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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

The Bonita Bay Group, Inc. et al. v. Total Concept, Inc.

Case No. D2003-0126

 

1. The Parties

Complainants are The Bonita Bay Group, Inc., a Florida corporation with its principal place of business located in Bonita Springs, Florida, United States of America and Bonita Bay Properties, Inc., a Florida corporation with its principal place of business located in Bonita Springs, Florida, United States of America ("Complainants" or "Bonita Bay").

Respondent is Total Concept, Inc., a Florida corporation with its principal place of business located at 4632 Vincennes Blvd., Cape Coral, Florida 33904 USA ("Respondent" or "Total Concept").

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue ("Domain Names") are:

<bonitabayrealestate.com>, <bonitabayestates.com>, <bonitabayrentals.com>, <bonitabayfsbo.com> and <bonitabaycondos.com>.

The registrar is Tucows, Inc. ("Registrar"), Toronto, Ontario, Canada.

 

3. Procedural History

On February 19, 2003, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via email. On February 21, 2003, the Center received the hardcopy of the Complaint. On February 21, 2003, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On February 21, 2003, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On February 25, 2003, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On March 20, 2003, the Center received the Response of Respondent. On March 21, 2003, Complainant submitted a Supplemental Filing.

On March 25, 2003, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

On April 2, 2003, the Respondent delivered a Supplemental Filing. On April 3, 2003, Complainant sought clarification in the form of another Supplemental Filing. The Sole Panelist has considered each of these Supplemental Filings.

 

4. Factual Background

The Complainants have provided real estate development services and golf, tennis, and country club development services to the public in southwest Florida since at least as early as 1982, and real estate brokerage services since at least as early as 1985. Bonita Bay also has provided golf equipment, apparel, and accessories to the public in connection with such real estate development and golf, tennis, and country club services since at least as early as 1985. Bonita Bay now is one of the largest real estate development and real estate brokerage service companies in the State of Florida. Bonita Bay adopted the mark BONITA BAY, and variations thereof, for such real estate development, real estate brokerage and golf, tennis, and country club services, and for such golf equipment, apparel, and accessories (collectively, the "Real Estate Goods and Services") at least twenty years ago. The Complainants have made extensive use of the BONITA BAY mark in all of its promotional and advertising materials throughout the United States via traditional promotional and advertising methods and through the Internet.

The Complainants own and manage numerous planned, gated developments located in the State of Florida. The Complainants’ flagship planned, gated development is known as Bonita Bay. Bonita Bay consists of 2,400 acres located within the city limits of the municipality of Bonita Springs, Lee County, Florida. Bonita Bay has been honored with many awards, including the national Award of Excellence from the Urban Land Institute, the Golf Digest Environmental Leader in Golf Award, and Outstanding Performance recognition from the Council for Sustainable Florida. The Complainants now employ more than 1,300 people and operate divisions that include numerous master-planned communities, a title company, a utility company, an amenities division that operates private golf clubs and marinas, and several operating businesses that support the Complainant’s core business interests.

Bonita Bay owns several federal and state trademark and service mark registrations for the BONITA BAY mark, including BONITA BAY - Federal Registration No. 2,316,837; BONITA BAY - Federal Registration No. 2,195,863; BONITA BAY - Federal Registration No. 2,201,373; BONITA BAY - Federal Registration No. 2,198,291; BONITA BAY - Federal Registration No. 2,088,806; BONITA BAY & DESIGN - Federal Registration No. 2,569,433; BONITA BAY & DESIGN - Federal Registration No. 2,561,357; THE BONITA BAY GROUP - Federal Registration No. 2,600,760; and BONITA BAY & DESIGN - Florida State Registration No. T04190 (collectively, the "BONITA BAY Marks"). All of the listed federal and state trademark/service mark registrations are owned by Bonita Bay Properties, Inc., except Federal Registration No. 2,600,760 for the mark "THE BONITA BAY GROUP," which is owned by The Bonita Bay Group, Inc.

Bonita Bay owns several domain names including the BONITA BAY Marks, namely, <bonitabay.com>, <thebonitabaygroup.com>, <bonitabayproperties.com>, <bonita-bay.com>, <bonitabayrealty.com> and <bonitabayhomes.com>.

