The Complainants are Lennar Pacific Properties Management, Inc. and Lennar Corporation, United States of America (“United States”), both represented by Slates Harwell LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Carolina Rodrigues, Fundación Comercio Electrónico, Panama. 2. The Domain Names and Registrar
The disputed domain name On June 3, the Complainants filed two separate Complaints with the WIPO Arbitration and Mediation Center (the “Center”), in relation to the first disputed domain name, and the second disputed domain name. On June 4, 2020, the Center transmitted by email to the Registrar two requests for registrar verification in connection with each of the disputed domain names. On June 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for each of the disputed domain names which differed from the named Respondents and contact information comprised in the initial Complaints. The Center sent an email communication to the Complainants on June 8, 2020 providing the registrant and contact information disclosed by the Registrar for each of the disputed domain names and inviting the Complainants to submit an amendment to the Complaints. The Complainants filed amendents to the Complaints on June 9, 2020 and requested the consolidation of both Complaints, as the registrant information for both of the disputed domain names was identical. 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 June 12, 2020. In accordance with the Rules, paragraph 5, the due date for filing a Response was July 2, 2020. The Respondent did not submit a Response. Accordingly, the Center notified the Respondent’s default on July 8, 2020. The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on July 20, 2020. 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 Complainants in this administrative proceeding are Lennar Pacific Properties Management, Inc. (“the Complainant Lennar Pacific”) and Lennar Corporation (the “Complainant Lennar Corporation”), both Delaware corporations that render services related to real estate. The Complainant Lennar Pacific owns the following trademark registrations: Trademark Registration Number Registration Date Classes Jurisdiction LENNAR 3,108,401 June 27, 2006 35, 36, and 37 United States LENNAR 3,477,143 July 29, 2008 36 and 37 United States The Complainant Lennar Corporation owns the domain name The first disputed domain name was registered on July 29, 2019 and resolves to a web site that displays pay-per-click sponsored links related to real estate assets in Spanish, such as “Condominio” (Condominium), “Proyectos de Vivienda En” (Housing Projects In), “Diseños para Casas” (House Designs) and “Comprar Vivienda En” (Buy Homes In). The second disputed domain name was registered on July 22, 2019 and resolves to a web site that displays pay-per-click sponsored links in Spanish and English, such as “Home Warranty”, “New Homes Nearby”, and “New Construction Homes”. 5. Parties’ Contentions A. Complainants The Complainants argued the following: That the consolidation of multiple Complainants is necessary in this case because both of the Complainants have the same grievance against the Respondent. That the Complainant Lennar Pacific is the owner of federal trademark registrations for the LENNAR trademark in the United States. That the Complainant Lennar Corporation is a company that is affiliated to the Complainant Lennar Pacific, and is an authorized licensee of the LENNAR trademark. That the Complainant Lennar Corporation owns and operates the website located at “www.lennar.com.” That the Complainants have been jointly targeted by the Respondent. (i) The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights. That the Complainant Lennar Pacific is the owner of two registrations for the trademark LENNAR in the United States, which cover services related to real estate in classes 35, 36, and 37. That the Complainants have been rendering real estate management, brokerage, development, construction, and financial services under the LENNAR trademarks since 1973. That the Complainant Lennar Corporation has been one of the leading home builders in the United States since 1954, and that it presently builds and sells homes in twenty-one states of said country. That the Complainant Lennar Corporation owns and operates the domain name That the disputed domain names incorporate and use the LENNAR trademark in its entirety, with the addition of descriptive terms and phrases such as “employment” and “by the beach”. That the disputed domain names are confusingly similar to the LENNAR trademark owned by the Complainant Lennar Pacific. (ii) The Respondent has no rights or legitimate interests in the disputed domain names. That the Complainants have not located any evidence of the Respondent’s use, or demonstrable preparations to use of the disputed domain names in connection with a bona fide offering of goods or services. That the Respondent has not been commonly known by the disputed domain names and has acquired no trademark or service mark rights in the LENNAR trademark. That the Respondent is not making any legitimate, noncommercial, or fair use of the disputed domain names. That on October 31, 2019, the Complainant Lennar Corporation sent the Respondent a cease and desist letter regarding the registration and use of the disputed domain names. That the Respondent has failed to acknowledge receipt of or respond to said letter. That such conduct further reflects a lack of rights to or legitimate interests in the disputed domain names. (iii) Registration and use in bad faith. That the disputed domain names have been registered and are being used in bad faith by the Respondent. That the Respondent has registered the disputed domain names primarily for the purpose of disrupting and/or trading off the goodwill of the Complainants’ trademark and business. That the Respondent is using the disputed domain names to redirect Internet users to various third-party web sites. That the Respondent is trying to attract Internet users to the web sites to which