Complainant is Irvine Management Company of Newport Beach, California, United States of America (“United States” or “U.S.”), represented by Dentons US LLP, United States.
Respondent is Oneandone Private Registration, 1&1 Internet Inc of Chesterbrook, Pennsylvania, United States / Bernie Goldmann of Irvine, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2019. On February 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 10, 2019, 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 Complainant on February 11, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 13, 2019.
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 Respondent of the Complaint, and the proceedings commenced on February 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 6, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 8, 2019.
The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on March 13, 2019. 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
Complainant is the owner of Irvine Management Company, a privately held real estate investment company, operating The Irvine Company, and Irvine Company Apartment Communities, and managing 129 apartment communities with thousands of residential rental units in 21 California cities.
Complainant is the owner of valid and subsisting registered trademarks in the United States that contain the term “Irvine Company” including, for example, U.S. registration no. 2,377,289 filed on June 22, 1999, and registered on August 15, 2000 for the word mark THE IRVINE COMPANY in class 36 and 37.
Complainant’s use of THE IRVINE COMPANY mark pre-dates the registration of the disputed domain name, , which occurred on December 5, 2018.
At the time of the initial filing of the Complaint, the disputed domain name resolved to a website that advertised a referral program for Irvine Company Apartment Communities and further contained third-party pay-per-click advertising links relating to marijuana, pornography, TV boxes, and credit repair services. At the time of the amended Complaint, the disputed domain name resolved to an “under construction” page that states “Get Ready. . . Something Really Cool Is Coming Soon.” 5. Parties’ Contentions A. Complainant
Complainant asserts that it owns valid and enforceable rights in THE IRVINE COMPANY marks in connection with real estate developments in the United States, including residential communities, retail centers, office properties and resort developments. Complainant asserts it offers residential apartments through several websites.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s registered trademarks encompassing a variation of THE IRVINE COMPANY, first used in 1960, long before the disputed domain name was created. Complainant contends its registered trademarks are incontestable and well known in real estate and apartment community services. Complainant further asserts the disputed domain name fully incorporates the “Irvine Company” components of its trademarks with the addition of generic words “apartment” and “referral” following these components of the trademark. Complainant further contends that the addition of these terms only strengthen the association between Complainant and the disputed domain name given the nature of Complainant’s goods and services.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name, as Respondent is not, and never was, a licensee or business associate of Complainant or its affiliate businesses. Complainant asserts that the apartment referral services offered through the disputed domain name are similar to the services offered by Complainant. Complainant asserts the disputed domain name further links to third party websites including marijuana, pornography, TV boxes, credit repair, and other products and services, while collecting personal information from users. Complainant contends Respondent has no interest in THE IRVINE COMPANY mark other than to directly or indirectly reap commercial gain by offering links and attracting Internet users to its competing website and third party sites offering sexually explicit, pornographic, or marijuana delivery, which also tarnish Complainant’s trademark and reputation. Therefore, Complainant asserts Respondent’s use of the disputed domain name for its purported referral services is competitive to Complainant’s services and improperly trades on Complainant’s substantial goodwill by making false associations as to source, sponsorship, affiliation, or endorsement of the content on the disputed domain name with Complainant, creating a likelihood of confusion.
Complainant contends the disputed domain name was registered and is being used in bad faith to mislead and confuse consumers and potential residents of Complainant’s establishments. Complainant further asserts the general public is likely to falsely believe that Complainant and Respondent are in some way associated given Respondent’s use of the disputed domain name. Complainant argues the confusing similarity of the disputed domain name has misdirected consumers to Respondent’s webpage, and Respondent uses the disputed domain name to capture traffic from potential residents seeking Complainant’s services. Complainant asserts that the disputed domain name offers third party sites for marijuana, TV boxes, pornography, credit repair, and other products and services, while collecting personal information from users, which also demonstrates Respondent’s use of the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s trademarks. Complainant further asserts the disputed domain name purports to offer a “Referral Program Irvine Company Apartment Communities,” which incorporates the name of Complainant’s business and directly competes with services offered by Complainant. Complainant asserts Respondent is aware of Complainant’s trademarks and business operations because Respondent is a resident of an apartment community owned by Complainant. Complainant contends Respondent is or should be aware of THE IRVINE COMPANY mark because the brand is long standing and well known, and even if Respondent is not aware, was placed on constructive notice through Complainant’s federal trademark registrations. Complainant asserts Respondent’s only purpose is to misdirect consumers for commercial gain from consumers who are looking for Complainant’s website and services. Complainant asserts Respondent is using the disputed domain name in furtherance of a phishing scheme to solicit sensitive information such as names, email addresses, and telephone numbers, from individuals who are looking for Complainant’s website or services. Complainant therefore asserts that the disputed domain name has been registered and used in bad faith.
Complainant further contends that the mere placement of a disclaimer on the website located at the disputed domain name cannot dispel the impression created by the disputed domain name that Respondent is somehow associated with, sponsored by, affiliated with, or otherwise permitted to operate a competing service to that of Complainant. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed 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 respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:
“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?
Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed: a respondent’s default is not necessarily an admission that the complainant’s claims are true.”
