhibit [hereto]. As discussed in more detail herein, Respondent and Ms. Lewis have used these domain names to intentionally attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with Complainant’s CAPE HARBOUR mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s and Ms. Lewis’ web sites and as to the services offered on those web sites. As such, Respondent and Ms. Lewis have registered and used these domain names in bad faith."

"21. Since purchasing the CAPE HARBOUR development in January 2000 from its predecessors in interest, including purchase of all rights to the CAPE HARBOUR mark, and becoming aware of Respondent’s registration of the <capeharbour.com> domain name, Complainant has engaged in on-going efforts to try to resolve issues concerning the <capeharbour.com> domain name by having the domain name transferred to it. Respondent and Ms. Lewis have rejected Complainant’s attempts to resolve this matter amicably."

"22. In particular, in approximately March 2000, Complainant offered to purchase the <capeharbour.com> domain name for $500, but Respondent and Ms. Lewis refused to transfer the <capeharbour.com> domain name to Complainant in exchange for that amount."

"23. On or before July 20, 2000, Respondent also incorporated onto the <capeharbour.com> Internet site Complainant’s copyright protected architectural drawings and pictures of signs bearing the CAPE HARBOUR mark and appearing within Complainant’s CAPE HARBOUR development. See Exhibit [hereto]. The web site was identified as being operated by ‘Maria L. Lewis Realtor® - Professional Realty Consultants of Lee County;’ and encouraged people to ‘Let our Real Estate Consultant Maria show you why Cape Coral is one of the favorite locations in the U.S.’ Id."

"24. In response to Respondent’s registration and use of the <capeharbour.com> domain name, as well as the use of Complainant’s copyright protected materials and trademarks on the content of the <capeharbour.com> Internet site, counsel for Complainant sent a letter dated September 6, 2000, to Ms. Lewis, demanding that Ms. Lewis immediately assign the <capeharbour.com> domain name to Complainant and cease the unauthorized use of Complainant’s CAPE HARBOUR mark and Complainant’s copyright protected drawings and signage. A copy of this letter dated September 6, 2000, is attached as Exhibit [hereto]."

"25. Respondent subsequently made alterations to the <capeharbour.com> Internet site, including removal of Complainant’s copyright protected materials and addition of another disclaimer at the top of the web page. However, Respondent and Ms. Lewis again refused to assign the <capeharbour.com> domain name to Complainant. A person visiting the <capeharbour.com> web site now sees a discussion of the status of construction of Cape Harbour homes, an aerial photo of the CAPE HARBOUR pre-construction community, and photos of completed and under construction residences in the development. At the bottom of each page of the web site there is a hyperlink that allows a user to send an e-mail to Respondent, and the ‘Homes Under Construction’ page also contains an ‘Email’ hyperlink that sends e-mail to Respondent and Ms. Lewis. Copies of pages from the most recent version of the <capeharbour.com> web site are attached as Exhibit [hereto]."

"26. On September 29, 2000, Complainant discovered that Respondent has registered the <capeharbor.com> domain name, as well. Respondent’s and Ms. Lewis’ web site appearing at <capeharbor.com> is identical to their site appearing at <capeharbour.com>. Copies of pages from the most recent version of the <capeharbor.com> web site are attached as Exhibit [hereto]."

"27. As a result of Respondent’s and Ms. Lewis’ actions, Complainant has been unable to use its CAPE HARBOUR mark in the corresponding <capeharbour.com> domain name or the alternatively spelled <capeharbor.com> domain name. Due to Complainant’s hesitancy to advertise and promote its CAPE HARBOUR development under another name, Complainant has to date not established a fully operational Internet site for its CAPE HARBOUR development."

"28. Respondent and Ms. Lewis are not using the <capeharbour.com> and <capeharbor.com> domain names for legitimate purposes. Instead, they have used and are using the domain names to divert potential customers away from Complainant and to Ms. Lewis. In addition, Respondent’s and Ms. Lewis’ use of the domain names is likely to cause confusion for the public. For example, persons entering the <capeharbour.com> and <capeharbor.com> domain names and being directed to Respondent’s and Ms. Lewis’ web sites are likely to think that Complainant has authorized those web sites. This confusion is exacerbated by the fact that when the terms ‘Cape Harbour’ are used for a search on Yahoo!, Respondent’s and Ms. Lewis’ <capeharbour.com> web site is the first search result to appear."

