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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bondy Way Development Corporation and Ashburn Village Development Corporation v. Re/Max Premier
Case No. D2000-0322
1. The Parties
The Complainants are Bondy Way Development Corporation, a corporation of the state of Maryland, located and doing business at 8401 Connecticut Avenue, Chevy Chase, Maryland 20815; and Ashburn Village Development Corporation, a corporation of the state of Maryland, located and doing business at 8401 Connecticut Avenue, Chevy Chase, Maryland 20815.
Respondent is Re/Max Premier, located at 13135 Lee Jackson Highway, Suite 380, Fairfax, Virginia 22003. Respondent’s listed administrative contact is Ms. Clare Grana.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are LOWESISLANDCLUB.COM, LOWESISLANDCLUB.ORG, and ASHBURNVILLAGE.COM. All of these domain names are registered with Network Solutions, Inc. of 505 Huntmar Park Drive, Herndon, Virginia 20170.
3. Procedural History
Complainants initiated this proceeding by filing a Complaint under the UDRP Policy by e-mail on April 21, 2000. A hard copy version of the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") on April 26, 2000. The Center issued an Acknowledgment of Receipt of the Complaint on April 27, 2000. That same day, the Center requested that Network Solutions, Inc. verify that it is the registrar for the domain names at issue and that the named Respondent is the owner of those domain names. On April 28, 2000, Network Solutions, Inc. verified that it is the registrar for the domain names at issue, and that the named Respondent, Re/Max Premier, is the owner of the domain names at issue.
On May 2, 2000, the Center issued a Notification of Complaint and Commencement of Proceeding, which was served upon the parties by e-mail, facsimile and courier. The Center set the period for response to expire on May 21, 2000. On May 24, 2000, the Center issued a Notification of Respondent Default, since the Center had not received a Response from the Respondent by the deadline of May 21. Also on May 24, 2000, the Center issued a Request for Declaration of Impartiality and Independence to this Panel. That same day, May 24, 2000, the Panel executed and returned to the Center its Statement of Acceptance and Declaration of Impartiality and Independence.
On May 25, 2000, the Center issued a Notification of Appointment of Administrative Panel, appointing this Panel to the proceeding, and setting the projected decision date of June 7, 2000. That same day, the Center transmitted the case file to the Panel by e-mail and by courier.
Also, on May 25, 2000, the Center received an e-mail from Ms. Clare Grana, the listed administrative contact for Respondent, reading as follows:
I am no longer affiliated with Re/Max Premier, and thus I just received the package sent to me from your organization. I have been having some computer troubles at my new office, and have not been able to receive all of my e-mails as well.-Clare Grana
The Center’s case manager replied to Ms. Grana, as follows:
Ms. Grana, we acknowledge your message as below. The reason why we sent those [UDRP] packages to you is that your name was listed as a correspondent of the (sic) Re/Max Premier (administrative contact, technical contact, zone contact, billing contact) on the Registrar’s Verification issued April 28, 2000. In this connection, we therefore request you to forward all the packages as well as messages by e-mail from us to a responsible person if any, otherwise to an authorized representative of RE/MAX PREMIER as soon as possible. We appreciate your cooperation in the above matter.
On May 26, 2000, Ms. Grana responded by e-mail, as follows:
"I am afraid that real-estate and Realtors under the Re/Max name work as independent contractors. I am in fact the responsible person and am in the process if (sic) notifying InterNic of my affiliation change.
I simply want you to know that I was not being disrespectful in my lack of response. I am in fact still the responsible person but the channels of communication need to be modified because of the unusual circumstance with the real estate office."
The remainder of this e-mail constituted a substantive response to the Complaint (to be discussed below), but did not include all the information required by the UDRP Rules.
On June 1, 2000, Complainant’s authorized representative filed with the Center and served on Ms. Grana a brief rebuttal to Ms. Grana’s submissions.