In or about January 2003, Bonita Bay became aware that the Respondent had registered and was using the Disputed Domain Names, including (1) <bonitabayrealestate.com>, (2) <bonitabayestates.com>, (3) <bonitabayrentals.com>, (4) <bonitabaycondos.com>, and (5) <bonitabayfsbo.com>. In early January 2003, the Disputed Domain Names redirected Internet traffic to the following sites:

<bonitabayrealestate.com> redirected traffic to "www.southwestfloridarealestate.com";
<bonitabayestates.com> redirected traffic to "www.southwestfloridarealty.com";
<bonitabayrentals.com> redirected traffic to "www.southwestfloridarealty.com";
<bonitabaycondos.com> redirected traffic to "www.southwestfloridahomes.com"; and
<bonitabayfsbo.com> redirected traffic to "www.southwestfloridafsbo.com".

Such <southwestflorida> domain names will be referred to collectively herein as the "Southwest Florida Websites." The Southwest Florida Websites advertised the real estate services of a competitor of the Complainants in southwest Florida, namely, Southwest Florida Realty, Inc. All Southwest Florida Websites are owned by the Respondent, except for <southwestfloridarealty.com> and <southwestfloridahomes.com>. Information obtained via the "WhoIs" database indicates that these domain names are owned by Florida Marketing Group.

On January 8, 2003, Bonita Bay’s Director of E-Commerce and Electronic Marketing sent an email to the Respondent and Florida Marketing Group notifying the companies that the registration and use of the Disputed Domain Names violates the Anti-Cybersquatting Consumer Protection Act. In the January 8, 2003, email, the Complainant demanded that the companies cease and desist from using the Disputed Domain Names and forfeit the Disputed Domain Names.

In response to such email, Florida Marketing Group contended that the mark BONITA BAY is a geographic description not entitled to protection.

On January 15, 2003, counsel for the Complainants sent a cease and desist letter to the Respondent and Florida Marketing Group notifying the companies that registration and use of the Disputed Domain Names violated the Anti-cybersquatting Consumer Protection Act and constituted trademark infringement, trademark dilution, and unfair competition.

Since receipt of such January 10, 2003, cease and desist correspondence, the Disputed Domain Names have been altered as follows: (i) the Disputed Domain Names now are redirected only to "www.southwestflorida.com/ bonitabay", a website owned by Respondent, instead of to the various above-listed Southwest Florida Websites, thereby, eliminating the redirection of the Disputed Domain Names to any website owned by Florida Marketing Group; and (ii) the "www.southwestflorida.com/bonitabay" website now includes information about purported "Bonita Bay" real estate opportunities in the areas of New Providence, Bahamas and California.

 

5. Parties’ Contentions

A. Complainant’s contentions

(i) Complainants contend that it has registrations of the trademarks BONITA BAY, that its trademark registrations are valid and subsisting.

The Complainants contend that they continuously have used the BONITA BAY Marks, and variations thereof, since at least as early as 1982, and have established substantial goodwill and valuable customer recognition in the BONITA BAY Marks statewide, nationwide, and internationally. Through such widespread, expansive use of the BONITA BAY Marks in connection with real estate development services and real estate brokerage services, the BONITA BAY Marks have become highly distinctive and famous source identifiers of the BONITA BAY® brand, and are recognized symbols of Bonita Bay’s good will and exclusive right to use such Marks in connection with the provision of its Real Estate Goods and Services.

The Complainants at all times have vigorously defended their valuable intellectual property rights in their BONITA BAY Marks. The Complainants have licensed the use of the BONITA BAY Marks to builders and other businesses in southwest Florida which have sought to use the BONITA BAY Marks. The Complainants never have given Respondent any license, permission or authorization to own or use the Disputed Domain Names which incorporate in whole the BONITA BAY mark.

(ii) Complainant argues that the Domain Names are confusingly similar to the BONITA BAY Marks, pursuant to Paragraph 4(a)(i) of the Policy, because they wholly incorporate the trademark BONITA BAY with the addition of generic terms.

In accordance with the UDRP Rules, Paragraph 3(b)(ix)(1), the Complainants assert that the Disputed Domain Names are identical to, or confusingly similar to, the BONITA BAY Marks in which the Complainants have substantial and exclusive rights. Thus, the Disputed Domain Names when used in connection with the Respondent’s websites so resemble the Complainants’ BONITA BAY Marks as to be likely to cause confusion, to cause mistake, or to deceive consumers. The Disputed Domain Names are almost identical in the appearance, pronunciation, and verbal translation to the BONITA BAY Marks. Moreover, the Disputed Domain Names are similar in appearance, sound, connotation, and commercial impression to the Complainants’ BONITA BAY Marks. Thus, the Disputed Domain Names are likely to cause confusion with the Complainants’ BONITA BAY Marks.