"29. The <capeharbour.com> domain name is identical, and therefore confusingly similar to, Complainant’s CAPE HARBOUR mark, and the domain name <capeharbor.com> is confusingly similar to Complainant’s CAPE HARBOUR mark, in the following manners:

a. The <capeharbour.com> and <capeharbor.com> domain names are identical, and therefore confusingly similar, in pronunciation and sound to Complainant’s CAPE HARBOUR mark.

b. The <capeharbour.com> domain name is also identical in appearance to Complainant’s CAPE HARBOUR mark and incorporates fully Complainant’s CAPE HARBOUR mark. The only difference between the <capeharbour.com> domain name and Complainant’s CAPE HARBOUR mark is the addition of the top-level domain ‘.com’ to Complainant’s mark.

c. The <capeharbor.com> domain name is also almost identical in appearance and is identical in pronunciation and sound to Complainant’s CAPE HARBOUR mark, and uses the alternative spelling ‘harbor’ instead of ‘harbour.’ In fact, ‘harbor’ is a common misspelling of ‘harbour,’ so many persons might mistakenly type <capeharbor.com> when searching for an Internet site about Complainant’s CAPE HARBOUR development. The differences between the <capeharbor.com> domain name and Complainant’s CAPE HARBOUR mark are minimal – the domain name leaves out the letter ‘u’ in the word ‘Harbor’ and adds the top-level domain ‘.com’ to Complainant’s mark.

d. The <capeharbour.com> and <capeharbor.com> domain names have suggestions, connotations, and commercial impressions that are identical, and therefore confusingly similar, to those of Complainant’s CAPE HARBOUR mark.

"30. Respondent has no rights or legitimate interests in respect of the <capeharbour.com> and <capeharbor.com> domain names, as demonstrated by the following facts:"

a. Complainant’s CAPE HARBOUR mark, which Respondent has wrongfully incorporated into the domain names, is uniquely associated with Complainant and its exclusive waterfront luxury home development in Cape Coral, Florida. The CAPE HARBOUR mark is not legitimately used by any other individual or entity (other than entities properly affiliated with Complainant) in the Cape Coral, Florida, area. For these reasons, the CAPE HARBOUR mark uniquely suggests Complainant and its real estate development, and the mark has connotations and commercial impressions of Complainant’s quality and exclusivity related to its CAPE HARBOUR real estate development.

b. Neither Respondent nor Ms. Lewis is commonly known or identified by the name ‘Cape Harbour’ or ‘Cape Harbor,’ nor are they affiliated or connected in any way with Complainant or the CAPE HARBOUR development.

c. Neither Respondent nor Ms. Lewis operates a business or other organization commonly known as ‘Cape Harbour’ or ‘Cape Harbor.’

d. Respondent and Ms. Lewis have not acquired trademark or service mark rights for the CAPE HARBOUR mark or any ‘Cape Harbor’ mark in Florida or the United States.

e. Respondent and Ms. Lewis have used the Internet sites located at <capeharbour.com> and <capeharbor.com> to attract prospective home buyers to Ms. Lewis’ business, thereby diverting customers from Complainant and the legitimate CAPE HARBOUR sales force on site at the CAPE HARBOUR development. See Exhibits [hereto].

f. Respondent and Ms. Lewis are not making a legitimate noncommercial or fair use of the domain names. As discussed above, Respondent and Ms. Lewis are using the <capeharbour.com> and <capeharbor.com> domain names to link users directly to sites containing Internet pages not affiliated with Complainant nor legitimately affiliated with Complainant’s CAPE HARBOUR mark. Moreover, Respondent and Ms. Lewis previously made wrongful use of Complainant’s copyright protected materials on these web sites.

g Respondent and Ms. Lewis are not licensees of Complainant, nor are Respondent and Ms. Lewis otherwise authorized by Complainant to use Complainant’s CAPE HARBOUR mark or to apply for or use any domain name incorporating Complainant’s CAPE HARBOUR mark.

