The Complainant is Mark Guagliardo of Makawao, Hawaii, United States of America (“U.S.” or “United States”), represented by Alston Hunt Floyd & Ing, United States.
The Respondent is Eric Wu a/k/a “Mark Guagliardo” of Las Vegas, Nevada, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Omnis Network, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2017. On October 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on November 4, 2017.
The Center verified that the Complaint together with the amended 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 November 7, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2017.
The Center appointed William R. Towns as the sole panelist in this matter on December 8, 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.
On December 15, 2017, the Panel issued an Administrative Procedural Order (“Order”) inviting supplemental submissions from both Parties addressing the Complainant’s assertion of unregistered or common law trademark rights in his personal name. Consistent with the Panel’s Order, the Complainant filed a supplemental submission on December 21, 2017, and the Respondent filed a supplemental submission on December 27, 2017. In view of the foregoing, the date for the Panel to submit its decision to the Center was extended to January 10, 2018. 4. Factual Background
The Complainant is a real estate agent residing in Makawao, Hawaii. The Respondent 1 has provided a residential address in Las Vegas, Nevada.
According to the Registrar, the disputed domain name was registered by Jeffrey Samuels (“Samuels”) on March 30, 2016. The Complainant and Samuels are direct competitors. The Complainant upon learning of Samuels’ registration of the disputed domain name submitted a grievance to the Honolulu Board of Realtors. On April 17, 2017, an arbitration panel designated by the Professional Standards & Arbitration Committee of the Honolulu Board of Realtors (“PSAC”) issued a decision ordering Samuels to release the disputed domain name within 30 days.
The Registrar in response to the Center’s Request for Registrar Verification indicated that the “the original owner”, i.e., Samuels, transferred the disputed domain name to “a new user with the name Eric Wu” on April 25, 2017. However, prior to transferring the disputed domain name to a “new user”, Samuels engaged the Registrar’s privacy protection service, “Guarded Services”. The relevant WhoIs records indicate, and the Registrar has confirmed, that the WhoIs information for the disputed domain name was not updated by the “new user” until July 19, 2017, after the Registrar advised Samuels that the disputed domain name would be suspended by ICANN unless updated WhoIs information was provided within five days. The updated contact information in the WhoIs, once provided to the Registrar, remained shielded by the Registrar’s privacy service.
On October 5, 2017, the Complainant’s representative sent a demand letter by email to the Registrar and to the Registrar’s privacy service. As noted above, the Complaint was filed with the Center on October 25, 2017. The Registrar, when responding to the Center’s Request for Registrar Verification on October 26, 2017, stated that the disputed domain had been updated by Eric Wu on October 18, 2017, to show “Mark Guagliardo” as the registrant. A subsequent WhoIs report from “” indicates the disputed domain name was updated on October 26, 2017, the same day the Registrar responded to the Center’s request for registrar verification. Other than the change of the registrant name to “Mark Guagliardo”, the WhoIs data for the disputed domain name, i.e., the contact information, is the same as the WhoIs data previously provided by the Registrar for “Eric Wu”. 5. Parties’ Contentions A. Complainant
According to the Complainant, the disputed domain name was initially registered by Samuels. The Complainant states that he filed an ethics complaint with the Honolulu Board of Realtors to demand the transfer of the disputed domain name, and that a PSAC arbitration panel ordered Samuels to “release the ownership” of the disputed domain name within 30 days and submit proof of same to the Honolulu Board of Realtors.
The Complainant maintains that Samuels failed to comply with the order for three months, at which time Samuels transferred the disputed domain name to the Respondent. The Complainant maintains that shortly thereafter the disputed domain name was redirected to a State of Hawaii Sex Offender website, which was captured on video. The Complainant has submitted screen shots of the video with the Complaint.
The Complainant submits that on October 5, 2017, an email was sent to the Respondent demanding that the Respondent transfer the disputed domain to the Complainant, to which there was no response. The Complainant further states that on November 1, 2017, he sent the Respondent “Mark Guagliardo” an email demanding transfer of the disputed domain name, to which no response was received. The Complainant further contends that the Registrar did not change the registrant of the disputed domain name to “Mark Guagliardo” until October 26, 2017, one day after the filing of the Complainant.
