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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Leisure Village Association, Inc. v. McKay Barlow

Case No. D2006-1119

 

1. The Parties

The Complainant is Leisure Village Association, Inc., of California, United States of America, represented by Ferguson, Case, Orr, Paterson & Cunningham LLP, United States of America.

The Respondent is McKay Barlow, of California, United States of America, represented by Lyon & Harr, LLP, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <leisurevillage.com> is registered with Moniker Online Services, LLC.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2006. On September 4, 2006, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On September 5, 2006, Moniker Online Services, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 22, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced September 25, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response October 15, 2006. The Response was filed with the Center on October 12, 2006.

The Center appointed Barbara A. Solomon, Robert A. Badgley and Frederick M. Abbott as panelists in this matter on November 3, 2006. The Panel finds that it was properly constituted. Each member of the Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The submissions by both Respondent and Complainant neglected to address certain crucial facts. For example, neither Party has stated with any precision when the domain name at issue was registered or obtained by Respondent, when Complainant found out about the registration and use of the domain name by Respondent, and what actions, if any, Complainant took when it learned about the use and registration of <leisurevillage.com>. Respondent has indicated that it acquired registration of the disputed domain name some time in the Fall of 2005 and that the “launch” of its website identified by the disputed domain name was “announced” on January 1, 2006. Complainant does not indicate whether it had ever made plans to create its own website using the name <leisurevillage.com> or the name of the trade name of Complainant <leisurevillageassociation.com> and there is no indication as to whether there is an “official” website associated with Leisure Village.

A Better-Whois.com search report furnished by Complainant indicates that Respondent is registrant of the disputed domain name, that the record of the name was initially created on September 23, 1999, and that the record was last updated on October 28, 2005. The date of the record update is basically consistent with Respondent’s assertion that it acquired the disputed domain name from a third party in the Fall of 2005.

Respondent states that prior to acquiring the disputed domain name and establishing the website associated with it, Respondent performed a search for evidence of an existing trademark registration, including by performing a search of the USPTO registration database. Respondent indicates that it found no evidence of a potentially conflicting registration. Complainant has not disputed Respondent’s assertion.

Based on the limited information provided by the Parties, it appears uncontested that Complainant provides services to a senior community known as Leisure Village, which services do not include realty services. Respondent, a realtor engaged in the sale and re-sale of property in the Leisure Village community, clearly knew about the Leisure Village community prior to obtaining the <leisurevillage.com> domain name. At the website <leisurevillage.com>, Respondent has included a disclaimer, although it appears “below the fold”. The website, which provides information about Leisure Village, states that it is “sponsored” by Barlow Williams Realty and contains both information about Barlow Williams (under the Leisure Village heading) and a link to <barlowwilliams.com> a realty website that has listings other than for Leisure Village.

Complainant filed the UDRP Complaint against Respondent seeking transfer of the <leisurevillage.com> domain name.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that it is the owner of common law rights in the service mark LEISURE VILLAGE by virtue of the fact that it provides management services for and provides maintenance of residential structures within a senior citizen development called Leisure Village located in Camarillo, California. Complainant claims that it has been using the LEISURE VILLAGE mark in connection with providing those services since at least 1973 when Complainant was incorporated under the name Leisure Village Association, Inc. Complainant does not assert ownership of any U.S. federal or state trademark applications or registrations.

Complainant asserts that Respondent, a real estate agent doing business as McKay Barlow (and apparently as Barlow Williams Realty) registered the domain name <leisurevillage.com> in bad faith. Complainant does not allege when the domain name was registered, when it became aware of the domain name, how it became aware of the domain name, or whether, prior to filing this Complaint, it took any action to object to the use of the domain name. Complainant merely notes that the Respondent is using the domain name in connection with a website that provides information about the Leisure Village development.

As to the elements of the UDRP complaint, Complainant alleges that the domain name <leisurevillage.com> is identical to Complainant’s LEISURE VILLAGE mark. Complainant next asserts that the Respondent has no rights or legitimate interests in the domain name since Respondent is not commonly known by the name Leisure Village, Respondent has not acquired trademark or service mark rights to the mark LEISURE VILLAGE, and Respondent has not used the LEISURE VILLAGE mark in connection with a bona fide offering of goods or services. Complainant asserts without benefit of fact or evidence that the Respondent took the <leisurevillage.com> domain name “with the intent of misleading consumers for commercial gain; Respondent hopes to create the illusion of an association with Complainant’s development and thereby obtain business”. No legal analysis is provided in support of Complainant’s assertion.