"31. The <capeharbour.com> and <capeharbor.com> domain names have been registered and are being used in bad faith, as shown by the following:

a. Respondent and Ms. Lewis do not conduct any legitimate commercial or noncommercial business under the CAPE HARBOUR mark or any ‘Cape Harbor’ mark.

b. Respondent has registered the <capeharbour.com> and <capeharbor.com> domain names in order to prevent Complainant, as the owner of the CAPE HARBOUR mark, from reflecting its mark in corresponding domain names.

c. Respondent and Ms. Lewis have registered and used the <capeharbour.com> and <capeharbor.com> domain names with full knowledge of the rights of Complainant, and Complainant’s predecessors in interest, in and to the CAPE HARBOUR mark. Respondent and Ms. Lewis have continued to use the <capeharbour.com> and <capeharbor.com> domain names and have refused to assign the domain names to Complainant, as the lawful owner of the CAPE HARBOUR mark, even after being given actual notice of Complainant’s rights in and to the CAPE HARBOUR mark. See letter dated September 6, 2000, from Complainant’s counsel to Ms. Lewis, attached as Exhibit [hereto].

d. By registering the <capeharbour.com> and <capeharbor.com> domain names, Respondent is diverting consumers away from Complainant and will make it difficult for Complainant’s customers and the general public to locate any future web site established by Complainant, thereby disrupting Complainant’s business. [note omitted]

e. By using the <capeharbour.com> and <capeharbor.com> domain names, Respondent and Ms. Lewis have intentionally attempted to attract, for commercial gain, Internet users to their web sites, by creating a likelihood of confusion with Complainant’s CAPE HARBOUR mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s and Ms. Lewis’ web sites appearing at <capeharbour.com> and <capeharbor.com>, and of services advertised on those web sites. See Fideicomiso Puerto Aventuras v. Web Strategies, Inc., National Arbitration Forum, Case No. FA 0092526 (transferring the domain names <puertoaventuras.com> and <puertoaventuras.net> to Complainant, who was the developer of a planned resort community known as ‘Puerto Aventuras’) (attached as Exhibit [hereto]). In short, Respondent and Ms. Lewis have attempted to improve Ms. Lewis’ real estate business by misappropriating complainant’s goodwill and creating a likelihood of confusion with Complainant’s CAPE HARBOUR mark, at the expense of Complainant. See Exhibits [hereto]."

"32. Respondent’s and Ms. Lewis’ use of the <capeharbour.com> and <capeharbor.com> domain names also amounts to infringement of Complainant’s CAPE HARBOUR mark under the Lanham Act, by creating a likelihood of confusion, or mistake, as to the affiliation, connection, or association of Respondent and Ms. Lewis with Complainant and Complainant’s CAPE HARBOUR mark, or as to the origin, sponsorship, or approval of Ms. Lewis’ services by Complainant. See 15 U.S.C. § 1125(a). See also The New York State Society of Certified Public Accountants v. Eric Louis Associates, 79 F. Supp.2d 331, 342 (S.D.N.Y. 1999) (finding likelihood of confusion based on ‘initial interest confusion’ and finding defendant’s use of disclaimer insufficient to eliminate such confusion) (attached as Exhibit [hereto])."

"33. Respondent’s and Ms. Lewis’ use of the <capeharbour.com> and <capeharbor.com> domain names also is diluting and weakening the unique and distinctive significance of Complainant’s CAPE HARBOUR mark."

"34. Respondent’s and Ms. Lewis’ use of the <capeharbour.com> and <capeharbor.com> domain names has caused, and if not altered by the Panel, will continue to cause serious and irreparable injury and damage to Complainant and to the goodwill associated with Complainant and its CAPE HARBOUR mark."

"35. In addition to amounting to bad faith registration and use of domain names under the ICANN Policy, Respondent’s and Ms. Lewis’ conduct also violates United States federal law relating to cyberpiracy (15 U.S.C. § § 1125(d)), trademark infringement (15 U.S.C.§ 1125(a)), trademark dilution (15 U.S.C. § 1125(c)), and unfair competition (15 U.S.C.§ 1125(a)). The relevant laws violated by Respondent and Ms. Lewis are attached as Exhibit [hereto]." (Complaint)

Complainant requests that the Panel ask the registrar to transfer the domain names "capeharbour.com" and "capeharbor.com" from Respondent to it (id., para. 36).

