WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tahoe Luxury Properties, Inc. v. Shari Chase and Chase International
Case No. D2004-0151
1. The Parties
The Complainant is Tahoe Luxury Properties, Inc., Tahoe City, California, United States of America, represented by William Dietz, of United States of America.
The Respondents are Shari Chase and Chase International, Zephyr Cove, Nevada, United States of America, Represented by Thomas J. Hall, of United States of America.
2. The Domain Names and Registrar
The disputed domain names, <tahoeluxuryproperties.com> and <tahoeluxuryproperties.info>, are registered with Network Solutions, LLC, of United States of America.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") in electronic form on February 25, 2004, and in paper form on March 1, 2004. On February 27, 2004, the Center transmitted by e-mail to Network Solutions, Inc. a request for registrar verification in connection with the domain names at issue. On March 1, 2004, Network Solutions, LLC transmitted by e-mail to the Center its verification response, confirming that Chase International is listed as the Registrant and providing the contact details for the administrative, billing, and technical contacts. On March 9, 2004, the Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on March 9, 2004. In accordance with the Rules, paragraph 5(a), the due date for the Response was March 29, 2004. The Respondents did not submit any response by the due-date. Accordingly, the Center notified the parties of Respondents' default on April 6, 2004.
However, Respondents, through counsel, submitted an electronic version of their Response to the Complaint on April 30, 2004. The Center acknowledged receipt of Respondents' late response on May 5, 2004. On May 6, 2004, Complainant, by e-mail, objected to the submission of Respondents' late response. On May 7, 2004, Respondents' counsel replied by e-mail to the Center stating that "the delay in Response to the Complaint was occasioned by circumstances beyond our control. There has been absolutely no prejudice from a late brief filing, particularly in view of the tardiness of appointing an Administrative Panel to decide the issue." On May 7, 2004, the Center acknowledged receipt of the parties' e-mail correspondence of May 6 and 7, 2004, all of which was included within the Case File sent to the Administrative Panel.
After clearing potential conflicts of interest, the Center appointed Jonathan Hudis as the Sole Panelist in this matter on May 7, 2004. The Panel finds that it was properly constituted. The Panel has submitted its 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
According to the Complaint and attachments, Complainant originally was incorporated in the state of California in 1999, as North Tahoe Property Management, Inc. In July, 2000, Complainant changed its name to Tahoe Luxury Properties, Inc. Complainants' principals, William and Kelley Dietz, have been in the business of buying, selling, and renting real property in the Lake Tahoe and Truckee area, beginning in 1996. Complainant claims to have used the business name "Tahoe Luxury Properties" for the rental, sales and purchase of real property in the Lake Tahoe and Truckee communities, at least as early as July 2000. Complainant does not own a federal (U.S.) trademark or service mark registration for "Tahoe Luxury Properties". Without supporting documentation, Complainant states that it has a strong advertising presence, both locally and nationally.
Complainant states that the parties have conducted business together during the past four years, and that they otherwise are competitors engaged in the same business within the same geographical area. Complainant also states that, since the time of registering the disputed domain names, Respondents have not used these domain names to provide any content on the Internet. While this matter was pending before the Administrative Panel, the Panel attempted to determine whether commercial web site content was present at the URLs "www.tahoeluxuryproperties.com" or "www.tahoeluxuryproperties.info", At both URLs, only a Network Solutions "Under Constructions/Coming Soon" page appeared.
Complainant states that Respondents registered the subject domain names with the express intention of disrupting Complainant's business, and that there have been numerous instances that "Complainant knows of" whereby customers of the Complainant have attempted to reach Complainant through the use of the contested domain names, but were unable to do so.
As shown by an exchange of e-mail correspondence between the parties, copies of which are attached to the Complaint, it appears that Respondents expected to be paid in an amount in excess of their out-of-pocket costs for Complainant to purchase the subject domain names from Respondents.
5. Parties' Contentions
Complainant asserts that the contested domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; that Respondents have no rights or legitimate interests in respect of the domain names; and that the domain names were registered and are being used in bad faith.
Respondents did not reply timely to the Complainant's contentions. Under UDRP Rule 5(e), and WIPO's Supplemental Rule 7(c), because Respondents' Response was submitted over one month late, without explanation, the Panel has not considered Respondents' Response. However, even if Respondents' Response was considered, it would not have changed the result in this proceeding.
