The Complainant is Hound Ears Club, Inc. of Boone, North Carolina, United States of America (“United States”), represented by Bell, Davis & Pitt, P.A., United States.
The Respondent is Dean Eisenberg of Blowing Rock, North Carolina, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2018, 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 August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Response was filed with the Center on August 30, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on September 17, 2018. 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 since 1964 has operated the Hound Ears Club in Boone, North Carolina. In addition to offering amenities such as dining, golf, tennis, and swimming at this 750 acre mountain club, the Complainant also provides real estate agency services including management and rental of vacation homes. The Complainant is the owner of a United States trademark registration for the mark HOUND EARS CLUB, U.S. Reg. No. 5170275, applied for on August 5, 2016, and registered on March 28, 2017, for use with such services. The Complainant has disclaimed the exclusive right to use “Club” apart from the mark as shown. The Complainant also asserts unregistered rights in the mark based on continuous use in commerce since December 31, 1964.
The Respondent registered the disputed domain name on November 19, 2013. The Respondent’s spouse, Shanaaz Eisenberg, is a licensed realtor and owner of Elite Mountain Properties, Ltd. (“Elite Mountain”), located in Blowing Rock, North Carolina. The disputed domain name has been used with the Respondent’s Elite Mountain website (“Respondent’s website”).1
The Complainant, contending that the Respondent was using the disputed domain name in violation of ethical rules promulgated by the High Country Association of REALTORS®, Inc. (“the Association”),2 sent a demand letter to the Respondent. The Respondent replied, disputing the Complainant’s allegations. Subsequently, the Association issued a warning letter delivered to the Respondent by email on October 25, 2017. The Complainant thereafter commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant submits that the dispute domain name is identical to the Complainant’s HOUND EARS CLUB mark, in which the Complainant asserts rights based on the registration and use in commerce since 1964. The Complainant acknowledges that it did not have registration rights in the mark at the time the Respondent registered the disputed domain name, but asserts through long and continuous use, advertising, media attention and public recognition, that the mark has become a distinctive identifier of the Complainant’s goods and services. The Complainant thus submits it had acquired common law rights in the mark long before the Respondent registered the disputed domain name, and the Respondent when registering the disputed domain name would have been aware of the Complainant’s rights in the HOUND EARS CLUB mark.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent has not been licensed or otherwise authorized to use the Complainant’s HOUND EARS CLUB mark, and that the Respondent has not been commonly known by the disputed domain name. According to the Complainant, the Respondent’s use of the disputed domain name to divert Internet traffic to the Respondent’s website demonstrates that the Respondent has neither used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services or made a legitimate or noncommercial fair use of the dispute domain name. The Complainant asserts that the Respondent intentionally is trading on the fame of the Complainant’s HOUND EARS CLUB mark.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent is a direct competitor with respect to real estate agency services and was well aware of the Complainant’s use of its HOUND EARS CLUB mark when registering the disputed domain name. According to the Complainant, the Respondent registered the disputed domain name in order to divert Internet traffic to the Respondent’s website, in order to exploit and profit from the creation of a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the Respondent’s real estate agency services. The Complainant maintains that the disclaimer added to the Respondent’s website cannot cure such bad faith. B. Respondent
The Respondent represents that Shanaaz Eisenberg has lived in the Hound Ears area since 1994 and has been a licensed realtor since 1997. The Respondent submits that “Hound Ears” (or “Hounds Ears Rocks”) is the name of a geographical location that became well known long before the Complainant founded its Hound Ears Club. The Respondent thus asserts that the Complainant cannot assert enforceable trademark rights.
The Respondent claims rights or legitimate interests in the disputed domain name. The Respondent makes a comparison to a reseller of trademarked products and services and submits that the disputed domain name is being used in connection with a bona fide offering of real estate services. According to the Respondent, a legitimate noncommercial or fair use of the disputed domain name featuring a Hounds Ears information and forum page will soon be launched, and the Respondent asserts that the use of the disputed domain name with a link to the Hounds Ears Bouldering competitions also constitutes a fair use of the disputed domain name.
The Respondent calls attention to the disclaimer on the Respondent’s website.3 The Respondent contends that the Complainant has submitted a doctored copy of the Respondent’s website, falsely attempting to create confusion to obscure the Respondent’s website disclaimer. The Respondent contends that the disputed domain name was legitimately used prior to the filing of the Complaint. The Respondent further asserts that a legitimate noncommercial use of another’s mark can be made for purposes of criticism and submits that even libelous criticism does not constitute tarnishment prohibited under the Policy.
The Respondent denies that the disputed domain name has been registered and used in bad faith. The Respondent notes that the disputed domain name was registered at least several years prior to the Complainant’s registration of its HOUND EARS CLUB mark. The Respondent disputes the credibility of the claims presented by the Complainant to the Association, suggesting that the Complainant’s true intent was to disrupt the business of the Respondent, who is a direct competitor of the Complainant. According to the Respondent, the Association did not find the Complainant’s charges persuasive or else the Association would have issued more than a warning. 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 finds that the disputed domain name is identical to the Complainant’s HOUND EARS CLUB mark, in which the Complainant has established rights. In considering identity and confusing similarity, the first element of the Policy serves essentially as a standing requirement.4 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.5 Top-Level Domains (“TLDs”) generally are disregarded in determining identity or confusing similarity under paragraph 4(a)(i) of the Policy.6 Given that the Respondent is a direct competitor of the Complainant, the intentional registration and use of a domain name that is identical to the Complainant’s mark appears to reflect targeting of the Complainant’s mark.7
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.8
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, the burden of production shifts 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 use the Complainant’s HOUND EARS CLUB mark. The Respondent is a direct competitor of the Complainant. The disputed domain name is identical to the Complainant’s mark, and the Respondent has targeted the Complainant, using the disputed domain name to divert Internet users to the Respondent’s 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 disputed 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 it 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.