B. Respondent

Respondent states in its own words:

"5. In response to the statements and allegations contained in the Complaint, the common law trademark rights the Complainant claims, are disputed as discussed below and supported by the attached Exhibits."

In the Southwest part of the City of Cape Coral, Florida exists a community called ‘Cape Harbour’, this is a geographical location with sub-sections containing different marketing names: Seawinds, Estates, Charlie’s Pond and Marina Point. Attached Exhibit [hereto].

"6. The developer Avatar Properties began construction in the development in 1997, named ‘Cape Harbour an AVATAR community’. Avatar’s Internet Address domain name: <avatarhomes.com> is clearly stated on their brochure. There was no trademark or service mark of solely ‘Cape Harbour’. Attached Exhibit [hereto]."

"7. In March 1999, Respondent registered the domain name <capeharbour.com> and <capeharbor.com> to be used to market the re-sale of properties in the Cape Harbour community. Attached Exhibit [hereto]."

"8. In June 1999, Avatar Properties sold most of their assets, including the Cape Harbour community to Minnesota Power, Inc. (since renamed Allete) although new management and new builders came into place, no domain name, trademark or service mark of ‘Cape Harbour’ was filed, claimed or registered. Attached Exhibit [hereto]."

"9. On December 16, 1999, Complainant registered the domain name <cape harbourmarina.com>. Registration of the domain name and brochure where the Complainant’s website address is advertised are attached as Exhibit [hereto]."

"10. On January 14, 2000 The Realmark Companies, the Complainant, acquired the development. Attached Exhibit [hereto]."

"11. The Complainant named the development ‘CAPE HARBOUR MARINA & BOAT CLUB’, prior to the actual development acquisition closing date of January 14, 2000. Attached Exhibit [hereto]. The Complainant did not file a Florida trademark application ‘Cape Harbour’ with the State of Florida at that time. The development has had two different names ‘Cape Harbour an Avatar Community’ and ‘Cape Harbour Marina and Boat Club’. There is no continued specific use of a trademark or service mark the Complainant claims to own."

"12. On Page 2, paragraph 1, of the Complaint, Complainant claims to ‘…have used the Cape Harbour mark for more than three years to identify, advertise and promote…..’ On Page 7, paragraph 12, of the Complaint, Complainant again claims to ‘… have continuously and extensively use the Cape Harbour mark to identify, advertise, …’ In letter dated February 1, 2000, paragraph 5, the Complainant admits ‘…not having sales material ready…’ Attached Exhibit [hereto]. The Complainant filed for trademark on October 10, 2000, only 10 days before submitting the Complaint to WIPO, and 19 months after Respondent had registered the domain names. Attached Exhibit [hereto]."

"13. Respondent registered the domain names <capeharbour.com> and <capeharbor.com> March 1999, 10 months prior to Complainant acquiring the development in January 2000, and 19 months prior to Complainant file registration of its service mark, October 2000. See Pueblo International, Inc. v. Pueblo On-Line, National Arbitration Forum, Case No. FA0007000095250, July 18, 2000. http://www.arbforum.com/domains/decisions/95250.htm Attached Exhibit [hereto]."

"14. The Complainant’s arguments concerning the manner in which the domain names are allegedly identical or confusingly similar to the ‘common law trademark’ they claim to have, are unfounded. The lack of due diligence from the Complainant’s part has brought us to the present situation. The Respondent has conducted a search of the Internet looking for both spellings: ‘cape harbour’ and ‘cape harbor’ and found that there are in fact domain names registered as:

<capeharbour.net> Registrant located in Redmond, Washington

<capeharbour.org> Registrant located in Coral Gables, Florida - Attached Exhibit [hereto]."

"15. In addition the above cited existing domain names, the use of Cape Harbour and Cape Harbor as geographical identifying names and location names is well documented, showing that these names are neither unique to, nor an identifying mark of the Cape Coral community of Cape Harbour. Attached Exhibit [hereto]."

