The Complainant is Real Estate Edge, LLC of Cedar Park, Texas, United States of America (“United States”), represented by Kuehn Law, United States.
The Respondent is Rodney Campbell of Austin, Texas, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2017. On July 18, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 18, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 21, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2017. On July 21, 2017, the Respondent filed a Response to the Complaint. On August 10, 2017, the Respondent filed an amended Response to the Complaint.
The Center appointed Dennis A. Foster as the sole panelist in this matter on August 14, 2017. 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. 4. Factual Background
The Complainant is a real estate company based in the State of Texas, in the United States of America (“United States”), which has a valid service mark registration with the United States Patent and Trademark Office (“USPTO”) for the mark GREATER AUSTIN REALTY (Registration No. 3,278,561; registered on August 14, 2007).
The Respondent is the owner of the disputed domain name, , which was registered on June 7, 2011. The Respondent possesses a certificate of filing with the State of Texas (File No. 801607134; dated October 14, 2016), allowing it to operate under the assumed name “Greater Austin Realty.” 5. Parties’ Contentions A. Complainant
The Complainant obtained a USPTO service mark registration for the mark GREATER AUSTIN REALTY in connection with various real estate services. The disputed domain name, , is identical to that service mark.
The Respondent has no rights or legitimate interests in the disputed domain name. The name redirects Internet users to the Respondent’s website, upon which there is no mention of the Complainant’s protected service mark rights. Such redirection is done for the Respondent’s commercial gain and constitutes neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name. Moreover, there is no evidence that the Respondent, or any entity he owns or operates, is commonly known by the disputed domain name.
The disputed domain name was registered and is being used in bad faith. The name was registered years after the Complainant registered its identical service mark, so the Respondent had prior knowledge of the Complainant’s registration. The Respondent, operating in the same regional real estate market as the Complainant, is a competitor of the Complainant. Ergo, the Respondent registered the disputed domain name with the intent to gain commercially from confusion with respect to the Complainant’s service mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website. B. Respondent
The disputed domain name, , is not identical to the Complainant’s GREATER AUSTIN REALTY mark.
The Respondent has rights and legitimate interests in the disputed domain name as granted by the State of Texas. The Respondent has a license granted for its business “Keep Austin Weird Homes, LLC” with that state to do business under the assumed name “Greater Austin Realty”.
The Respondent is not using the disputed domain name in bad faith, but is using it as intended with respect to his realty business.
The Complainant has harassed the Respondent continually and appears to be submitting erroneous evidence in this proceeding. The website screenshot presented by the Complainant is irrelevant, and another screenshot of a website hosted by the Respondent shows clearly the use of “Greater Austin Reality” in connection with his business operations. 6. Discussion and Findings
In accordance with paragraphs 4(a)(i) - (iii) of the Policy, the Panel may rule in favor of the Complainant and grant a transfer of the disputed domain name, , provided that the Complainant can prove that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant’s presentation of clear evidence (Complaint Annex 4) that it possesses a valid USPTO service mark registration for the GREATER AUSTIN REALTY mark satisfies the requirement in Policy paragraph 4(a)(i) that the Complainant have rights in that mark. See, VKR Holding A/S v. Li Pinglong,WIPO Case No. D2016-2269 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”); and Lilly ICOS LLC v. Andrew Riegel,WIPO Case No. D2006-1088 (“The Panel finds that the Complainant’s registration with the USPTO sufficiently establishes the Complainant’s rights in the CIALIS mark.”).
Since blank spaces cannot be used in a domain name and the inclusion of a generic Top-Level Domain (“gTLD”) (i.e., “.com”) is irrelevant for comparison purposes, the Panel concludes that the disputed domain name, , is identical to the Complainant’s GREATER AUSTIN REALTY service mark. See, Victoria Beckham v. David James,WIPO Case No. D2017-0035 (finding to be identical to the VICTORIA BECKHAM mark); Intesa Sanpaolo S.p.A. v. wangguiyan,WIPO Case No. D2015-0621 (finding to be identical to the INTESA SANPAOLO BANK mark); and Scentco, Inc., Christopher Cote v. Domain Discreet Privacy Service / Vincent Poloma Pet Nutritional Research,WIPO Case No. D2014-0401 (“It is generally accepted that the addition of the top-level suffix in the domain name [e.g., ‘.com’] may be disregarded under the confusing similarity test.”).
Accordingly, the Panel rules that the Complainant has proved that the disputed domain name is identical or confusingly similar to a service mark in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Paragraph 2.1., which states in part: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name.” Prior UDRP panels have noted in this regard that, if the respondent does come forward with some allegations or evidence of rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof remaining on the complainant. See Wall-S, LLC v. Marcus Kocak / Internet Opportunity Entertainment (Sports) Limited, Sportingbet PLC,WIPO Case No. D2012-1193; and Air Products and Chemicals, Inc. v. Chongqing Acme Tech. Corp., Ltd.,WIPO Case No. D2011-0842 (“If the respondent does come forward with some allegations of evidence of relevant right or legitimate interest, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.”).
