WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Regency Homes, L.C. v. RegencyH
Case No. D2004-0412
1. The Parties
The Complainant is Regency Homes, L.C. of West Des Moines, Iowa, United States of America, represented by McKee, Voorhees & Sease P.L.C. of Des Moines, Iowa, United States of America.
The Respondent is RegencyH of Miami, Florida, United States of America.
2. The Domain Name and Registrar
The domain name in dispute in this proceeding is (the “Contested Domain Name”).
The registrar for the Contested Domain Name is Intercosmos Media Group, Inc. d/b/a D, located in New Orleans, Louisiana, United States of America.
3. Procedural History
The WIPO Arbitration and Mediation Center (the “Center”) received a hard copy of the Complaint submitted by Regency Homes, L.C. on June�4,�2004. On June�18,�2004, the Center received by e-mail Regency Homes, L.C.’s Amended Complaint. On June�23,�2004, the Center received a hard copy of the Amended Complaint.
Having verified that the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), and the Rules and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules” and “Supplemental Rules”) have been satisfied, the Center on June�24,�2004, sent to Respondent, with a copy to Complainant, a notification of the commencement of the administrative proceeding, together with copies of the Complaint and Amended Complaint. The formal date of the commencement of this administrative proceeding is June�24,�2004.
On June�24,�2004, the Center received Respondent’s Response.
On July�14,�2004, after receiving a completed Statement of Acceptance and Declaration of Impartiality and Independence, the Center advised the parties that it had appointed Steven M. Auvil as the sole panelist to resolve this dispute (the “Panel”)..
This decision is based on the above documents.
4. Factual Background
Complainant provides home building services and claims to be the largest home builder in the State of Iowa. Complainant claims to have used both REGENCY and REGENCY HOMES as trademarks for nearly twenty years. Complainant submitted registration information indicating that the name “Regency” has been used since as early as 1986. Complainant features both “Regency” and “Regency Homes” in its website at “.”
Respondent registered the Contested Domain Name on October�12,�1999.
On July�7,�2003 Complainant, through counsel, sent a demand letter via certified mail directed to an entity known as “Domain for Sale,” located at Respondent’s address. Complainant alleged that Domain for Sale had no legitimate interest or trademark rights in the name “Regency Homes,” had offered the Contested Domain Name for sale, and had sought to exact payment from Complainant for transfer of the Contested Domain Name. Complainant also alleged that Domain for Sale had also used the Contested Domain Name to direct traffic to various pornographic websites.
Complainant’s certified letter was never signed for and was returned to Complainant. However, on July�8,�2003, Respondent’s “office manager” replied by e-mail and alleged reverse domain hijacking.
As a result, Complainant brought this proceeding seeking to gain control of the Contested Domain Name.
5. The Parties’ Contentions
A. Complainant
Complainant contends that (i) it has rights in the marks REGENCY and REGENCY HOMES and that the Contested Domain Name is confusingly similar to those marks; (ii) Respondent has no legitimate rights in either REGENCY or REGENCY HOMES and registered the Contested Domain Name in bad faith; (iii) Respondent offered the Contested Domain Name for sale and sought to exact payment from Complainant for transfer of the Contested Domain Name; (iv) Respondent used the Contested Domain Name to direct traffic to various pornographic websites; and (v) Respondent has in the past registered many other domain names that infringe on other parties’ trademark rights.
B. Respondent
Respondent contends that Complainant is not a federal trademark registrant. Further, by virtue of the fact that Respondent has been commonly known as since 1999, Respondent contends that it has common law trademark rights in that mark. Respondent also contends that it was making a legitimate noncommercial or fair use of the Contested Domain Name, and denies that it ever sought to sell it to anyone, let alone to Complainant. Finally, in an e-mail dated July�8,�2003, one of Respondent’s representatives informally contended that Complainant brought this proceeding in an attempt at “reverse domain name hijacking.”
6. Discussion and Findings
To obtain relief, paragraph 4(a) of the Policy requires a complainant to prove each of the following:
(1) that the contested domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that the respondent has no rights or legitimate interests in the contested domain name; and
(3) that the contested domain name has been registered and is being used in bad faith.
If a complainant successfully proves all three elements, then a panel duly empowered by the Center has the authority to require the cancellation of the respondent’s domain name registration or to order that it be transferred to the complainant. Id. at paragraph 4(i).
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the contested domain name be identical or confusingly similar to a trademark or service mark in which the complainant has rights. Complainant contends that it has rights in the marks REGENCY and REGENCY HOMES and that the Contested Domain Name is confusingly similar to those marks. Respondent does not dispute Complainant’s contention that the Contested Domain Name is confusingly similar to the REGENCY and REGENCY HOMES marks.