The Disputed Domain Names redirect Internet traffic to websites that advertise the real estate services of a competitor of the Complainants thus making confusion more likely. The Complainants offer real estate development and sales services for properties located in Southwest Florida. The clients of the Respondent are in direct competition with Bonita Bay. Thus, the real estate services advertised in connection with the Disputed Domain Names and the activities surrounding their marketing are such that confusion is very likely with the Complainants’ BONITA BAY Marks.

Additionally, both Bonita Bay and the Respondent market their services through the Internet. Accordingly, such identity of marketing channels also weighs toward a finding of likelihood of confusion between the Disputed Domain Names and the Complainants’ BONITA BAY Marks. The Internet is a marketing channel that increases the likelihood of confusion between the two marks.

(iii) Complainant contends that Respondent has no rights or legitimate interests in the Domain Names, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Names.

Respondent cannot demonstrate rights or legitimate interest in the Domain Names under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Names in connection with the bona fide offering of goods or services.

Although by incorporating such information about the Bahamas and California the Respondent appears to attempt to distance itself from the Complainants’ BONITA BAY Marks and BONITA BAY Real Estate Goods and Services, the Respondent cannot refute the fact that it continues to use the Complainants’ BONITA BAY Marks to point the Disputed Domain Names to the <southwestflorida.com/bonitabay> website for the purpose of commercial gain. Respondent is operating a business in Cape Coral, Lee County, Florida, and is providing space on its website for advertising by competitors of Complainant. Respondent is not making legitimate commercial, noncommercial or fair use of the Disputed Domain Names.

Prior to any notice by Complainants to the Respondent of the dispute, there is no evidence of the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names, in connection with a bona fide offering of goods or services. The Respondent never has been commonly known by the Disputed Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain; the Respondent is using the Disputed Domain Names to misleadingly divert consumers to its websites.

(iv) Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of Paragraph 4(a)(iii).

The Respondent registered and is using the Disputed Domain Names intentionally to attract, and attempt to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainants’ BONITA BAY Marks as to the source, sponsorship, affiliation, or endorsement of the Disputed Domain Names and accompanying websites or other on-line location.

Complainants allege that the Respondent’s use and registration of the Disputed Domain Names prevents the Complainants, who are the owners of the legitimate trademark rights in the BONITA BAY Marks, from using such Disputed Domain Names in connection with the provision of the Complainants’ Real Estate Goods and Services.

In addition, the Respondent registered the Disputed Domain Names in bad faith by doing so knowing of the Complainants’ well-established and exclusive rights in and to the BONITA BAY Marks. The Respondent is located in southwest Florida and accepts advertising from real estate brokers in southwest Florida. As such, the Respondent is familiar with the real estate business in southwest Florida. The BONITA BAY Marks are well known, especially in southwest Florida, and it is inconceivable that the Respondent would not know of the Complainants or their BONITA BAY Marks.

Moreover, basic domain name searches and other searches of the records of the USPTO and the Florida Department of State, all of which are readily accessible on-line, would have revealed to the Respondent that the Complainants owned domain names, federal trademark registrations, and Florida state trademark registrations for the BONITA BAY Marks. Even an Internet search would have revealed the Complainants’ extensive use of the BONITA BAY Marks as a source identifier of the Complainants and their wide array of products and services. Such simple searches would have made the Complainants’ exclusive rights in the BONITA BAY Marks obvious to the Respondent. Accordingly, the Respondent is deemed to have constructive notice of the Complainants’ trademark rights by virtue of its federal and state trademark/service mark registrations in the BONITA BAY Marks.

Given the fame of the BONITA BAY Marks and the widespread recognition of the BONITA BAY Marks in the community in which the Respondent operates its business, there is no other conceivable interpretation of the Respondent’s registration and use of the Disputed Domain Name other than that of bad faith. Accordingly, the Respondent’s use and registration of the Disputed Domain Names constitutes bad faith.