the disputed domain names resolve, for commercial gain, by creating a likelihood of confusion with the LENNAR trademark. B. Respondent The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings The Complainants must prove that the three elements of paragraph 4(a) of the Policy have been met: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests with respect to the disputed domain names; and (iii) the disputed domain names have been registered and used in bad faith. In view of the Respondent’s failure to submit a Response, the Panel shall decide this proceeding on the basis of the Complainants’ undisputed factual allegations pursuant to paragraphs 5(e), 14(a), and 15(a) of the Rules, and shall draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules (see General Mills, Inc., v. Velgut Group Business and Intl Commerce, S.A. de C.V.,WIPO Case No. DMX2012-0013; y Encyclopaedia Britannica, Inc. v. null John Zuccarini, Country Walk,WIPO Case No. D2002-0487). A. Preliminary Issue - Consolidation The Complainants have requested the Panel to accept consolidation of their respective Complaints against the disputed domain names, alleging that: - The Complainants have the same grievance against the Respondent. - The Complainant Lennar Pacific is the owner of federal trademark registrations for the LENNAR trademark in the United States. - The Complainant Lennar Corporation is a company affiliated to the Complainant Lennar Pacific and an authorized licensee of the LENNAR trademark. - The Complainants have been jointly targeted by the Respondent. In accordance with section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” In this case, the two Complainants do have a common grievance against the Respondent, because she has registered and used the two disputed domain names into which the LENNAR trademark has been incorporated in its entirety and is targeting both Complainants. In light of the above, it would be equitable and procedurally efficient to permit the consolidation requested by the Complainants, and so it is permitted. Furthermore, on June 9, 2020, the Complainant requested consolidation of two separate Complainants against the first disputed domain name and the second disputed domain name, noting the registrant information for both of the disputed domain names was identical. Accordingly, the second disputed domain name was added to the present case prior to complaint notification, and the separate Complaint regarding only the second disputed domain name was withdrawn. See WIPO Overview 3.0, section 4.12.1. B. Identical or Confusingly Similar The Complainants have provided evidence showing that the Complainant Lennar Pacific owns registrations for the trademark LENNAR in the United States since 2006. The Panel considers that the disputed domain names are confusingly similar to the LENNAR trademark owned by the Complainant Lennar Pacific and licensed to the Complainant Lennar Corporation, as the disputed domain names include said trademark in its entirety. The incorporation of descriptive and dictionary terms and phrases such as “employment” and “by the beach” in the disputed domain names does not prevent the finding of confusing similarity with the LENNAR trademark (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale,WIPO Case No. D2005-0755; Wal-Mart Stores, Inc. v. Walsucks & Walmarket Puerto Rico,WIPO Case No. D2000-0477; and Advance Magazine Publishers Inc. v. Arena International Inc.,WIPO Case No. D2011-0203). See also, Sections 1.7 and 1.8 of the WIPO Overview 3.0 . The addition of the generic Top-Level Domain (“gTLD”) “.com” to the disputed domain names obeys a standard technical requirement in the structure of the domain name system, and therefore, it is irrelevant when assessing confusing similarity in this procedure (see Minerva SA v. Yanko,WIPO Case No. D2018-0767; Ahmanson Land Company v. Vince Curtis,WIPO Case No. D2000-0859; and Monty and Pat Roberts, Inc. v. J. Bartell,WIPO Case No. D2000-0300). The first element of the Policy has been met. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights or legitimate interests in the disputed domain name: (i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the disputed 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 (as an individual, business, or other organization) has been commonly known by the disputed domain name, even if it did no acquire trademark or service mark rights; or (iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Complainants have argued that the Respondent has no rights to, or legitimate interests in the disputed domain names. Furthermore, the Complainants have stated that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, nor is she making a legitimate, noncommercial, or fair use of the disputed domain names. Moreover, the Complainants have asserted that the Respondent has not been commonly known by the disputed domain names. None of these affirmations have been challenged by the Respondent. The first disputed domain name resolves to a web site that displays pay-per-click sponsored links related to real estate services in Spanish, such as “Condominio” (Condominium), “Proyectos de Vivienda En” (Housing Projects In), “Diseños para Casas” (House Designs), and “Comprar Vivienda En” (Buy Home In). The second disputed domain name resolves to a web site that displays pay-per-click sponsored links in Spanish and English, such as “Home Warranty”, “New Homes Nearby”, and “New Construction Homes”. The consensus view of previous Panels appointed under the Policy is that hosting a web site with pay-per-click sponsored links does not in itself confer any rights to, or legitimate interests in a domain name to a respondent, and it is not considered to be a bona fide offering of goods or services, or a legitimate, noncommercial, or fair use of the domain name itself (see Section 2.9 of the WIPO Overview 3.0; see also Archer-Daniels-Midland Company v. Wang De Bing,WIPO Case No. D2017-0363; Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344). In the present