The #Villages Properties : Dot .COM #domain owner cleared of “bad faith” claims in #UDRP

The Villages is a large residential community in Florida, catering to seniors. It was founded more than 30 years ago, and it has more than 50,000 residents.

Real estate in the area is selling like hot cakes, and being a real estate agent often utilizes the geographical reference in domain names, such as TheVillagesProperties.com.

In this case, THE VILLAGES is a registered trademark, and the Holding Company of The Villages, Inc. filed a UDRP against the domain, operated by a real estate agent.

The Respondent is a former independent contractor with the company, and he didn’t file an official response to the UDRP.

However, the Complainant didn’t demonstrate how the use of the domain results in “bad faith,” and John J. Upchurch, sole panelist at the National Arbitration Forum, denied the domain’s transfer.

Full details of the decision for TheVillagesProperties.com follow:

The Villages Properties .com

Holding Company of The Villages, Inc. v. Dr Walter Coe

Claim Number: FA1806001789860

PARTIES

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 Dr Walter Coe (“Respondent”), represented by Walter, <<ATTORNEYLOCATION>>.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <thevillagesproperties.com>, registered with TUCOWS, INC.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on June 1, 2018; the Forum received payment on June 6, 2018.

On Jun 4, 2018, TUCOWS, INC. confirmed by e-mail to the Forum that the <thevillagesproperties.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, INC. 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 June 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2018 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@thevillagesproperties.com. Also on June 13, 2018, 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.

Having received no timely response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. A late response was received on July 6, 2018, following entry of the Default, and was not considered herein by the Panel. The subsequent pleadings received by both parties relating to the Default are rendered moot by the Decision set forth below.

On July 5, 2018, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

1. Complainant and its affiliates are the developers of the “The Villages” retirement community and have transformed vacant, Floridian pasture land into the nation’s largest active retirement community. Complainant has rights in the THE VILLAGES mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,339,401, registered Apr. 4, 2000). See Amend. Compl. Ex. A. Complainant also has common law rights in the THE VILLAGES mark since as early as 1992. Respondent’s <thevillagesproperties.com> domain name is confusingly similar to Complainant’s THE VILLAGES mark as Respondent fully incorporates Complainant’s mark, but adds the generic term “properties” and a “.com” generic top-level domain (“gTLD”) to the mark.

2. Respondent has no rights or legitimate interests in the <thevillagesproperties.com> domain name. Respondent is a former independent contractor for Complainant whose contract with Complainant was terminated in 2005. See Amend. Compl. Ex. J. As a result, Respondent is not authorized or licensed to use Complainant’s mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to compete with Complainant’s business.

3. Respondent registered and uses the <thevillagesproperties.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and divert users to the disputed domain name where Respondent offers competing services and commercially benefits from user confusion. Respondent was also a former independent contractor for Complainant which further demonstrates bad faith. Moreover, Respondent used a privacy service when it registered the disputed domain name. Further, Respondent had actual knowledge of Complainant’s rights in the THE VILLAGES marks when it registered the disputed domain name.

B. Respondent

1. Respondent did not submit a timely response, and a Notice of Respondent Default was entered herein.

FINDINGS

1. Respondent’s <thevillagesproperties.com> domain name is confusingly similar to Complainant’s THE VILLAGES mark.

2. Complainant failed to establish that Respondent registered or used the <thevillagesproperties.com> domain name in bad faith.

DISCUSSION

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.

In view of Respondent’s failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant’s undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000)

(“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).

Identical and/or Confusingly Similar

Complainant claims to have rights in the THE VILLAGES mark based upon its trademark registrations with the USPTO. Registering a mark with a governmental authority is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum Sept. 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶ 4(a)(i)”). Complainant provides copies of its USPTO registrations for the THE VILLAGES mark and its variations (e.g., Reg. No. 2,339,401, registered Apr. 4, 2000). See Amend. Compl. Ex. A. Therefore, the Panel finds Complainant has sufficiently demonstrated rights in the THE VILLAGES mark per Policy ¶ 4(a)(i).

Additionally, Complainant asserts common law rights in the THE VILLAGES mark as early as 1992. Common law rights in a mark may be demonstrated through a showing that the mark has secondary meaning under a Policy ¶ 4(a)(i) analysis. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum

July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”). Complainant owns and has operated <thevillages.com> domain name since 1996 and has provided evidence of its use of that domain name. See Amend. Compl. Exs. B and H. Complainant also provides a declaration from Mark Morse, who asserts Complainant has used the THE VILLAGES mark “in the early 1990s.” See Amend. Compl. Ex. I, Morse Decl. ¶ 7. Therefore, the Panel finds Complainant has sufficiently demonstrated common law rights in the THE VILLAGES mark per Policy ¶ 4(a)(i).