Having regard to all of the relevant circumstances in this case, he Panel concludes that the Respondent in all likelihood was aware of the Complainant’s use of HOUND EARS CLUB as a source indicator when registering the disputed domain name. The Respondent maintains, however, that the disputed domain name was registered solely because it is descriptive of a geographic area where the Respondent’s real estate business is focused.
UDRP panels generally have held that where a respondent registers a domain name consisting of common or descriptive terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
There appears to be no disagreement that “Hound Ears” is a name given to a rock formation in the region where the Complainant’s “mountain club” is located. However, the Complainant’s HOUND EARS CLUB mark was registered by the United States Patent and Trademark Office (“USPTO”) under Section 1(a) of the Lanham Act as distinctive in relation to the goods and services offered under the mark. Had the USPTO considered the Complainant’s mark to be primarily geographically descriptive, registration would have been available only under Section 2(f) of the Lanham Act.
The Panel concludes that the Respondent more likely than not registered the disputed domain name based on its trademark value rather than a good faith belief that the disputed domain name’s value derived from any generic or descriptive qualities. As noted earlier, the Complainant and the Respondent compete with each other in the provision of real estate services. The Complainant has traded under the name Hound Ears Club since 1964. The USPTO when registering the Complainant’s HOUND EARS CLUB mark did not deem the mark to be geographically descriptive.
The Respondent has used the disputed domain name to target the Complainant’s mark, and as such the Respondent’s website could easily convey to Internet users the impression that the Respondent’s website is affiliated with, sponsored, or endorsed by the Complainant.9 The Respondent’s website disclaimer, stating that “HoundEarsC is owned and operated by Shanaaz Eisenberg and Elite Mountain Properties LTD,” does not in the Panel’s view mitigate the likelihood of confusion resulting from the Respondent’s use of the disputed domain name.
The Respondent’s claim to be making a fair use of the disputed domain name relying on Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 (hereinafter “Oki Data”) is misplaced. Fundamentally, a respondent’s use of a domain will not be considered “fair” if it falsely suggests affiliation with the trademark owner. Further, UDPR panels generally have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. See WIPO Overview 3.0, sections 2.5 and 2.5.1. Similarly, an overarching principle of the Oki Data approach is that a use of a domain name cannot be “fair” if it suggests a non-existent affiliation with the trademark owner; nor can a use be “fair” if it is pretextual. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick,WIPO Case No. D2014-1359; Project Management Institute v. CMN.com,WIPO Case No. D2013-2035.
Having regard to the relevant circumstances in this case, the Panel finds that the Respondent’s use of the disputed domain name does not constitute use in connection with a bona fide offering of goods or services within the contemplation of paragraph 4(c)(i) of the Policy. Nor, in light of the foregoing, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s marks and has not been commonly known by the disputed domain name within the contemplation of paragraph 4(c)(ii) of the Policy.
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 concludes 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 Respondent registered the disputed domain name in order to exploit or otherwise capitalize on the Complainant’s rights in its HOUND EARS CLUB mark to drive traffic to the Respondent’s website. See WIPO Overview 3.0, section 3.8.2.
In the attendant circumstances of this case, the Panel considers that the Respondent has intentionally attempted for commercial gain to attract Internet users to the Respondent’s website 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 products and services offered thereon. The Respondent registered and is using the disputed domain name in bad faith. 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: October 17, 2018
1 While Dean Eisenberg is the WhoIs registrant of the disputed domain name and the sole named Respondent, the Panel’s reference to “Respondent” also includes Shanaaz Eisenberg unless otherwise indicated.
2 Article 12 of the Association’s rules proscribe a realtor’s deceptive use of metatags, keywords, other devices and methods to direct, drive, or divert Internet traffic, and using or registering a domain name that presents a less than true picture.
3 The disclaimer is located below the copyright legend and states as follows: “HoundEarsC is owned and operated by Shanaaz Eisenberg and Elite Mountain Properties LTD. We are NOT affiliated with the club and our new development homes being built in Hound Ears is an Eisenberg business venture.”
4 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. Additionally, the UDRP does not extend protection to geographical terms used only in their ordinary geographical sense. Unless registered as a trademark, such geographical terms do not provide standing to file a UDRP case. A geographical term registered as a trademark satisfies the standing requirement under the first element of the Policy. See WIPO Overview 3.0, section 1.6.
5 Id. When the relevant trademark is recognizable in the disputed domain name, the domain name normally will be considered confusingly similar to the mark for purposes of paragraph 4(a)(i) of the Policy.
6 See WIPO Overview 3.0, section 1.11.2 and cases cited therein.
7 See WIPO Overview 3.0, section 1.15.
8 See WIPO Overview 3.0, section 1.1.3 and cases cited therein.
9 The targeting of the Complainant’s mark also provides additional support for the Complainant’s assertion of the mark having achieved significance as a source indicator. See WIPO Overview 3.0, section 1.3.
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