This Panel notes that Ms. Grana’s submissions were on her own behalf (or, perhaps, on behalf of another business), and not on behalf of Re/Max Premier, the Respondent in this action. Furthermore, Ms. Grana indicated in her e-mails that she was no longer affiliated with Re/Max Premier, and thus it did not appear she was still an authorized representative for the domain name registrant.
Because Ms. Grana indicated that she was submitting documents which might be transfers for the domain names, this Panel issued an Interim Order on June 5, 2000, requesting that Ms. Grana and/or Re/Max Premier "submit evidence to the Center proving who owns the domain names at issue. In absence of such proof, this Panel must assume that Re/Max Premier continues to own the domain names at issue, and that Ms. Grana’s submissions in this proceeding have not been authorized by Re/Max Premier."
Procedural Order #1, annexed hereto as Appendix A.
No response was received by the Center, either from Re/Max Premier or from Ms. Grana. Furthermore, the WHOIS records for these domain names continue to indicate that they are owned by Re/Max Premier. Therefore, this Panel is forced to conclude that Re/Max Premier is still the owner of the domain names at issue, but Ms. Grana is no longer authorized to respond on its behalf. The Respondent must therefore be considered to be in default. Nevertheless, this Panel will not ignore Ms. Grana’s submissions to the extent they relate to Complainant’s assertions of activities specifically attributable to Ms. Grana.
This Panel shall not consider the rebuttal filed by Complainants. The UDRP Rules contain no provisions for consideration of a rebuttal, and Complainant’s representative provided no explanation why a rebuttal was necessary. Furthermore, the rebuttal contains no additional facts which it is asserted came to light after filing of the Complaint.
4. Factual Background
Complainant Bondy Way Development Corporation ("Bondy Way") is the owner of the service mark LOWES ISLAND CLUB, which it asserts it has used in connection with a residential housing development, and a golf and tennis club, since 1992. Complaint, ¶ 12. Bondy Way filed an application to register the mark LOWES ISLAND CLUB and Design with the U.S. Patent and Trademark Office on July 26, 1999, for numerous golf and tennis-related items, clothing, country club services, pro-shop services, golf entertainment services, tennis and swimming tournaments, and restaurant services. Id. That application is still pending. See status record for U.S. Application Serial No. 75/759,385, annexed to this Decision as Appendix B.
Bondy Way asserts that it has used the mark LOWES ISLAND CLUB substantially, exclusively and continuously since 1992, and that the mark is well and favorably known in at least the Washington, D.C. metropolitan region, to indicate the origin of Complainant’s real estate development and services. Id.
Complainants annexed to the Complaint as Appendix C, promotional brochures and materials showing use of the mark LOWES ISLAND CLUB in connection with a membership pamphlet, a directions pamphlet, a golf scorecard, and an informational pamphlet. Complainants attached a copy of the application for federal registration of their mark LOWES ISLAND CLUB and Design, as Appendix E to the Complaint. Included with this application were specimens of the mark as it appears on various promotional items, including cup holders, caps, key chains, ball markers, trophies, a restaurant menu, and cups.
Complainant Ashburn Village Development Corporation ("Ashburn Village") asserts that it has been using the mark ASHBURN VILLAGE for a residential housing development, and a golf and tennis club, since 1986. Ashburn Village does not assert that it has sought or obtained federal registration for the mark ASHBURN VILLAGE. However, Ashburn Village annexed to its Complaint as Appendix D, specimens evidencing use of the mark ASHBURN VILLAGE in connection with letterhead, envelopes, plastic cups, a builder listing, and an informational brochure about Ashburn Village, including its builders and community features.
5. Parties’ Contentions
Complainants assert that this dispute is properly within the scope of the UDRP Policy, because the domain names LOWESISLANDCLUB.COM, LOWESISLANDCLUB.ORG and ASHBURNVILLAGE.COM are "identical and confusingly similar" to Complainant’s marks LOWES ISLAND CLUB and ASHBURN VILLAGE respectively. Complaint, ¶ 13.