Next, Complainant contends Respondent’s <thevillagesproperties.com> domain name is confusingly similar to Complainant’s THE VILLAGES mark. Specifically, Complainant argues Respondent merely adds a generic term and a gTLD to the mark. Additions to a mark such as a generic term and/or a gTLD does not negate any confusing similarity between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant argues Respondent adds the term “properties” and a “.com” gTLD to the THE VILLAGES mark. Therefore, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).

Complainant asserts Respondent has no rights or legitimate interests in the <thevillagesproperties.com> domain name. Complainant claims Respondent was a former independent contractor who registered the disputed domain name without any authority or license to use the THE VILLAGES mark. Additionally, Complainant argues Respondent is not commonly known by the disputed domain name. Where a response is lacking, relevant WHOIS information may determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Further, lack of authorization to use a complainant’s mark may evince a finding that the respondent lacks rights or legitimate interests in the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS of record identifies Respondent as “Dr Walter Coe,” who Complainant claims was a former independent contractor. Complainant argues Respondent’s contract was terminated in 2004, which Complainant provides a copy of the redacted, independent contractor contract with Mr. Coe to support its assertion. See Amend. Compl. Ex. K.

As Respondent has not provided a response to this action, Respondent has thus failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain name.

Registration and Use in Bad Faith

Complainant alleges Respondent registered and uses the <thevillagesproperties.com> domain name in bad faith. Specifically, Complainant argues Respondent attempts to disrupt Complainant’s business and attract users to the disputed domain name where it offers competing services. Use of a confusingly similar domain name to offer competing goods or services may demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provides a screenshot of the disputed domain name’s resolving website which offers a real estate brokerage business similar to Complainant’s business. See Amend. Compl. Ex. F.

Additionally, Complainant contends that given Respondent is a former independent contractor for Complainant, Respondent registration of the competing, <thevillagesproperties.com> domain name demonstrates bad faith. Where a respondent is a former employee, registration of a disputed domain name intended to compete with a complainant may indicate bad faith under Policy ¶ 4(a)(iii). See MBS Computers Ltd. v. Workman, FA 96632 (Forum

Mar. 16, 2001) (finding bad faith use and registration where a disgruntled former employee registered an infringing domain name to open an online business that competed with the complainant). Complainant provides a redacted copy of the independent contractor agreement with Complainant and evidence of Respondent’s current work at a competing business. See Amend. Compl. Exs. K, M and N.

Despite the foregoing allegations, the Panel finds that Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Tristar Products, Inc. v. Domain Administrator / Telebrands, Corp., FA 1597388 (Forum Feb. 16, 2015) (“Complainant makes conclusory allegations of bad faith but has adduced no specific evidence that warrants a holding that Respondent proceeded in bad faith at the time it registered the disputed domain name. Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith.”); see also Chris Pearson v. Domain Admin / Automattic, Inc., FA 1613723 (Forum Jul. 3, 2015) (finding that the complainant could not establish the respondent registered and used the disputed domain name in bad faith because it failed to present evidence that would support such a holding). At best, Complainant has established that Respondent is an active real estate salesman in the community, but presents nothing to indicate his engagement in any inappropriate conduct that could fairly be labeled “bad faith”. Consequently, the Panel finds Complainant has failed to meet the burden of proof of bad faith registration and use. Specifically, the Panel further finds that Respondent has not registered or used the <thevillagesproperties.com> domain name in bad faith, as it finds that Complainant has failed to allege circumstances showing Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC, FA 1685263 (Forum Aug. 30, 2016) (finding that where a respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith, lack of rights or legitimate interests on its own is insufficient to establish bad faith); see also Uhrenholt A/S v. FILLIP NIELSEN, FA 1646444 (Forum Dec. 21, 2015) (finding that mere assertions of bad faith, without evidence, are insufficient for a complainant to establish bad faith under Policy ¶ 4(a)(iii)).

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Accordingly, it is Ordered that the <thevillagesproperties.com> domain remain with Respondent.

John J. Upchurch, Panelist

Dated: July 19, 2018


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