Although by incorporating into its website information about the Bahamas and California the Respondent attempts to distance itself from the Complainants’ BONITA BAY Marks and BONITA BAY Real Estate Goods and Services, the Respondent is using the Complainants BONITA BAY Marks in the Disputed Domain Names to point the Disputed Domain Names to its website to market competitive real estate services.

B. Respondent’s contentions

(i) Respondent does not dispute that the Complainant has registrations of the trademarks BONITA BAY. Respondent does contest the notoriety and the familiarity of their name, "Bonita Bay." Respondent conducted 10 different searches on Google, regarded as the most complete search engine on the Internet. Most key word phrases used were taken directly by the Complainants own descriptions; "Florida Real Estate Developers", "Florida Real Estate", "Florida Real Estate Brokers", Florida Real Estate Brokerage", "Southwest Florida Real Estate Brokerage", Southwest Florida Real Estate Brokers", Southwest Florida Real Estate Developers", Southwest Florida Real Estate", "Southwest Florida Communities", and "Southwest Florida Gated Communities". The 10 individual searches went 10 pages deep each, accounting for over 1000 listings. The terms "The Bonita Bay Group", and "Bonita Bay Properties" failed to appear on any of the listings. The term "Bonita Bay" was located in secondary copy on two listings of the 1000+.

Respondent relies primarily on its assertion that a geographic name is not susceptible to trademark protection. The Respondent challenges Claimants’ right of exclusivity in the printed words "Bonita Bay". There is a Bonita Bay located north of San Diego, California. Should the Administrative Panel appointed in this administrative proceeding issue a decision in favor of the Complainant, this precedent would allow other similar geographical areas vulnerable to exclusivity. Bays, Lakes, Gulfs, Harbors, and Oceans would become susceptible to trademark rights. Complainants have no rights of trademark or service mark in the name BONITA BAY. 15 USC Section 1052(e)(2) mandates that geographically descriptive names are not eligible for trademark protection. John Rush & Annette Witzel v. Oregon CityLink, NAF FA0095318.

Respondent does not deny knowledge that it was aware of the existence of the organization called The Bonita Bay Group. Not being familiar with their origin, it was interpreted that their name was derived from the geographical location from which it originated, or is presently located as the municipality of Bonita Bay. Just as Merrick Sea Food in Cape Coral, Florida took its name from its original location - Merrick, Long Island, New York.

(ii) Respondent asserts that the Domain Names are not identical or confusingly similar to the trademark because a reasonable person would not assume the Domain Names are actually being used or sponsored by Complainants.

(iii) Respondent asserts that it has rights to or legitimate interests in the Domain Names because it is conducting a legitimate, commercial, fair use of the Domain Names before any notice of the dispute. The disputed domains have been included into the giant network of sites just as all purchased domains have been included. This network is known as The Southwest Florida Network of Sites. The Network (www.swfns.com) is a project conceived and managed as a joint effort between two businesses, Total Concept, Inc and The Florida Marketing Group. Their mission is to collect a vast amount of area specific domain names and websites and apply them into an enormous network. Concentrating on a multiple county area known as Southwest Florida, they presently have over one third of their 750+ domains active. Some of those domains are pointing to similar sites, but the short term goal is to establish distinctive, separate websites for the majority of the names plus add pertinent information and visuals to each.

The envisioned network provides a popular venue for the advertisers that chose to participate and join the network of sites - attracting the attention of the local population as well as individuals outside Southwest Florida. Real estate agents would have a venue to advertise their services reflecting the particular areas that they wish to service. The objective of the network is to inform the casual visitor about the area, help promote local establishments and to create a media outlet that spans globally. The Southwest Florida Network of Sites is a continually growing entity. It will be used to properly inform users, and to make them feel welcome and comfortable when visiting or moving to Southwest Florida. The disputed domains were temporarily removed from the Network list (as seen on the website "www.swfns.com") after the phone conversation between the Respondent and the Complainant.

(iv) Respondent denies that it registered or used the Domain Names in bad faith. Paragraph 4(b) suggests four types of evidence of bad faith registration, none of which applies:

Respondent claims that there is no showing of bad faith based on Paragraph 4(b)(i) because it did not offer or intend to sell the Domain Names to the Complainant or to others. Respondent asserts that the Domain Names were not registered to confuse the Internet user into believing that there is an affiliation or endorsement by the complainants.

