Complainant is Towers on the Park Condominium, of New York, New York, United States of America, represented by Law Offices of Anthony S. Cannatella, United States of America.
Respondent is Paul Adao of New York, New York, United States of America, represented by Booth Sweet LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2012. On May 18, 2012, the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the Domain Name. On May 18, 2012, Tucows Inc. transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on May 21, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on May 22, 2012. 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on May 25, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 14, 2012. The Response was filed with the Center on June 14, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on June 28, 2012. The Panel finds that it was properly constituted. 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.
Complainant submitted a Sur-Reply to the Response on June 25, 2012, and on June 26, 2012, Respondent submitted an e-mail objecting to the Sur-Reply to the Response. In its discretion, the Panel has considered these unsolicited materials. 4. Factual Background
Towers on the Park, is a three-building condominium complex in Manhattan, New York City, across from Central Park. Complainant is an unincorporated association that provides real estate services, namely, governing condominiums and operating residential associations. Complainant governs the Towers on the Park condominiums.
Complainant alleges that it holds common law (i.e., unregistered) trademark rights to TOWERS ON THE PARK in connection with its condominium governance activities. Complainant claims to have used this alleged mark since “at least March 2, 1988,” but no evidence of such use going back to 1988 is annexed to the Complaint.
Respondent is a resident and condominium owner within the Towers at the Park community. He asserts that he has lived at his Towers at the Park condominium since 1997. According to Complainant, Respondent is “merely a temporary owner who lives in the Condominium.” Complainant does not elaborate on this comment or give some indication of what is meant by a “temporary owner.”
Respondent claims that he and other residents have had concerns for several years about the governance of the condominium complex, including allegedly inadequate financial disclosures, failure to enforce association bylaws, and possible conflicts of interest in decisions to amend the bylaws.
Respondent registered the Domain Name on April 7, 2010, and set up a website to address issues of Towers on the Park condominium governance. Some of the content recommends that residents decline to vote for certain incumbent board members.
On March 13, 2012, Complainant’s counsel sent a cease-and-desist letter to Respondent. That letter is not annexed to the Complaint, and is referred to for the first time in Complainant’s Sur-Reply.
That same day, March 13, 2012, Complainant filed an application with the United States Patent and Trademark Office (“USPTO”) to register TOWERS ON THE PARK as a trademark.1
On May 1, 2012, Respondent declared himself a candidate for membership on the Towers on the Park board of directors. As noted above, Complainant filed its initial Complaint in this proceeding on May 17, 2012.
Respondent’s site, at the Domain Name, bears a disclaimer: “This is not an official website of Towers on the Park Condominium. It is not written by the board of directors, on site manager, or the building’s management company. It is written by me, Paul Adao, with help from friends and homeowners.” Complainant notes that this disclaimer was posted only after Respondent received the cease-and-desist letter.
Respondent denies ever having offered to sell the Domain Name. There is no allegation that Respondent derives any income from the website. However, Complainant alleges that Respondent “uses the Domain Name to attempt to attract internet users for personal gain by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.” 5. Parties’ Contentions A. Complainant
Complainant’s salient factual assertions necessary to decide this dispute are set forth above in the “Factual Background” section above, and the arguments under the elements of the Policy will be reflected in the “Discussion and Findings” section below. Complainant seeks a transfer of the Domain Name. B. Respondent
Respondent’s salient factual assertions necessary to decide this dispute are set forth above in the “Factual Background” section above, and the arguments under the elements of the Policy will be reflected in the “Discussion and Findings” section below. Respondent asserts that Complainant is improperly seeking to suppress his right to free speech and relying on nonexistent trademark rights. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel declines to rule on this element because, in view of the Panel’s ruling on other elements under the Policy, this issue is moot. For the sake of good order, however, the Panel observes that Complainant’s registered trademark rights do not yet exist, and Complainant’s common law trademark rights appear to be unsubstantiated on this record. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish his rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.
The Panel concludes, without difficulty, that Respondent is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain and without intent to tarnish Complainant’s alleged mark. The record shows that Respondent lives at the Towers on the Park condominium complex, and has lived there for 15 years. (Whether that makes him “merely temporary” is a question for another day.) His website indicates that he enjoys living there. His website also offers criticism of Complainant, and some incumbent board members in particular, and about the governance of the condominium. Criticism is not in itself tarnishment.
The Panel finds that Respondent’s use of the Domain Name to offer (and field) comments about governance of the condominium vests him with a legitimate interest under Policy paragraph 4(c)(iii). This case looks much more like a case of very local political squabbles than a clear case of cybersquatting. The Policy was not intended to respond to circumstances such as this.
The Complaint fails. C. Registered and Used in Bad Faith
There is no evidence of Respondent’s bad faith under the Policy. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Robert A. Badgley
Sole Panelist
Dated: July 12, 2012
1 On June 21, 2012, while this proceeding was pending, the USPTO issued an Office Action to Complainant, advising Complainant that it must address, among other things, the following issues in connection with its trademark application: “mark is merely descriptive.” In this vein, the USPTO’s Examining Attorney observed that “tower” refers to a building, and “park” refers to Central Park, “a massive and widely recognized public park.” This Office Action was issued four days before Complainant submitted its Sur-Reply to the Center in this proceeding.
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