Complainants assert that Respondent has no rights or legitimate interests in respect of the domain names LOWESISLANDCLUB.COM and LOWESISLANDCLUB.ORG, because Respondent has never actually used them in connection with the bona fide offering of any goods or services, nor is Respondent commonly known by the domain names LOWESISLANDCLUB.COM or LOWESISLANDCLUB.ORG; nor is Respondent making a non-commercial or fair use of the domain names. Complaint, ¶ 14.
Complainants also assert that Respondent has no rights or legitimate interest in respect of the domain name ASHBURNVILLAGE.COM, because Respondent is using this domain name intentionally to divert and attract to Respondent’s website, Internet users wishing to access Complainant Ashburn Village Development Corporation’s real estate site. Complaint, ¶ 15.
Complainants assert that to the best of their knowledge, Respondent has never actually used the name or mark ASHBURN VILLAGE in connection with the bona fide offering of any goods or services. Id. Complainants point out that the mark ASHBURN VILLAGE does not appear anywhere on the website connected to the domain name ASHBURNVILLAGE.COM. Complainants appended a copy of Respondent’s website located at ASHBURNVILLAGE.COM as Appendix F to the Complaint. This Panel confirms that the website appended to the Complaint as Appendix F does not mention the domain name ASHBURNVILLAGE.COM, or the mark ASHBURN VILLAGE. Complainants assert that Respondent is not commonly known by ASHBURNVILLAGE.COM and is not making a non-commercial or fair use of the domain name.
Complainants assert that the domain names LOWESISLANDCLUB.COM, LOWESISLANDCLUB.ORG and ASHBURNVILLAGE.COM have been registered and are being used in bad faith, because Respondent is engaging in a "pattern of conduct in registering multiple domain names which Respondent knew or should have known are identical or confusingly similar to marks covering well-known real estate developments and/or clubs in the greater Washington, D.C. Metropolitan region. Complaint, ¶ 16. Complainants attached a copy of a WHOIS database search as Appendix G, asserting the search is evidence that Respondent is "accumulating, collecting and hoarding numerous domain names of well-known marks covering real estate developments and/or clubs in the greater Washington, D.C. Metropolitan region". Complainants point out that this listing, which because of technological limitations only includes the first 50 domain names registered by the Registrant, includes the domain names ASHBURN-FARM.COM, ASHBURNFARM.NET, ASHBURNFARM.ORG, RIVERCREEK.ORG, GOOSECREEKGOLFCLUB.COM, ARMYNAVYCOUNTRYCLUB.COM, POTOMACFALLSVIRGINIA.COM, SOUTHRIDINGVIRGINIA.COM and LANDSDOWNEGOLFCLUB.COM, all of which are real-estate developments and/or clubs in the greater Washington region, Complaint, ¶ 16, fn.1.
As additional evidence that Respondent has registered and is using the domain names in bad faith, Complainants assert that Ms. Clare Grana, who is the administrative contact for the Respondent, offered to sell Complainants the domain names in exchange for a free lifetime golf membership at the Lowes Island Club. Complaint, ¶ 17. Complainants assert that the monetary value of such membership "would not be less than the $50,000 initiation fee plus the present value of the regular dues of $285.00 a month for the expected life of Ms. Grana." Id. Complainants assert that this proposed price for the domain names "is exorbitant in comparison with the initial domain name registration fees." Id. Complainants attached as Appendix H to the Complaint copies of Complainants’ initial letter to Respondent, and Complainants’ letter reflecting "Respondent’s exorbitant and outrageous demands." Id. This Panel notes that the addressor of both letters is Chevy Chase Bank, F.S.B., of which Bondy Way Development Corporation and Ashburn Village Development Corporation are wholly owned subsidiaries. Complaint, ¶ 2.