The Complainant asserts that the disputed domain name is identical to the Complainant’s MARK GUAGLIARDO trademark. The Complainant asserts trademark rights in a Hawaii state trademark registration of MARK GUAGLIARDO for use with real estate sales and marketing services. The Complainant also submits a sworn declaration in support of his assertion of unregistered or common law trademark rights in his personal name. The Complainant maintains that he has served as a real estate professional in Hawaii since 2013, using his personal name as an indicator of source for his real estate sales and marketing services. The Complainant asserts that he is one of only three persons in the United States named “Mark Guagliardo”, making his name unique, and maintains that he has expended substantial time, money and energy promoting his services provided under his personal name. The Complainant represents that he has sold over USD 65,000,000 in real estate under the name MARK GUAGLIARDO and submits search engine results of the use of his personal name and samples of his business cards.
The Complainant maintains the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the disputed domain name is not being used with an active website, and otherwise has been used only to harass the Complainant. The Complainant contends there is no evidence that the Respondent has been commonly known by the disputed domain name, and asserts that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent has no relationship with the Complainant, and that the Respondent upon gaining access to the disputed domain name redirected it to a sex offender website. The Complainant argues that the Respondent registered the disputed domain name in bad faith to disrupt the Complainant’s business and tarnish the Complainant’s reputation. The Complainant contends there is no plausible actual or contemplated use of the disputed domain name by the Respondent that would not constitute passing off or infringement of the Complainant’s trademark rights. B. Respondent
The Respondent did not formally reply to the Complaint, and the Center notified the Respondent’s default on November 29, 2017. The Panel when issuing its Order invited the Respondent to provide a supplemental submission, which the Respondent did. The sole Respondent listed in the caption of the Respondent’s supplemental submission is “Eric Wu,” whose sole signature appears on the Respondent’s supplemental submission and a supporting declaration.
The Respondent argues that the Complainant is only one of over 10,000 real estate professionals in the State of Hawaii, and that since being licensed the Complainant has not used his personal name as an identifier of source for real estate and marketing services. According to the Respondent, there is nothing unique about the Complainant’s name, as there are 732 individuals in the U.S. with Guagliardo as a last name. The Respondent contends that the Complainant does not use his personal name to promote or advertise his personal real estate services, and promotes only his company names.
The Respondent in particular refers to Hawaii Flat Fee Real Estate, which according to the Respondent is a very low producing company formed by the Complainant in 2015. The Respondent submits that the Complainant has spent no money in promotion of the Complainant’s personal name in connection with any services provided Hawaii, instead expending substantial time, money, and energy promoting his services under the names “Hawaii Flat Fee” and “Hawaii Flat Fee Real Estate”. According to the Respondent, one would have to be very specific in using the name “Mark Guagliardo” to generate any substantial results in a Google search.
The Respondent maintains that the Complainant currently has over 700 domain names registered in his name, and contends the Complainant is in violation of the U.S. Anticybersquatting Consumer Protection Act. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark rights in MARK GUAGLIARDO for purposes of paragraph 4(a)(i) of the Policy. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy has been held to encompass registered marks as well as unregistered or common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
The Complainant asserts trademark rights in his personal name based on a Hawaii state trademark registration. When considering standing under the Policy, UDRP panels tend to carefully review certain types of automatic/unexamined registered trademarks such as U.S. state registrations. Such automatic or unexamined trademark registrations (as opposed to U.S. federal registrations) generally are not accorded the same deference and may not on their own satisfy the UDRP’s “rights in a mark” standing test. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions Third Edition (“WIPO Overview 3.0”), section 1.2.2.