Complainant also asserts that the <leisurevillage.com> domain name was registered and is being used in bad faith, and that Respondent “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s web site”. Again, the allegation is made without benefit of fact, supporting evidence or legal analysis. Complainant requests a transfer of the domain name.

B. Respondent

Respondent first contends that Complainant has no protectable rights in the LEISURE VILLAGE mark, alleging first that Complainant does not own any valid federal or state trademark registrations in the name Leisure Village; second, that Complainant cannot claim trademark rights in the LEISURE VILLAGE mark because Complainant has made improper use of the federal registration symbol; third, that the LEISURE VILLAGE mark is nothing more than a trade or business name which is not covered by the Policy; fourth, that the term Leisure Village is merely a geographical indicator and, therefore, is not eligible for protection under the Policy; and fifth, that Complainant has failed to prove that it has established a reputation or any good will in the name Leisure Village.

Respondent sells properties in the Leisure Village community. Respondent does not allege or suggest that it has ever used Leisure Village as the name of its real estate services. Rather, Respondent was first known as Ed Williams Realty and is now called McKay Barlow or, at least according to the <leisurevillage.com> website, Barlow Williams Realty. According to Respondent, since 1979, Respondent has been an active real estate broker doing business in the Leisure Village community. Respondent does not exclusively broker properties in Leisure Village, nor does it have any apparent exclusivity agreements with Complainant with respect to the sale of property within the Leisure Village community.

The domain name at issue previously was owned by The Cities Unlimited, Inc. The circumstances of the underlying registration of the domain name are not known. Respondent claims that there was no active website at the address and that some time between May 2005 and September 2005 Respondent purchased the domain name from the prior owner. A website at the domain name <leisurevillage.com> was launched sometime in 2006. Respondent alleges that it has legitimate rights in the domain name because it is seeking to promote the sale and re-sale of properties in the Leisure Village community. Respondent further claims that the website at <leisurevillage.com> is exclusively a promotional tool for Respondent to assist in obtaining business for real estate services relating to the Leisure Village community. The website, however, contains a link to the <barlowwilliams.com> website which contains all of Respondent’s real estate listings.

With respect to the registration and use of the domain name, Respondent takes the position that Complainant has failed to submit facts proving bad faith. Respondent also states that it has never offered to sell, rent or otherwise transfer the domain name to Complainant for any amount, that it has never used on its website any of the logos or fonts used by Complainant, that it provides a disclaimer of affiliation on its site, that it is not a competitor of Complainant and that there has been no evidence of confusion brought to its attention as a result of its use of the domain name <leisurevillage.com>. Respondent asks not only that the request for transfer of the domain name be denied, but also that the Panel make a finding of reverse domain name hijacking.

 

6. Discussion and Findings

Under paragraph 4(a) of the Policy Complainant must prove each of the following to obtain the transfer of the domain name:

(a) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(b) That the Respondent has no rights or legitimate interest in respect of the domain name; and

(c) That the Respondent has registered and is using the domain name in bad faith.

The Panel notes that in determining whether the elements of the Policy have been met, the Panel must rely on the facts and evidence submitted by the Parties. The Parties cannot expect the Panel to independently research the claims that they have presented, including when domain names were registered, how domain names are used and the like. In this case, the submission by the Complainant provided almost no facts or evidence to support the conclusory allegations made. In a similar vein, Respondent’s submission fails to provide crucial information about when the domain name was registered and other pertinent factual details. The Panel can only base its decision on what was before it.

A. Identical or Confusingly Similar

The evidence submitted by Complainant concerning its common law rights in LEISURE VILLAGE is sparse. Complainant has provided limited evidence of the extent of its use of the marks, its expenditures in connection with its use of the mark, or, most fundamentally, how it came to be the owner of rights in the LEISURE VILLAGE service mark. Complainant does not indicate if it is the owner of the property or if it received rights to use the LEISURE VILLAGE mark from the owner(s). If the Panel’s decision turned exclusively on whether Complainant had protectable rights, the Panel may not have found that Complainant has succeeded in establishing protectable rights in the LEISURE VILLAGE mark sufficient for it to proceed with a UDRP. However, because the Panel decides the case on other grounds, the Panel is prepared to assume that the Complainant has established rights.

As to Respondent’s argument that Complainant does not have protectable rights in the name and mark LEISURE VILLAGE sufficient for it to bring the UDRP complaint, we reject Respondent’s arguments for the following reasons.