"16. The words Cape Harbour and Cape Harbor are commonly used as geographical locations and the names are generic not uniquely associated with Complainant’s claim as stated in Page 13, paragraph 30. The Complainant’s claim of ownership of the ‘Cape Harbour’ service mark would affect many worldwide. There is no intentional or unintentional use of the domain names <capeharbour.com> and <capeharbor.com> to be identical or confusingly similar to a trademark or service mark in which the Complainant allegedly claims rights, it simply states a geographical location in the City of Cape Coral. As research has demonstrated, there are many other websites around the world containing the ‘Cape Harbour’ and ‘Cape Harbour’ names."

"17. Rights and legitimate interest of the Respondent and his wife, Mrs. Maria L. Lewis, with respect to <capeharbour.com> and <capeharbor.com>:

The Respondent Lawrence S. Lewis and his wife, Maria L. Lewis, Realtor®, own a home and live in the Cape Harbour community; therefore they have a legitimate interest in the development. It is in their best interest for the development to prosper and grow."

"18. The Respondent and Mrs. Lewis’ interest in the development began long before the development was purchased by the Complainant, Realmark Companies, in January, 2000. On March 20^th,1999 the Respondent and his wife deposited a $2,000 payment with Avatar Properties, Inc. to reserve an option to purchase a condominium identified as Building ‘O’ left side, in the future development of Marine Pointe (or Marina Point) Cape Harbour Condominium, located within the Cape Harbour community. Attached Exhibit [hereto]."

"19. Even though the development was new and under construction Mrs. Lewis, a professional Realtor®, believed it would be important to be established as a knowledgeable Realtor®, capable of handling re-sales as they came on the market place. To that end <capeharbor.com> was registered on March 28, 1999. The spelling error was identified and on March 31^st, 1999 the correct spelling, <capeharbour.com> was then registered. Attached Exhibit [hereto]."

"20. The Respondent’s wife, Mrs. Maria Lewis, as a Realtor® has the rights and legitimate interest in the domain names to promote the sale and re-sale of real estate in the community where she resides and to help promote the growth and prosperity of the development. It is Mrs. Lewis right to advertise local real estate for sale, whether the advertising medium is the Internet for worldwide interest or printed literature in the local newspapers. All Realtors® have such privileges. Real Estate professionals are remunerated by commission only. In order to earn a living, the advertising of real estate for sale is an important tool of the professional Realtor®. Copies of such advertising specifically to sell homes and lots in the Cape Harbour community and the Cape Harbour area by local Realtors® are included as Exhibit [hereto]."

"21. It is in the best interest, and common practice ,for developers to invite and encourage local Realtors® to co-operate and participate in the sale of their developments by bringing customers to their sales office and introducing them to their model homes. For this broker participation, Realtors® and their brokerage firms are paid a commission. The Cape Harbour development is not different."

Although page 7, paragraph 13 of the Complaint states ‘…Complainant’s sales staff located at the Cape Harbour development is responsible for promoting, showing and selling ….’ Complainant’s literature clearly encourages and advertises: ‘Broker Participation Invited’. The fact is, Mrs. Lewis received a personal letter from the Complainant outlining the commission percentage to be paid on the sale of home packages and vacant land. Attached Exhibit [hereto].

"22. With reference to Policy, Paragraphs 4(a)(ii) the Complainant arguments that the domain names were registered and are being used in bad faith can not be further from the actual facts. The domain names <capeharbour.com> and <capeharbor.com> were not registered or acquired primarily for the purpose of selling, renting or otherwise transferring the domain name registration to Complainant, as alleged owner of the trademark or service mark, or to a competitor of the Complainant for any valuable consideration. In March 1999 a search of the State and U.S. Government trademark database, as well as domain names registrations, did not reveal any trademarks existent or pending. Since 1997 when the development was started, none of the owners filed a trademark application. Complainant filed a trademark application on October 10, 2000, nine months after development acquisition. Attached Exhibit [hereto]."

"23. As admitted on Page 10, Paragraph 22, of the Complaint, the Complainant offered the Respondent US$500 to purchase the <capeharbour.com> domain name. This offer was made during the first contact initiated by the President of Realmark Companies, Mr. William J. Stout, Jr. on Saturday, February 12, 2000. This meeting was less than amicable, and legal action was threatened."

"24. On February 15, 2000, the Complainant contacted Mrs. Lewis by phone, once again, demanding the domain name be handed over; offered to purchase and/or to employ the Respondent’s services to create a website, whatever it takes to get the domain name <capeharbour.com>. The Respondent declined both offers via letter faxed on February 17, 2000. Attached Exhibit [hereto]."