Complainants assert that Respondent’s bad-faith registration and use of the domain names at issue is further evidenced by Respondent’s knowledge of Complainants’ rights in the marks LOWES ISLAND CLUB and ASHBURN VILLAGE, and its preventing Complainants from using domain names that correspond to Complainants’ marks LOWES ISLAND CLUB and ASHBURN VILLAGE. Complaint, ¶ 18. Complainants assert that Respondent’s actions have unduly interfered with and disrupted Complainants’ ability to promote their own real estate businesses. Id.
Complainants assert that Respondent has knowledge of Complainant’s rights in the marks because "Respondent is a real estate broker and therefore fully understands the value of real estate development and club names. Under the circumstances, it is clear that Respondent registered the domain names LOWESISLANDCLUB.COM, LOWESISLANDCLUB.ORG and ASHBURNVILLAGE.COM with full knowledge of Complainants’ rights in the service marks LOWES ISLAND CLUB and ASHBURN VILLAGE and primarily for the purpose of selling or otherwise transferring the domain name registrations to Complainants for valuable consideration well in excess of the Respondent’s out-of-pocket costs directly related to the domain names." Complaint, ¶ 19.
As discussed above, Respondent’s listed administrative contact has filed a response. However, she advises that she is no longer affiliated with Respondent. Respondent itself has not filed a response, nor has Respondent confirmed that its administrative contact is authorized to speak for it. While Respondent is technically in default, this Panel will consider its administrative contact’s submissions, at least to the extent they address the conduct of the administrative contact herself. In accordance with UDRP Rule 14, however, this Panel shall proceed to a decision on the Complaint, and shall draw such inferences from the Respondent’s default as this Panel considers appropriate.
6. Discussion and Findings
A. Applicable Policy Provisions
The UDRP Policy requires the Complainants to prove each of the following three elements, in order to prevail in this proceeding:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. That Respondent has no rights or legitimate interests in respect of the domain name; and
3. That the domain name has been registered and is being used in bad faith.
UDRP Policy, Section 4(a).
As has been pointed out by previous Panels, it is not sufficient to prevail that a Complainant prove only registration in bad faith; rather, the Complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bossman, Dispute No. D99-0001; Robert Ellenbogen v. Mike Pearson, Dispute No. D00-0001.
However, the UDRP Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [the Registrant has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) [the Registrant has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Registrant has] engaged in a pattern of such conduct; or
(iii) [the Registrant has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the Registrant has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [its] web site or location or of a product or service on [its] web site or location.
UDRP Policy, Section 4(b).
These circumstances are non-inclusive, and the Panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
B. Opinion of the Panel
This Panel is satisfied that Complainants have met the requirements of Section 4 of the Rules. First, Complainants have demonstrated that they have rights in the marks LOWES ISLAND CLUB and ASHBURN VILLAGE. It is not contested that Complainants are using these marks in connection with their real estate developments, golf and tennis clubs, and clothing or promotional materials. With respect to LOWES ISLAND CLUB, Complainants have submitted evidence showing use of the mark in connection with golf club services, including a summary of membership categories, directions to the club, club scorecards, and one page from a brochure about the club. In addition, Complainants submitted photographs of specimens from their trademark application for the club. These specimens include such items as a hat, key chain, flag, trophy, and a restaurant menu from the club.
As for ASHBURN VILLAGE, Complainants have submitted blank letterhead, envelopes, plastic cups, a builder listing, and general information regarding the community. There being no effort to contest Complainant’s certified assertions in this regard, this Panel is satisfied that Complainants have proved rights in ASHBURN VILLAGE at least insofar as their real estate development services.
This Panel notes that Ashburn is the name of a town in Virginia, and the term "village" is defined as "a small community or group of houses in a rural area, larger than a hamlet and usually smaller than a town, sometimes incorporated as a municipality." As such, it would appear that "Ashburn village" could be considered descriptive of a village located in Ashburn, Virginia. Whether or not ASHBURN VILLAGE is descriptive of a real estate development need not be reached by this Panel, since Complainants assert the mark has been in use since 1986 to identify the real estate development. As such, it could certainly have acquired distinctiveness sufficient for purposes of serving as a protectable trademark. See 15 U.S.C. Section 1052(f); Sunbeam Products Inc. v. The West Bend Co., 123 F.3d 246, 44 USPQ2d 1161, 1167 (5th Cir. 1997).