case, the Respondent’s use of the disputed domain names to host pay-per-click links that redirect Internet users to third-parties’ web sites indicates that the Respondent is unduly profiting from the Complainant Lennar Pacific’s LENNAR trademark. The Panel considers that such use cannot be deemed to have taken place in good faith, and therefore, cannot confer any rights to, or legitimate interests in the disputed domain names (see Ustream.TV, Inc. v. Vertical Axis, Inc,WIPO Case No. D2008-0598 and Fontem Holdings 4, B.V. v. J- B-, Limestar Inc.,WIPO Case No. D2016-0344). The fact that the web site to which the first disputed domain name resolves hosts pay-per-click sponsored links related to the real estate business, which is the core commercial activity of the Complainants, strongly suggests that the Respondent is acting with the intent to misleadingly divert customers looking for the Complainants and/or their services, for commercial gain (see Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302; Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474; Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415). The Respondent has not submitted any evidence proving that she is authorized to use the Complainant Lennar Pacific’s LENNAR trademark in any way, or that she is commonly known as any of the disputed domain names. For these reasons, and in the absence of any explanation from the Respondent as to why she registered these disputed domain names, the Panel considers that the Complainants have presented a prima facie case showing that the Respondent has no rights to, or legitimate interests in the disputed domain names. The second element of the Policy has been met. D. Registered and Used in Bad Faith According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith: (i) circumstances indicating that the respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain names registration to the complainants who are the owner of the trademark or service mark or to a competitor of those complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names; or (ii) the respondent has registered the disputed domain names in order to prevent the owners 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) the respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain names, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on its web site or location. The Complainant Lennar Pacific has established its rights over the LENNAR trademark since 2006, which significantly precedes the date of registration of the disputed domain names by the Respondent. The Panel notes that incorporation of the term “employment” in the first disputed domain name increases the risk of Internet user confusion, and poses a potential threat to the public, as Internet users who are looking for employment opportunities with the Complainants may be mislead and defrauded (see Accenture Global Services Limited v. Monom,WIPO Case No. D2018-0016: “the dominant part of the Domain Name is “accenture” and […] the element “career” may even add to the confusing similarity, since it is likely that Internet users are looking for information related to job and career opportunities at the Complainant”; see also Siebel Systems, Inc. v. Implementation Services Group, Inc.,WIPO Case No. D2002-1070: “the word “employment” applies necessarily to all businesses, or at least to all businesses that employ people, a category into which the Complainant easily falls. Whether or not the disputed domain name is used for this purpose, it would be entirely reasonable for anyone seeking employment with the Complainant to access the disputed domain name”). Furthermore, the term “by the beach” can also aggravate the risk of Internet user confusion, because the trademark LENNAR is associated with real estate services, and thus the incorporation of such term may suggest to Internet users that the second disputed domain name is related to beach properties, and therefore affiliated to, or endorsed by the Complainants. As discussed above, the fact that the Respondent registered the disputed domain names that include the LENNAR trademark in its entirety with the addition of the descriptive term “employment”, and the descriptive phrase “by the beach”, which may mislead Internet users, suggests that the Respondent knew about the Complainants when she registered the disputed domain names. Such conduct constitutes opportunistic bad faith registration of the disputed domain names (see Section 3.2.1 of the WIPO Overview 3.0; see also Awesome ENEL S.p.A. v. Liu Jinping,WIPO Case No. DTV2012-0005; Ipsen Pharma S.A.S. v. Admin - This Domain is for sale on Godaddy.com Escrow.com, Trnames Premium Name Services,WIPO Case No. D2018-0089). By using the disputed domain names to host pay-per-click sponsored links, the Respondent is intentionally attempting to attract Internet users to her web sites by creating a likelihood of confusion with the Complainants and the trademark LENNAR as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web sites, in accordance with paragraph 4(b)(iv) of the Policy (see adidas AG v. Domain Administrator, Fundacion Privacy Services LTD.,WIPO Case No. D2019-2431; Serta Inc. v. Charles Dawson,WIPO Case No. D2008-1474). The Respondent’s conduct suggests that she has been using the disputed domain names for commercial gain, as it is most likely that the pay-per-click scheme provides her with click through revenue. Such activity disrupts the Complainants’ business by diverting consumers away from the Complainants’ official web site and therefore, constitutes bad faith under paragraph 4(b)(iii) of the Policy (see Mobile Communication Service Inc v. Webreg, RN,WIPO Case No. D2005-1304; Royal Bank of Canada v. Chan; Fox News v. Reid; TT-Line Company Pty v. Vertical Axis, Inc.,WIPO Case No. D2007-1742). In light of the above, the third element of the Policy has been met. 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 names Kiyoshi Tsuru
Sole Panelist
Date: August 3, 2020
Full & Egal Universal Law Academy