There remains the issue whether REGENCY HOMES is a trademark or service mark in which Complainant itself has rights. Complainant has not contended that REGENCY HOMES is a federally registered trademark or service mark in which it has rights. The Panel finds that neither Complainant nor Respondent has federal trademark rights in REGENCY or REGENCY HOMES, and so neither receives the benefit of the presumption of the exclusive nationwide right to use it for home building services. However, Complainant contends that both REGENCY and REGENCY HOMES are its trademarks for providing home building services, and that it has state trademark rights and common law trademark rights in those marks. Complainant averred in its papers that REGENCY has been used for nearly twenty years. Indeed, Complainant submitted evidence indicating that REGENCY has been registered with the Secretary of State of Iowa as a trademark or service mark since November�1,�1986. Complainant also submitted evidence indicating that REGENCY HOMES has been registered with the Secretary of State of Iowa as a trademark or service mark since January�18,�2001. Finally, Complainant submitted evidence indicating that REGENCY HOMES is prominently featured in Complainant’s website at “.”
Respondent does not contest the common law rights of Complainant. Instead, Respondent argues that (1) Complainant lacks a federal registration and, (2) there are third party users of REGENCY HOMES. It is well-settled that common law rights can provide the basis of a valid complaint under the Policy. See Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218 (June�14,�2000). Moreover, although there appears to be third party users of REGENCY HOMES, this does not mean that Complainant lacks common law rights in REGENCY HOMES.
The Panel, therefore, concludes Complainant has proved the first element set forth in paragraph 4(a)(i) of the Policy, that the Contested Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or other legitimate interests in the contested domain name. Complainant contends that Respondent used the Contested Domain Name to direct traffic to various pornographic websites and that, after being notified of the instant dispute, Respondent “put up a sham website with the REGENCY HOMES mark to create the illusion that someone with legitimate rights in the mark was using it.” Although Complainant provided no evidence that Respondent ever directed traffic to various pornographic websites through the Contested Domain Name, Respondent did not deny this charge as one would expect if such an allegation were not true. Further, as to Complainant’s assertion that Respondent’s website using the REGENCY HOMES mark is a “sham,” Complainant submitted evidence of a single, bare-bones web page, which constitutes the entire subject website as of July�8,�2003.
In responding to Complainant’s charges, Paragraph 4(c) of the Policy provides examples of how Respondent can demonstrate that it has rights to and legitimate interests in the Contested Domain Name. “Any of the following circumstances . . . if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [a respondent’s] rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii).” Policy, at paragraph 4(c) (emphasis added).
A respondent may demonstrate that it has rights to and legitimate interests in the Contested Domain Name under paragraph 4(c)(i) of the Policy by establishing “before any notice to [it] of the dispute, [its] use of, or demonstratable 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 the present case, although Respondent submitted into evidence numerous examples of the websites of other “Regency Homes” businesses, it did not submit evidence that would establish that it had used, or was even preparing to use, the Contested Domain Name in connection with a bona fide offering of goods or services before it received any notice of the dispute. No evidence is offered of advertising campaigns, market tests, focus groups, logo designs, or even of plans for advertising campaigns or plans for market tests or any other plans for outlays or commitments of resources made toward the use of “Regency Homes” in connection with a bona fide offering of goods or services. The Panel, therefore, concludes that Respondent has not demonstrated any legitimate interest in the Contested Domain Name under the guidance of paragraph 4(c)(i).
A respondent may demonstrate that it has rights to and legitimate interests in the Contested Domain Name under paragraph 4(c)(ii) of the Policy by proving that it has “been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights.” Respondent stated in its Response that “[w]e have been commonly known as regencyh since 1999.” This assertion falls short of the proof required under paragraph 4(a)(ii) of the Policy. Due to the absence of any additional evidence supporting the assertion, the Panel, drawing such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules, concludes that Respondent has not demonstrated any legitimate interest in the Contested Domain Name under the guidance of paragraph 4(c)(ii) of the Policy.
A respondent may demonstrate that it has rights to and legitimate interests in the Contested Domain Name under paragraph 4(c)(iii) of the Policy by proving that it is “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.” Indeed, Respondent asserts in its Response that “[w]e are making a legitimate noncommercial or fair use of our domain name.” This, too, is a mere assertion without any evidence to support it. Indeed, Respondent does not explain how the Contested Domain Name is being used or whether that use is noncommercial or fair, or both. In short, because Respondent has not proffered any evidence to prove Respondent’s assertion that it is “making a legitimate noncommercial or fair use of” the Contested Domain Name as alleged, the Panel, drawing such inferences as he considers appropriate pursuant to paragraph 14(b) of the Rules, concludes that Respondent has not demonstrated any legitimate interest in the Contested Domain Name under the guidance of paragraph 4(c)(iii).