The domain names at issue are legally identical to Complainants’ marks. They differ only in that they include the top-level domains .COM or .ORG, which TLDs serve no trademark significance. Internet users searching for information about Complainants’ real estate developments or golf and tennis clubs likely would add the top-level domains .COM or .ORG to the marks LOWES ISLAND CLUB or ASHBURN VILLAGE. Therefore, Complainants have met the requirements of §4(a)(i) of the UDRP Policy.
Similarly, Respondent has demonstrated no rights or legitimate interests in respect of the domain names at issue. Respondent itself has failed to contest Complainants’ assertion that Respondent has not used LOWES ISLAND CLUB in connection with the bona fide offering of any goods or services, and is not making a non-commercial or fair use of the domain names LOWESISLANDCLUB.COM or LOWESISLANDCLUB.ORG. Respondent itself has failed to contest Complainants’ assertion that Respondent has no rights or legitimate interests in respect to the domain name ASHBURNVILLAGE.COM and that the domain name is only being used to divert Internet traffic to Respondent’s own website. Respondent’s website as annexed to the Complaint promotes Respondent’s real estate services, but the term ASHBURN VILLAGE does not appear anywhere on the website. As shown by the Exhibits annexed to the Complaint, Respondent’s domain names LOWESISLANDCLUB.COM and LOWESISLANDCLUB.ORG do not resolve to a website.
On this issue, Ms. Grana, Respondent’s previously-authorized representative, asserted in her e-mail to the Center:
I will say that my purchasing of all the [domain] names that I own-but for one or two-were explicitly part of a business plan that involved real estate both virtual and real. The plan involved on-line publishing of information regarding these areas.
Hopefully in the United States it is still not a crime, or a sign of bad faith to have an explicit business plan which when conceived, was very far reaching indeed. I wonder why the Complainant was not aware, for so many years that this opportunity existed for them as well. The names were chosen to be in lieu of relying on search engines to direct traffic to my site. Again, this was a far reaching idea at the time that I purchased the names. Evidence of this is the fact that I purchased the name "WashingtonGolfCourses.com" or some version of that basic idea. (I do not have a list of the names in front of me at the moment..) That name was meant to be the central one which others were directed to. In no way can this be construed as Cybersquatting. In fact, I have sold no names to date, but have diligently paid the bills for the reservation of these names for years.
As noted above, this Panel is mindful of the fact that Ms. Grana apparently no longer speaks on behalf of the Respondent, for whom she apparently registered the domain names. However, this Panel will take into account Ms. Grana’s statements regarding registration of the names, which were apparently registered by her while she was still the representative of the Respondent.
Ms. Grana’s assertions fail to demonstrate that Respondent had rights or legitimate interests in respect of the domain names at issue. Ms. Grana is free to publish information on the Internet regarding geographic locations, and regarding neighborhoods. She is even free to provide information regarding real estate developers, real estate developments, and private golf clubs. What she is not free to do, however, is to develop a business plan whose central facet is itself an element of bad faith: directing Internet traffic, ostensibly directed toward Complainants and their real estate and golf course developments, to the Respondent’s (or Ms. Grana’s) site. This Panel does not recognize as a "legitimate interest" one of the very elements of bad faith set forth in the UDRP Policy, §4(b)(iv). The only website owned by Ms. Grana of which there is evidence in this proceeding provides information not about neighborhoods, schools, and other general information, but instead about real estate which is for sale, and about Ms. Grana’s services as a real estate agent. Such services are directly competitive with the real estate being developed and offered for sale by Complainants under their trademarks at issue, and are related to the country club services also offered by the Complainants under their marks. Turning an element of bad faith into a business plan does not make it a legitimate use.