"25. The Respondent’s wife, Mrs. Maria L. Lewis, is a professional Realtor® engaged in the sale of Real Estate in the State of Florida. Mrs. Lewis is not a competitor, nor has she ever tried to disrupt the Complainant’s business. On the contrary, as a co-operating brokerage, Mrs. Lewis brings prospective buyers to the development any time there is a qualified buyer. Furthermore, Mrs. Lewis enjoys a good rapport with the sales staff of the development. Mrs. Lewis was the co-operating sales Realtor® on the sale of one home and building site while Avatar Properties was the owner-developer. Attached Exhibit [hereto]."

"26. As a Real Estate salesperson, Mrs. Lewis has used the <capeharbour.com> site specifically to promote sales in the Cape Harbour community, contrary to the unfounded allegations made in the Complaint that the site was used to divert customers to Mrs. Lewis’ real estate business. Since 1996, Mrs. Lewis has had, a separate, well established, registered website where all her real estate business is advertised and handled on a daily basis http://www.florida-showcase.com."

"27. The domain name was not registered in order to prevent Complainant from doing business. The Complainant has registered the website <capeharbourmarina.com> since December 16, 1999. Attached Exhibit [hereto].

"28. To promote sales in the Cape Harbour community, the domain <capeharbour.com> was activated in March 1999, and in lieu of available re-sale photographs, elevations and floor plans of the homes offered by Avatar Properties, Inc. were displayed. The site was titled ‘The Unofficial Home of Cape Harbour.’ Because the name was often misspelled, the domain <capeharbor.com> was utilized to redirect traffic to <capeharbour.com>.

The existence of the website was no secret, the Complainant should have exercised due diligence prior to purchasing the development. Media coverage in the local Ft. Myers, Florida, newspaper The News-Press, Friday January 14, 2000, made mention of the website and the Respondent. Attached Exhibit [hereto]."

"29. The Respondent was making a legitimate, commercial, fair use of the domain name to attract buyers to the Cape Harbour community and had advertised re-sales of homes and vacant land available in the market place until September 7, 2000. Attached Exhibit [hereto]."

"30. Mrs. Lewis and her employer, Professional Realty Consultants of Lee County, received correspondence dated September 6, 2000, from legal counsel, representing the Complainant, advising them of the intent to conduct legal action and further demands. Attached Exhibit [hereto]. With this ‘cease and forever desist’ letter, and in order to protect themselves and Mrs. Lewis’ employer, Professional Realty Consultants, the Respondent and Mrs. Lewis were forced to shut down the fully operational <capeharbour.com> site, remove all mention of the real estate business and seek counsel. Copy of letter from Respondent’s counsel is attached as Exhibit [hereto]."

"31. To prevent losing the prime position on the search engines, the website was reactivated on September 15, 2000, with generic information and photos of three homes under construction, pictures that out of State owners specifically asked Mrs. Lewis to take and post on the site in order to keep track of their new homes as they were being built. One of the owners is Mrs. Lewis’ customer, another homeowner is a friend and the third homeowner is the Respondent’s next door neighbor."

"32. The letter of September 6, 2000 from the Complainant’s counsel claims the website makes use of copyright protected material and trademarks. This claim is unfounded. The material used by, and received from the developer’s sales office, which is freely distributed, has no marks of ‘copyright’. Attached Exhibit [hereto]."

"33. The Respondent has found the same drawings advertised on a website by Bluewater Communities http://www.bluewatercommunities.com Attached Exhibit [hereto]."

"34. As stated above and supported by documentation, the Respondent registered the domain names in good faith, for the use of promoting real estate sales in the Cape Harbour community, a geographic location. The Respondent has never tried to sell the domain name or disrupt the Complainant’s business. To the contrary, since February 12, 2000, the Complainant has successfully disrupted the Respondent and his wife’s personal and professional lives with threats of legal action and ‘power’ to have Mrs. Lewis’ Realtor® business license revoked, taking away her right to earn a living."