For all of the reasons set forth above, the Panel concludes that Complainant has proved the second element set forth in paragraph 4(a)(ii) of the Policy, that Respondent has no rights or legitimate interests in the Contested Domain Name.
C. Bad Faith Registration and Use
The third element set forth in paragraph 4(a) of the Policy requires the complainant to prove that the domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets forth four examples of circumstances in which the registration and use of a domain name may be found to be in bad faith: (i) the respondent has registered or acquired the domain name primarily for the purpose of selling it to the complainant or to a competitor of the complainant at a profit; (ii) the respondent registered the domain name to prevent the complainant from reflecting its trademark in a corresponding domain name and has engaged in a pattern of similar conduct; (iii) the respondent registered the domain name primarily to disrupt a competitor’s business; or (iv) the respondent’s use of the domain name intentionally attempts to attract Internet users for commercial gain by creating a likelihood of confusion with the complainant’s trademark. The Policy does not require that each of these factors must be present for bad faith to be found, only that the presence of one or more of such circumstances will be evidence of the registration and use of a domain name in bad faith.
Complainant points to the fact that the postal address for the Contested Domain Name corresponds with the registrant address for numerous other domain names, including many of which have been found to be registered in bad faith with no legitimate interest. To prove its point, Complainant cited to several cases. See Gruner + Jahr Printing & Publishing Co. v. Global Media Consulting, WIPO Case No. D2000-1395; Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833; Deluxe Corporation v. Dallas Internet, Case No. FA105216 (National Arbitration Forum); Bloomberg L.P. v. Future Movie Name, Case No. FA139664 (National Arbitration Forum). The Panel finds this evidence to be persuasive. In addition, Complainant offers evidence of an archived version of a website at “www.regencyh” indicating an affiliation between the Contested Domain Name and National Promotions, Inc., a business that has been found to traffic in domain names. See Chanel, Inc. v. Mike Torres d/b/a National Promotions, Inc., WIPO Case No. D2000-1833. Further, the January�8,�2003,�exemplar of the Contested Domain Name website submitted by Complainant also indicates an affiliation between the Contested Domain Name and National Promotions, Inc.
It does appear that Respondent is involved in the business of registering domain names with the intent to resell them for a profit. If the Contested Domain Name were a generic term such as “guitars,” evidence to this effect would be insufficient to demonstrate bad faith registration and use. In the present case, it appears that the Contested Domain Name concerns a coined or suggestive term which serves as the source indicator not only of Complainant’s business, but also of several other home building businesses (Respondent proffered evidence of several “Regency” home building businesses worldwide). There is no evidence that Respondent registered the Contested Domain Name with the intent of specifically capitalizing on Complainant’s trademark interests, or even that Respondent was aware of Complainant’s existence when it registered the Contested Domain Name in 1999. Further, Complainant provided no evidence, other than the assertions recited in its own demand letter to Respondent, that Respondent attempted to sell Complainant the Contested Domain Name.
The most reasonable inferences to draw from the evidence are that: (i) Respondent itself had no plans to use the Contested Domain Name for commercial use in conjunction with a home building business, (ii) there were one or more numerous “Regency” home builders in the marketplace when Respondent acquired the Contested Domain Name; and (iii) Respondent acquired the Contested Domain Name for the purpose of selling it at a profit to any of the “Regency” home builders, including without limitation Complainant.
The Panel, therefore, finds that Respondent registered a domain name in order to prevent an owner of a trademark or service mark from obtaining that mark in a corresponding domain name. Considering the evidence that Respondent has engaged in a pattern of such conduct, under the guidance of paragraph 4(b)(ii), the Panel finds that Respondent registered the Contested Domain Name in bad faith. The Panel concludes that Complainant has proved the third and final element set forth in paragraph 4(a)(iii) of the Policy, that the domain name was registered and is being used in bad faith.
7. Conclusions and Decision
The evidence, submissions of the parties, the Policy, the Rules, and the Supplemental Rules, in addition to guidance provided by the laws of the United States compel the Panel to conclude and decide that (i) the Contested Domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in the Contested Domain Name; and (iii) the Contested Domain Name was registered and is being used in bad faith by Respondent.
In accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Steven Auvil
Sole Panelist
Dated: July 28, 2004
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