First, while Complainant does not own any federal or state registrations for the mark LEISURE VILLAGE, registration of a mark is not a pre-condition to establishing rights. Under U.S. law (which is applicable to this case, since both parties are U.S. entities), trademark rights are based on use, not registration or trademark applications. UDRP panels have repeatedly made clear that protectable rights under the UDRP extend to common law rights based on use. See Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435.

Second, the Panel rejects Respondent’s suggestion that LEISURE VILLAGE is a mere geographic indicator. LEISURE VILLAGE is the name of senior retirement village located in Camarillo, California. It is the name given to a real estate development, presumably by its developers. While the name also designates a location, it is capable of acquiring secondary meaning in the minds of consumers as a real estate venture (see Realmark Cape Harbour, id., and citations therein).

Given that the Panel assumes for the purposes of this decision that Complainant owns protectable rights in the LEISURE VILLAGE mark, it is evident that Respondent’s domain name is not just confusingly similar to the LEISURE VILLAGE trademark, it is identical. Accordingly, the Panel finds that Complainant has satisfied the first element of the Policy.

B. Rights or Legitimate Interests

The Panel is divided on whether Complainant has proven that Respondent has rights or legitimate interests in respect of the domain name.

A majority of the Panel (Abbott and Badgley) is inclined to find that Complainant has failed to carry its burden of demonstrating that Respondent lacks rights or legitimate interests in the disputed domain name. Paragraph 4(c) of the Policy provides that a Respondent may establish rights or legitimate interests by, inter alia showing that:

“(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”;

In this proceeding, Respondent has provided undisputed evidence that it has acted as a real estate broker selling property in the Leisure Village development since 1979, and moreover that since 2000 no other broker has represented more home sellers in that community. According to Respondent’s undisputed evidence, it has served as the listing broker on 40% of the homes reported as sold in the Leisure Village development in 2006.

Before registering or obtaining transfer of the disputed domain name, Respondent determined that Complainant did not hold a trademark registration for the term Leisure Village. Complainant’s claim of rights to the LEISURE VILLAGE trademark is weak, at best. Complainant is not named Leisure Village. It is named Leisure Village Association, an entity that performs services with respect to the development. Respondent’s website does not state or imply that Respondent “is” Leisure Village, or that Respondent has any kind of exclusive or special representative arrangement with the Leisure Village Association. Respondent says that it “knows” Leisure Village. There is a disclaimer of association on the website (even if not prominent).

In light of the absence of trademark or service mark registration by Complainant, and its weak (if not unsupported) claim to ownership of the LEISURE VILLAGE mark, the majority on this issue does not consider that Respondent could reasonably be construed as being expressly or impliedly “notified” of a “dispute” prior to its use of the disputed domain name in connection with a bona fide offering of services. Respondent’s services do not fail the test of being bona fide. They were not offered in a way that sought to take unfair advantage of Complainant’s alleged trademark rights.

The facts in this proceeding are, as Respondent has pointed out, quite similar to those in Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435. The majority (on this issue) acknowledges that panels deciding under the policy are not bound by prior determinations (as pointed out by the minority on this issue), but does not here find a sufficient reason to distinguish or depart from the conclusion reached in that earlier proceeding.

While holding a different perspective than the minority of the Panel on this issue, the majority is nonetheless satisfied to refrain from making a determination on the issue of rights or legitimate interests, and instead to ground the holding of the Panel on the issue of bad faith.

A minority of the Panel (Solomon) refers in support of Complainant’s position on this issue the facts that (1) Respondent is not known as Leisure Village, but rather as McKay Barlow or through the website at <barlowwilliams.com>; (ii) Respondent clearly was aware of Complainant and its LEISURE VILLAGE mark since by Respondent’s own admission it has been selling property at Leisure Village for decades; (iii) there is no contractual relationship between the Parties that would allow Respondent to use the <leisurevillage.com> domain name; (iv) Respondent does not provide services exclusively to Leisure Village; (v) Respondent’s business is not solely related to Leisure Village; (vi) the website at <leisurevillage.com>, through its prominent use of the LEISURE VILLAGE mark, does not clearly identify the Parties’ relationships; (vii) the website provides information about Respondent under the heading “Leisure Village Information”; and (viii) the website links to the <barlowwilliams.com> website which is Respondent’s general business website containing all of Respondent’s real estate listings.