Thus, although in this case Respondent has failed to respond to the Complaint, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD,WIPO Case No. D2006-0340. A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. See WIPO Overview 3.0, section 1.2.1. Complainant provided evidence of ownership of THE IRVINE COMPANY trademark and related marks, which have been registered since August 15, 2000, well before Respondent registered the disputed domain name. With Complainant’s rights in THE IRVINE COMPANY mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain (“gTLD”) in which it is registered, in this case, “.com”) is identical or confusingly similar to Complainant’s mark. See, e.g., B&H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross,WIPO Case No. D2010-0842.
Here, the disputed domain name is confusingly similar to Complainant’s THE IRVINE COMPANY mark, because the substantive components of the mark, disregarding the article “the,” is fully incorporated into the disputed domain name at the second level and the addition of the descriptive terms “apartment” and “referral” appended to the mark does not prevent a finding of confusing similarity. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its right in THE IRVINE COMPANY mark and in showing that the disputed domain name is identical or confusingly similar to this mark. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, Complainant must make at least a prima facie showing that Respondent possesses no rights or legitimate interests in the disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International,WIPO Case No. D2008-1393. Once Complainant makes such a prima facie showing, the burden of production shifts to Respondent, though the burden of proof always remains on Complainant. If Respondent fails to come forward with evidence showing rights or legitimate interests, Complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and THE IRVINE COMPANY trademark, and does not have any rights or legitimate interests in the disputed domain name. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the evidence demonstrates that Respondent used the disputed domain name to associate itself with Complainant, offer directly competing services, contact or attempt to contact Complainant’s customers or prospective customers in the hopes of profiting from Complainant’s services including apartment referral and new tenant incentives, and/or to phish for personal information of Complainant’s customers or prospective customers. See WIPO Overview 3.0, sections 2.13.1; 2.13.2 (“Panels have categorically held that the use of a domain name for illegal activity (e.g.,. . . phishing, . . . impersonating/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent . . . .”).
In addition, Respondent’s inclusion on its website of various pay-per-click commercial advertising content, fails to qualify as bona fide offering of goods or services or legitimate noncommercial or fair use. See, e.g., Richemont International SA v. Turvill Consultants,WIPO Case No. D2014-0862 (finding pay-per-click advertisement websites and advertised links to products not to be a bona fide or legitimate use).
While the website contained a disclaimer stating, “[W]e are not connected to or in any other way affiliated with IRVINE COMPANY or, IRVINE COMPANY apartment or The Irvine Company LLC”, the disputed domain name effectively impersonates or suggests sponsorship or endorsement by Complainant. See WIPO Overview 3.0, section 2.5.1.
Furthermore, the current use of the disputed domain name in connection with a parked page does not constitute a bona fide offering of goods or services or a legitimate noncommercial fair use. See Playboy Enterprises International, Inc. v. Tom Baert,WIPO Case No. D2007-0968 (finding a site that is “under construction” does not constitute noncommercial fair use).
Respondent failed to submit any evidence demonstrating a right or legitimate interest in the disputed domain name, and therefore Complainant has met its burden of establishing that Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Panel finds that Respondent registered and used the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
This Panel finds that Respondent was aware of Complainant’s trademark rights when it registered the disputed domain name, given that: Respondent is a resident of one of Complainant’s residential communities, Respondent used the disputed domain name for services specifically referencing Complainant, Respondent used a disclaimer acknowledging the possible association with Complainant, and Respondent registered the disputed domain name incorporating Complainant’s trademark long after Complainant established rights in the mark and had established extensive goodwill particularly in California where Complainant and Respondent both reside. See WIPO Overview 3.0, section 3.2.1; see also e.g., TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited,WIPO Case No. D2016-1973.
The nature of the disputed domain name is an additional factor to be taken into account when assessing whether the registration of the disputed domain name was in bad faith. In the circumstances of the case, the addition of the descriptive terms “apartment” and “referral” appended to the mark, which relate directly to Complainant’s business, only serve to enhance the likelihood of confusion between the disputed domain name and Complainant’s mark. See section 3.2 of the WIPO Overview 3.0. The presence of a disclaimer at the bottom of the site does not cure a claim of bad faith registration and use. See, e.g., Wink NYC, Inc. v. WINK New York, INC.,WIPO Case No. D2008-1257.
Respondent’s use of the disputed domain name to maintain a website through which it offered a referral service tied to Complainant’s residential apartments, and which directly competes with Complainant’s own services including referral and new tenant incentives programs, constitutes use of the disputed domain name primarily for the purpose of disrupting the business of a competitor, within the meaning of Policy paragraph 4(b)(iii).
In addition, Respondent’s use of the disputed domain name to maintain a website through which it offered a commercial referral service tied to Complainant’s residential apartments, as well as the sponsored
pay-per-click links to third-party content available on the website, indicate that Respondent obtained the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website, within the meaning of Policy paragraph 4(b)(iv). See, e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. G, Inc.,WIPO Case No. D2017-0246.
Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith and Complainant succeeds under the third element of paragraph 4(b) 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 Complainant.
Brian J. Winterfeldt
Sole Panelist
Date: March 27, 2019
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