"35. If Complainant obtains the domain names, he will directly benefit from the hard work put forth, and the time and money spent by the Respondent and his wife, Mrs. Lewis, during a period of 20 months in the creation of the websites and attaining the NUMBER ONE position the domain names enjoy in search engines such as Alta Vista andYahoo!" (Response) "

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 1. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this proceeding, Respondent has furnished a response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant has not registered the trademark or service mark "Cape Harbour" on the Principal Register at the USPTO 2. Complainant’s asserted mark does not enjoy a presumption of secondary meaning under federal law 3. Complainant’s filing of a trademark registration application with the Florida Secretary of State similarly establishes no presumption of secondary meaning 4.

The name of a real estate development is capable of trademark or service mark protection if it is inherently distinctive or has acquired secondary meaning in a relevant market 5. Common law rights may arise under the federal Lanham Act or state law 6. The geographical extent of consumer recognition of the mark may be limited, and the scope of protection afforded to the mark in the infringement context may accordingly be limited 7.

The Panel is satisfied by the evidence in this proceeding that Complainant has established common law trademark rights in "Cape Harbour" for use in connection with the marketing and sale of real property and residential property in a geographical area at least encompassing the area in which Respondent principally conducts its real estate brokerage activities (i.e., Coral Gables, Florida and the surrounding area). Complainant’s predecessors-in-interest began active work on the Cape Harbour development in 1996 or 1997, including construction, marketing and sale of residential properties. Respondent has recognized that Complainant’s mark acquired secondary meaning by extensive use of the mark on its own promotional materials to specifically refer to Complainant’s development. Although there is no specific date at which the Panel determines Complainant acquired rights in the mark, it did so prior to the March 1999 dates on which Respondent registered the disputed domain names.

The fact that other geographical locations in the United States and other countries may share the name "Cape Harbor" or "Cape Harbour" does not preclude that name from becoming associated with a particular provider of products or services in a limited geographic area.

Respondent has registered the domain names "capeharbour.com" and "capeharbor.com". The domain name "capeharbour.com" is identical to Complainant’s "Cape Harbour" mark, adding only the generic top level domain name ".com" and eliminating the space between terms. The domain name "capeharbor.com" was acknowledgedly registered by Respondent through a spelling error, and "harbor" is a common spelling variation of "harbour". The Panel concludes that the domain names "capeharbour.com" and "capeharbor.com" are identical or confusingly similar to Complainant’s "Cape Harbour" mark.

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a trademark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain registration is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, para. 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." (Policy, para. 4(c))

Respondent asserts rights or legitimate interests in the disputed domain names on two grounds. The first is that Respondent made use of these names prior to notice of a dispute in connection with a bona fide offering of goods or services. The second is that Respondent is making fair use of Complainant’s mark. The bases on which respondents in abusive domain name registration proceedings may establish rights or legitimate interests are not coextensive with defenses to trademark infringement. For example, the fact that a party made preparations to use a trademark for a bona fide offering of goods or services prior to notice of a dispute would not ordinarily serve as a defense to trademark infringement by use, even though this may serve as a defense to a claim of abusive domain name registration.

The evidentiary time line supports the conclusion that Respondent used the disputed domain name "capeharbour.com" to identify an active website on which it offered services before notice to it of this dispute. Respondent registered the disputed domain names in March 1999. Respondent asserts that it activated the website in March 1999 (Response, para. 28), and this is not disputed by Complainant. Respondent has asserted, and Complainant has not contradicted, that Respondent was not notified of any dispute until February 2000 (when Complainant offered to purchase "capeharbour.com"). 8

Respondent asserts that it used the "capeharbor.com" domain name to redirect Internet users to its "www.capeharbour.com" website (Response, para. 28). It makes this assertion immediately following its assertion that it activated the "www.capeharbour.com" website in March 1999. The Panel infers that Respondent initiated use of the "capeharbor.com" domain name at or about the same time that it initiated use of the "capeharbour.com" domain name 9. For purposes of resolving this dispute, the Panel will treat the two disputed domain names on the same basis.

Respondent claims to have undertaken a federal trademark search prior to registration of the disputed domain names 10. Although Respondent’s hard evidence of a search is dated in February 2000, and this search was presumably undertaken in response to Complainant’s offer to purchase the "capeharbour.com" name, there is no reason to believe that Respondent did not in fact exercise diligence in its initial decision to register the disputed domain names.