The Respondent maintains the purpose for buying domain names pertaining to the Southwest Florida region, is to build a network and not acquire the disputed names for the purpose of selling, renting or otherwise transferring them to the Complainants. Total Concept, Inc. is a graphic art studio that is heavily into website design and maintenance. Total Concept, Inc. and President (Respondent) Thomas Messina, does not hold a realtors/brokerage license. Therefore, they cannot be in direct competition with the Complainants.

C. Complainants’ Supplemental Contentions

i) Under United States Trademark law, it is well established that continuous and exclusive use of a geographic mark for five (5) or more years establishes prima facie evidence of acquired distinctiveness of the mark. Lanham Act § 2(f), 15 U.S.C. § 1052(f); McCarthy On Trademarks and Unfair Competition, J. Thomas McCarthy, §§ 15:54, 15:62 (4th ed. 2002).

ii) Even though the Respondent alleges that the "Naples Florida street map" refers to the term "Bonita Bay," such term is a fanciful term created by the Complainants for its real estate development and services twenty-one years ago.

iii) Complainants cite a federal district court case to show that geographical names may acquire secondary meaning and can be protected as trademarks. Bishops Bay Founder Group, Inc. v. Bishops Bay Apartments, LLC, No. 02-C-0584-C (W.D. Wisc. February 14, 2003). The United States District Court for the Western District of Wisconsin held that nine (9) years of use and secondary meaning warranted injunctive relief in favor the plaintiff’s BISHOPS BAY mark, even though the name "Bishops Bay" appeared in a map suggesting geographic descriptiveness. . Therefore, in accordance with the Bishops Bay case, the panelist should find that the Complainants have valuable intellectual property rights in their BONITA BAY marks and transfer the Disputed Domain Names from the Respondent to the Complainants.

D. Respondents’ Supplemental Contentions

i. Respondent distinguishes Bishops Bay Founder Group, Inc. v. Bishops Bay

Apartments, LLC, No. 02-C-1584-C (W.D. Wisc. February 14, 2003). In the present case, the Total Concept, Inc. is not stressing the point of geographical descriptiveness based solely on the fact that the term "Bonita Bay" is listed on a public document (map). The Respondent notes the treatment of the terms "Bonita Bay" in regards to the cover which lists "Bonita Bay" with other "Non Private Development" geographical areas and indicates "Bonita Bay" on the map itself in similar font color and size equal to the other "Non Private Development" geographical areas. The Complainant and Respondent are not in this case. "Both parties are in the real estate industry." The Respondent has already pointed out that they are not a real estate agency and do not have a real estate license.

ii. The Respondent contends that the Complainants have gone beyond the scope of

"secondary meaning" and have fallen into the ‘public domain’. The Respondent contends that the mark "Bonita Bay" was not fully protected. Proper use of a trademark is essential for its continued protection. Companies must properly use their trademarks in order to aid the consumers who depend upon them and to prevent a trademark from becoming generic.

E. The Respondent asks the Panel to make a finding of reverse domain name hijacking and to leave the 5 disputed domain names untouched.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Enforceable Trademark Rights

Complainants contend that they have numerous registrations of the trademarks BONITA BAY and that their trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the BONITA BAY Marks. 15 U.S.C. § 1115.

Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047 (March 24, 2000).

Respondent argues that geographic locations cannot be proper trademarks. Respondent cites the existence of locations with the name "Bonita Bay" in New Providence, Bahamas and in San Diego, California and that Bonita Bay is on maps of Southwest Florida.

The Sole Panelist finds that trademarks including geographic names can be protected if the complainant shows that secondary association exists. Bishops Bay Founder Group, Inc. v. Bishops Bay Apartment, LLC, No. 02-C-1584-C (W.D. Wisc. February 14, 2003). Under the facts presented, Complainant appears to have instrumental in creating and naming the geographic location and to have done extensive promotion with the BONITA BAY Marks. Therefore, the Sole Panelist finds that the Respondent has not borne its burden of rebutting the presumption created by the registered BONITA BAY Marks.