The fact that Respondent may sell property in Leisure Village does not, under these facts, give it the right to take LEISURE VILLAGE standing alone as its domain name. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878; Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No. D2001-1292. The Respondent places much reliance on Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435. As an initial matter, this Panel is not bound by the decision of a prior panelist in a case involving different parties, different facts and a different domain name. Moreover, in that case there was an arrangement entered into between the parties whereby the respondent was invited to act and did act as a commission broker under an arrangement proposed by complainant. No such relationship appears to exist in this case and certainly none has been pleaded. Similarly, the facts set forth above show that Respondent has failed the test set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

As to the argument that Respondent used or made demonstrable preparations to use the domain name in connection with the bona fide offerings of goods or services prior to notice of the dispute, the mere fact that there was use prior to notification of the dispute does not make the use legitimate or acceptable, especially where, as here, there is no question but that Respondent was aware of Complainant, and was aware of the Leisure Village name. Moreover, even if there were use prior to being notified of the dispute, if that use is infringing, it cannot be deemed legitimate Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. Here, the Respondent arguably is using <leisurevillage.com> in connection with a domain name that suggested some type of an authorized or official relationship between Respondent and Complainant when none existed.

Under the above analysis, a minority of the Panel on this issue would be inclined to find that Complainant has met its burden of proving that Respondent has no rights or legitimate interests in the domain name in accordance with the requirements of the Policy. However, a majority of the Panel has a different perspective.

The conflict among the Panelists concerning whether Complainant has met its burden in connection with this element of the Policy does not have to be resolved, however, in light of subpart C below.

C. Registered and Used in Bad Faith

The purpose of the Policy is to prevent clearly abusive acts of cybersquatting. The Policy is not designed to address unfair competition, infringement or what may amount to misuse of a domain name. It is for this reason that there is a requirement under the Policy for Complainant to prove that Respondent registered and used the domain name in bad faith. The Policy sets forth various factors to be examined in considering whether there is bad faith registration and use, although the Policy recognizes that there may be other circumstances not enumerated in the Policy that might show bad faith.

In support of its claim that Respondent registered and is using the domain name in bad faith, Complainant provides few facts, even less evidence, and no legal analysis. Complainant offers only the speculative claim that Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion. Of course, it cannot be denied that the website at issue is a website that is designed to help Respondent sell property at Complainant’s community thereby commercially benefiting Respondent. However, at the same time one has to wonder what type of confusion will be created where, as here Respondent is using the domain name to refer specifically to Complainant. In addition, Respondent points out that the Complainant’s name is Leisure Village Association and Respondent has not taken or sought to take any domain name that includes Leisure Village Association, regardless of the generic top-level domain suffix. Respondent also points out that to date it has not received any evidence of actual confusion arising out of or caused by its use of the <leisurevillage.com> domain name. Given that Respondent does sell property in Leisure Village, that it has not taken Complainant’s actual name, that there is no evidence of confusion, and that Complainant has provided not one iota of evidence to support its conclusion, the Panel finds that Complainant has not provided sufficient evidence to address these issues or to otherwise carry its burden of proof.

It should be kept in mind that this determination is only that Complainant has not submitted sufficient facts, evidence or legal authority to support a finding that the domain name was registered and used in bad faith. Further, the question of whether Respondent’s use of the domain name may result in trademark infringement or other violations of Complainant’s rights is not at issue here, has not been decided, and is clearly beyond the scope of the Policy.

Reverse Domain Name Hijacking

Respondent requests that the Panel make a finding of reverse domain name hijacking. Reverse domain name hijacking is defined in paragraph 1 of the Rules as meaning “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name”. In this case, the Panel does not find that the Complaint was brought in bad faith. Complainant may own rights in the LEISURE VILLAGE mark. Respondent, for its part, is not known by the name of LEISURE VILLAGE and appears to have taken the <leisurevillage.com> domain name, if not to trade on Complainant’s right, then at least to gain an advantage over other realtors who sell property in the Leisure Village. The fact that Complainant’s pleadings were deficient does not mean that Complainant’s motive was improper. As such, the Panel declines to find that the Complainant was involved in reverse domain name hijacking.

 

7. Decision

For all the foregoing reasons both the Complaint and the request for a finding of reverse domain name hijacking are denied.

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Barbara A. Solomon
Presiding Panelist

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Robert A. Badgley
Panelist

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Frederick M. Abbott
Panelist

Panelist Panelist

Dated: November 14, 2006