When it registered the disputed domain names, Respondent was certainly aware that Complainant’s predecessors-in-interest were marketing property under the "Cape Harbour" name. This raises the question whether Respondent might be deemed to have constructive or implied notice of a dispute based on its knowledge of Complainant’s activities.

The express language of the Policy refers to "notice" of a dispute. The Panel is reluctant to find constructive or implicit notice of a dispute, particularly in the absence of trademark registration that might be deemed as a matter of law to provide such notice. In this case, Complainant’s predecessors-in-interest should reasonably have been aware of Respondent’s website using the "capeharbour.com" domain name. They did not object to it for a significant period of time. If there was a "dispute" in Complainant’s understanding arising from Respondent’s use of its mark, Complainant did not bring it to Respondent’s attention. Complainant’s failure to challenge Respondent’s use of the disputed domain names for about one year reinforces the Panel’s conclusion that Respondent did not have actual or constructive notice of a dispute before it used the disputed domain names "capeharbour.com" and "capeharbor.com".

Respondent’s offering of real estate brokerage services appears to have been bona fide. In an earlier proceeding, this sole panelist found that an offer for sale of goods by a respondent that engaged in deliberate deception of the public by confusing use of the trademark and trade dress of a complainant were not bona fide 11. In the present case, Respondent was not holding itself out as Complainant, but was offering property in Complainant’s development for sale. Respondent was invited to act and did act as a commission broker under an arrangement proposed by Complainant. Although a disclaimer of association generally may not be an adequate defense to trademark infringement, Respondent’s use of a disclaimer in this case did serve to alert users of its services that it was not Complainant or its affiliate. The Panel concludes that Respondent’s offering of services before notice to it of a dispute was bona fide.

Complainant has failed to establish that Respondent had no rights or legitimate interests in the disputed domain names. Complainant may not therefore succeed in this forum on its claim of abusive domain name registration. Having made this finding, the Panel will not make further determinations regarding Respondent’s assertion of fair use, or Complainant’s assertion of bad faith.

By this decision, the Panel is determining only that Respondent has not engaged in abusive domain name registration within the terms of the Policy because it has met one of the express criterion for establishing rights or legitimate interests in the disputed domain names. The Policy and U.S. trademark law are not co-extensive. The fact that Respondent may maintain its registration of the disputed domain names does not suggest or imply that it may use those names in a manner that infringes Complainant’s rights in its mark, not does it suggest or imply that Respondent has not already infringed Complainant’s mark. It is only to say that if Complainant considers itself to have a valid cause of action against Respondent, it must pursue it in another forum. The Policy was intended to serve a limited purpose, and Complainant’s purpose here falls outside the restricted boundaries of the Policy.

Complainant, Realmark Cape Harbour L.L.C., has failed to establish that Respondent, Lawrence S. Lewis, has no rights or legitimate interests in the disputed domain names, "capeharbour.com" and "capeharbor.com" within the meaning of Paragraph 4(a)(ii) of the Policy. The Panel therefore denies Complainant’s request that the Panel direct the registrar to transfer the disputed domain names to it.

Frederick M. Abbott
Sole Panelist

Dated: December 11, 2000

Footnotes:

1. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

2. See Factual Background, supra.

3. See 15 USCS § 1057(b) (establishing presumption of exclusive right to use based on registration).

4. See Fla. Stat. § 495.061 (2000).

5. See Cascades of Levitt Homes Inc. v. Cascades of Sabatello Development Corp., 43 U.S.P.Q.2d 1920 (S.D. Fla. 1997).

6. See, e.g., Century 21 Real Estate v. Billy Sandlin, 846 F.2d 1175 (9^th Cir. 1988).

7. See J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 26:29 (4^th ed. 1996 and updated).

8. Neither party provides concrete evidence of the date on which Respondent first used the disputed domain name "capeharbour.com" to identify an active website.

9. Just as neither party has provided concrete evidence of the date on which Respondent first activated its "www.capeharbour.com" website, neither party has provided concrete evidence of the date on which Respondent first used its "capeharbor.com" domain name to redirect Internet users.

10. Response, para. 22.

11. Microsoft Corporation v. Microsof.com aka Tarek Ahmed, Case No. D2000-0548, decided July 21, 2000.