Respondent further argues that the BONITA BAY Marks have become generic. The question as to whether a mark is or has become generic such that the Complainant should not be seen to have "rights" in respect of the mark used or and/registered has been presented to a number of Panels. The Sole Panelist adheres to the view that such defenses are beyond the purview of the Panel. The courts or regulatory authorities are better able to grapple with the question of whether marks having acquired secondary meaning have become generic through inattention or improper use. The summary nature of the procedures under the Rules is not adequate to develop the proof necessary to make an informed decision on these issues. Therefore, the Sole Panelist accepts the registered trademark as prima facie evidence of the existence of the mark without analysis of Respondent’s assertions that the BONITA BAY Marks have become descriptive or generic. 402 Shoes Inc dba Trashy Lingerie v. Jack Weinstock and Whispers Lingerie, WIPO Case No. D2000-1223 (January 2, 2001).

Therefore, the Sole Panelist finds that Complainant for the purposes of this administrative proceeding has enforceable trademark rights in the BONITA BAY Marks.

Identity or Confusing Similarity

Complainant further contends that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

As numerous courts and prior ICANN panels have recognized, the incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the complainant’s registered mark. See Paccar Inc. v. Telescan Technologies, L.L.C., 115 F. Supp. 772 (E.D. Mich. 2000) (finding that <peterbuilttrucks.com>, <kenworthtrucks.com> and similar domain names are not appreciably different from the trademarks PETERBUILT and KENWORTH); Quixar Investments Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253 (May 29, 2000) (finding that QUIXTAR and <quixtarmortgage.com> are legally identical). The addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant’s registered trademark.

The Sole Panelist notes that the entirety of the mark BONITA BAY is included in the Domain Names.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition § 23:50 (4th ed. 1998). The Sole Panelist finds that the phrases "real estate," "estates," "rentals," "condos," and "fsbo" are descriptive and non-distinctive.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the BONITA BAY Marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainants to prove that the Respondent has no rights to or legitimate interests in the Domain Names. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights apply, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the BONITA BAY Marks.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are 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.

Complainant alleges that Respondent continues to use the Complainants’ BONITA BAY Marks to point the Disputed Domain Names to the "www.southwestflorida.com/bonitabay" website for the purpose of commercial gain. Respondent is operating a business in Cape Coral, Lee County, Florida, and is providing space on its website for advertising by competitors of Complainant. Respondent is not making legitimate commercial use of the Disputed Domain Names. Complainants allege that this is not a bona fide offering of goods or services using the Domain Names.

Complainant further alleges that the Respondent never has been commonly known by the Disputed Domain Names. The Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain. The Respondent is using the Disputed Domain Names to misleadingly divert consumers to its websites where advertising is sold.

Respondent asserts that it has rights to or legitimate interests in the Domain Names because it is conducting a legitimate, commercial, fair use of the Domain Names before any notice of the dispute. The disputed domains have been included into the giant network of sites just as all purchased domains have been included. This network is known as The Southwest Florida Network of Sites. The Network ("www.swfns.com") is a project conceived and managed as a joint effort between two businesses, Total Concept, Inc and The Florida Marketing Group. The envisioned network provides a popular venue for the advertisers that chose to participate and join the network of sites - attracting the attention of the local population as well as individuals outside Southwest Florida. Real estate agents would have a venue to advertise their services reflecting the particular areas that they wish to service.

Based upon these allegations, the Sole Panelist finds that Respondent is using the Domain Names to attract Internet users to its websites or network of websites, namely The Southwest Florida Network of Sites. The purpose of this redirection of Internet traffic appears to be the sale of advertising space. Therefore, it appears that Respondent is not selling bona fide goods or services, is not known by the Domain Names and is using confusing similarity to redirect traffic for commercial gain. Therefore, the Respondent is unable to overcome the allegations of Complainant and Complainant has sustained its burden of proving that the Respondent lacks rights to or legitimate interests in the Domain Names

Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(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 website or other on-line 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

Based upon the findings above that the Respondent is diverting Internet traffic for commercial gain using Domain Names which are confusingly similar to the BONITA BAY Marks, the Sole Panelist finds that the Policy paragraph 4(b)(iv) has been met and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy paragraph 4(a)(iii).

Reverse Hijacking.

Complainant has prevailed on its claim and, therefore, has not engaged in reverse hijacking.

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainant’s registered BONITA BAY Marks, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names <bonitabayrealestate.com> <bonitabayestates.com> <bonitabayrentals.com> <bonitabaycondos.com> and <bonitabayfsbo.com> be transferred to The Bonita Bay Group, Inc.

 


 

Richard W. Page
Sole Panelist

April 8, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2003/d2003-0126.html

 

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