The Complainant’s Hawaii state trademark registration appears to have been granted on the same day the application was made, October 6, 2017. As such it appears that little or no substantive examination could have taken place. However, a complainant may demonstrate unregistered or common law trademark rights in his or her personal name when as a result of continuous and substantially exclusive use in commerce it comes to be recognized by the public as a distinctive identifier of the complainant’s goods or services. See WIPO Overview 3.0, section 1.5.2. Relevant evidence demonstrating such acquired distinctiveness (or “secondary meaning”) includes a range of factors such as (i) the duration and use of the mark; (ii) the amount of sales under the mark; (iii) the nature and extent of advertising using the mark; (iv) the degree of actual public recognition; and (v) consumer surveys. See WIPO Overview 3.0, section 1.3 and cases cited therein.
The Panel finds that the Complainant has demonstrated common law rights in MARK GUAGLIARDO under U.S. trademark law principles. The record reflects the Complainant’s use of his personal name with his real estate practice since as early as April 2013. There is evidence that the Complainant has advertised and promoted his real estate services using his personal name on the Internet. Further, the Complainant in a sworn declaration has attested to real estate sales of over USD 65,000,000.
In view of the foregoing, the Panel concludes a sufficient showing has been made that a relevant segment of the public recognizes MARK GUAGLIARDO as a source identifier for the Complainant’s real estate services. The Respondent has come forward with no persuasive evidence to the contrary. The Respondent’s declaration is wholly comprised of conclusory statements; nowhere in the record is there any indication that the Respondent has personal knowledge of any relevant facts. The Respondent’s targeting of the Complainant, as discussed further below, provides further support for the Complainant’s assertion that the MARK GUAGLIARDO mark has achieved significance as a source identifier. See WIPO Overview 3.0, section 1.3. The Panel further notes that common law protection generally is recognized in connection with the tort of passing off. See WIPO Overview 3.0, section 1.3 (UDRP affords protection in civil law jurisdictions equivalent to trademark protection under the tort of passing off).
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the MARK GUAGLIARDO mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement. 2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s mark is clearly recognizable in the disputed domain name.3 Top-Level Domains (“TLD”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD. 4
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to register or use the Complainant’s MARK GUIGLIARDO mark. The Respondent notwithstanding has registered the disputed domain name, which is identical to the Complainant’s mark, and thereafter the Respondent appears to have redirected the disputed domain name to the State of Hawaii Sex Offender website.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent 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.
The Respondent has not come forward with any evidence of rights or legitimate interests in the disputed domain name. In the absence of any explanation from the Respondent, the Panel finds that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy, and that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel finds that the disputed domain name was transferred from Samuels to the Respondent, registered by the Respondent in bad faith and used in bad faith for the purpose of disrupting the Complainant’s business. The Respondent beyond question targeted the Complainant’s mark. Internet visitors expecting to arrive at the Complainant’s website instead were redirected by the Respondent to the State of Hawaii Sex Offender website. Having regard for the totality of circumstances in the record, the Panel considers it more likely than not that the Respondent has been complicit with Samuels in the abusive bad faith practice of cyberflight. The Panel further considers that the Respondent more likely than not has been complicit with Samuels in the bad faith use of a privacy protection service in an attempt to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062; Sermo, Inc. v. CatalystMD, LLC,WIPO Case No. D2008-0647.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: January 10, 2018
1 After reviewing the record in this case, the Panel requested the Registrar to make available all WhoIs data obtained by the Registrar in connection with the registrations or transfers of the disputed domain name. The requested information provided by the Registrar reveals that the relevant WhoIs data – apart from the name change in the WhoIs data to “Mark Guagliardo” – is identical to the WhoIs data provided for “Eric Wu” on July 19, 2017. The Panel further notes that “Eric Wu” is the sole Respondent identified in the Respondent’s supplemental submission. There is no claim made that the Complainant is the current holder of the disputed domain name. In view of this, the Panel concludes that “Mark Guagliardo” should not be considered a respondent in this case. The “Respondent” as used herein means “Eric Wu” unless otherwise indicated.
2 See WIPO Overview 3.0, section 1.7.
3 See WIPO Overview 3.0, section 1.7 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4 The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy. See WIPO Overview 3.0, section 1.11 and cases cited therein.
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