Therefore, Complainants have demonstrated that Respondent has no rights or legitimate interests in respect of each of the domain names at issue, under Section 4(b)(ii) of the UDRP Policy.
Finally, Complainants have demonstrated that each of the domain names have been registered and are being used in bad faith. Complainants have produced uncontested evidence that Ms. Grana offered to sell the domain names at issue for consideration far in excess of the out-of-pocket costs for registering the domain names. It is telling to note that Ms. Grana, in her response to the Center, noted that she has "sold no names to date," but never denied the assertion that she offered to sell the domain names to Complainant’s parent company.
Under the UDRP Policy, offering the domain names for sale is sufficient to constitute bad faith; an actual sale is not necessary. This alone would be sufficient evidence that the domain names were registered and are being used in bad faith. However, Complainants have presented further evidence that the domain names have been registered and are being used in bad faith; namely, that Respondent has engaged in a pattern of registering domain names in order to prevent owners of related trademarks or service marks from reflecting those marks in corresponding domain names. In this case, as reflected by the WHOIS printout annexed to the Complaint as Appendix G, Respondent has registered the names of several real estate developments located in the Metropolitan Washington area, in addition to the domain names at issue herein. Ms. Grana, who was the authorized representative of Respondent when the domain names were registered, admits that registration of the domain names were part of a "business plan" to register domain names which would direct Internet users to her site, instead of the sites of the real estate owners. The fact that Respondent has defaulted, coupled with the fact that Respondent has made an exorbitant demand for sale of the domain names to Complainants, together with Ms. Grana’s admission that these domain names were registered as part of a business plan to direct traffic relating to these real estate developments to her website, permit this Panel to conclude that Respondent is engaged in a pattern of registering domain names of well known real estate developments for the purpose of preventing the owners of such developments from reflecting development names in a corresponding domain name.
With respect to the domain name ASHBURNVILLAGE.COM, this Panel finds that Respondent has intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website. The website resolves to Respondent’s ASHBURNVILLAGE.COM domain name, and as shown in Appendix B to the Complaint, clearly touts Ms. Grana’s services as a real estate agent operating in the area where Complainant’s ASHBURN VILLAGE development is located. Internet users would be likely to assume that Respondent is authorized, sponsored by or affiliated with Complainant Ashburn Village, for the purpose of selling real estate in Complainant’s real estate development. This Panel notes that Ms. Grana holds herself out on the website to be "your Dulles corridor realtor." The site includes the names of several real estate developments in the area, including Cascades, Broadlands, River Creek, South Riding, and Woodlea Manor. Ms. Grana, formerly the Registrant’s administrative and billing contact, refers to herself in the website as a "Senior Real Estate Consultant...for the past ten years", who apparently specializes in real estate developments in the area where Complainant’s developments are located. Coupled with the inferences permissible by virtue of Respondent’s default, this Panel charges her, and Respondent, with knowledge that the real estate developments corresponding to Respondent’s domain names, are the names and service marks of Complainant. This inference is corroborated by Ms. Grana’s statements that her plan "involved real estate both virtual and real." This Panel takes Ms. Grana at her word, that her plan was to involve the real estate developments identified by the domain names she registered. Respondent’s efforts to tie up these and other domain names corresponding to well known Washington area real estate developments, and Ms. Grana’s attempt to sell these domain names back to Complainant’s parent company for exorbitant amounts, evidence Respondent’s bad faith use and registration of the domain names, as that term is defined by the UDRP Policy.
For the reasons stated hereinabove, this Panel grants the remedy requested by Complainants in ¶ 20 of the Complaint, namely that the domain names LOWESISLANDCLUB.COM and LOWESISLANDCLUB.ORG are hereby transferred to Complainant, Bondy Way Development Corporation; and the domain name ASHBURNVILLAGE.COM is hereby transferred to Complainant Ashburn Village Development Corporation.
Jordan S. Weinstein
Dated: June 20, 2000