In this case, the Panel believes that the Complainant has established a prima facie case regarding this issue, as the Complainant has shown that it has rights in a service mark to which the disputed domain name is confusingly similar, and implies clearly that it has granted no license to the Respondent use that mark. As a result, the onus has been shifted to the Respondent to come forward with credible evidence that it does have rights or legitimate interests in the disputed domain name.
In rebuttal to the prima facie case, the Response suggests to the Panel that it must consider Policy paragraph 4(c)(ii), which states that a respondent may establish rights or legitimate interests in a disputed domain name by demonstrating that “the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights” in that name.
While the Complainant contends that there is no evidence that the Respondent, or any organization that he may own or operate, has been commonly known by the disputed domain name, the Respondent has asserted that his business has indeed used the assumed name “Greater Austin Realty”, and thus could be commonly known by the disputed domain name. The Respondent offers as evidence a screenshot from one of his websites that contains the phrase, “Greater Austin Realty”, as an alternate entity name (Amended Response Annex 1) to his “Keep Austin Weird Homes, LLC” business name. In addition, the Respondent presents a certificate, dated October 14, 2016 and signed by the Secretary of State for the State of Texas, that the Respondent’s business has used the assumed name, “Greater Austin Realty” (Amended Response Annex 2).
The Panel does not believe that the evidence submitted by the Respondent, particularly given the recent date of the Texas certificate, is conclusive as to the Respondent’s rights under the Policy in the disputed domain name; it is particularly noted that this is not (even) a Texas state trademark. The Panel is aware of prior Policy decisions finding that a respondent’s ownership of a trademark corresponding to a disputed domain name is not conclusive evidence of his rights in the name if acquisition of that trademark was done to avoid a UDRP proceeding regarding that name. See, Chemical Works of Gedeon Richter Plc v. Covex Farma S.L.,WIPO Case No. D2008-1379; and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”, WIPO Case No. D2000-0847. However, while a Texas certificate confers fewer presumptive rights than would a valid service mark registration, the Panel does not find that the Respondent has filed for said certificate solely to deflect potential UDRP proceedings against him. See Shutterfly, Inc. v. Shutterfly Productions,WIPO Case No. D2008-1114 (in which the panel, in denying the complaint, found that the complainant failed as to Policy paragraph 4(a)(ii), where the respondent had obtained a State of Texas registration for a brand name in 2004 and registered the confusingly similar disputed domain name in March of the same year). Instead, the Panel finds that the Respondent has made, through his presentation of screenshot and certificate evidence, a credible enough claim as to having rights or legitimate interests in the disputed domain name. As such, the Panel must review all the evidence presented in this case, because the burden of proof remains with the Complainant.
As viewed by the Panel, the Complaint does not make out a particularly strong case. The Complainant’s service mark does not appear to be especially well-known within Austin, Texas, that both the Complainant and the Respondent inhabit. Moreover, being composed of one geographical and two dictionary terms, the mark is not particularly strong on its own. Furthermore, even though it has established valid service mark rights, the Complainant has presented neither assertions nor any evidence whatsoever of the extent to which it has used the GREATER AUSTIN REALTY mark for business purposes. There is no recital or evidence of revenues, advertising costs and/or promotional material associated with the mark. Such information is critical if the Panel is to assess rights and interests in a domain name relative to such a descriptive service mark. See, AdvoCard Rechtsschutzversicherung AG v. Advocard International Limited, WIPO Case No. D2012-1384 (“The Complainant provides various evidence of the business it conducts in connection with its mark, including details of spending on advertising; customer recognition; and market share...”). Finally, the Panel must note that the Complainant’s position is weakened by the fact that it waited more than six years to seek a transfer of the disputed domain name, which is identical to its mark and bears the most common gTLD, “.com”.
In conclusion, the Panel finds that the sorting out of these rights (i.e., United States federal service mark rights as against State of Texas business certificate) is beyond the Panel’s authority under the Policy. The Policy is designed to address relatively straightforward cybersquatting claims. See, Kurt Garmaker d/b/a “Repitition Miniature Schnauzers” v. Hilde Haakensen, Axcium Design,WIPO Case No. D2015-0993 (“The Policy is designed to address clear cases of cybersquatting; it was not designed to address every type of dispute that happens to involve a domain name.”); and The T, LLC v. Jeffrey S. Poploff,WIPO Case No. D2000-1470 (“This Panel is not a general domain name court, and the Policy is not designed to adjudicate all disputes of any kind that relate in any way to domain names.”). Therefore, the Panel will not attempt to render a comprehensive judgment as to whose rights are superior in this case and concludes merely that the Complainant has failed to meet its burden of proof as to this issue. This is not to say that the Complainant may not have a claim for unfair competition or trademark infringement, but these are matters better dealt with by a court which may examine a fuller evidentiary record.
Accordingly, the Panel rules that the Complainant has failed to prove that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Because the Complainant has failed to prevail with respect to the preceding element necessary to gain redress under the Policy, the Panel will not make a determination as to whether the disputed domain name was registered and is being used in bad faith. 7. Decision
For the foregoing reasons, the Complaint is denied.
Dennis A. Foster
Sole Panelist
Date: September 5, 2017
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