6. Discussion and Findings
Transfer of the contested domain names will be ordered if Complainant has shown that the following three elements are present (Paragraph 4(a) of the Policy):
(i) The contested domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The domain name holders have no rights or legitimate interests in respect of the domain names; and
(iii) The contested domain names have been registered and are being used in bad faith.
In an Administrative Proceeding pursuant to the Policy, Rules and Supplemental Rules, the Complainant must prove that each of these three elements is present.
A non-exhaustive list of circumstances, if found by the Panel to be present, which may be considered as evidence of the registration and use of a domain name in bad faith, may be found at Paragraph 4(b) of the Policy. On other hand, a non-exhaustive list of circumstances, if found by the Panel to be proved based upon its evaluation of all the evidence presented, demonstrating the Respondents' right or legitimate interests in the domain names, may be found at Paragraph 4(c) of the Policy.
Respondents had the opportunity to respond and present evidence that they have rights or legitimate interests in respect of the contested domain names. They chose not to do so by the date provided by the Center. Therefore, as stated above, Respondents' Response has not been considered. Complainant, however, is not entitled to relief simply by reason of the default. On the other hand, the Panel can and does draw evidentiary inferences from the failure to respond. See, CSX Corporation v. Computer Service Exchange, WIPO Case No. D2003-0875 (January 12, 2004).
For example, paragraph 14 of the Rules provides that:
(a) In the event that a party, in the absence of exceptionally circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the Complaint.
(b) If a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any requests from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
To establish its trademark or service mark rights in this proceeding, Complainant could have submitted, with its Complaint, a federal registration issued by the U.S. Patent and Trademark Office (if extant), or proof of its common law use of its asserted mark, "Tahoe Luxury Properties". Complainant did neither.
A trademark registration on the federal Principal Register would have at least been prima facie evidence of the validity of Complainant's alleged mark, Complainant's ownership of its alleged mark, Complainant's exclusive right to use the alleged mark on the goods or services for which it was registered, and of Complainant's priority of right to use of the mark dating back to at least as early as the filing date of the application for federal registration. Trademark Act Sections 7(b) and (c), 15 USC §§ 1057(b) and (c); McCarthy T.J., McCarthy on Trademarks and Unfair Competition, § 16:19, p.16-37 (4th ed. 2004) ("McCarthy"). Further, "[a]t common law, ownership of trademark or [service mark] ... rights in the United States is obtained by actual use of a symbol to identify the goods or services of one seller and distinguish them from those offered by others." McCarthy § 16:1, p.16-3.
On the scale of distinctiveness (generic, descriptive, suggestive, arbitrary/fanciful), Complainant's claimed mark, "Tahoe Luxury Properties" is extremely weak. The Panel views "Tahoe Luxury Properties" as a generic term or, at best, a descriptive mark lacking proof of acquired distinctiveness. "A generic term is one that refers, or has to come to be understood as referring, to the genus of which the particular product [or service] is a species. ... [N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise [or services] and what success it has achieved in securing public identification, it cannot deprive competing manufacturers [or competitors providing the same or similar services] of the product [or service] of the right to call an article [or service] by its name. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976).
"A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods [or services]. Abercrombie & Fitch, 537 F.2d at 11. "Marks which are merely descriptive of a product [or service] are not inherently distinctive. When used to describe a product [or service], they do not inherently identify a particular source, and hence cannot be protected. However, descriptive marks may acquire the distinctiveness which will allow them to be protected under the [Trademark] Act. ... This acquired distinctiveness is generally called `secondary meaning.'" Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
Even assuming that the designation "Tahoe Luxury Properties" is not generic, it is at best merely descriptive of the services performed by Complainant and its principals. Complainant provided no proof of acquired distinctiveness in this term by its use in the marketplace, such as by showing the period and extent of exclusive use, the extent of sales, advertising expenditures, or unsolicited media attention paid to the name in connection with Complainant's services. Therefore, under paragraph 4 (a)(i) of the Policy, Complainant, on the record before the Panel, has not shown that it has trademark or service mark rights in the designation "Tahoe Luxury Properties" sufficient for it to prevail in this proceeding.
B. Other Issues
The Panel having found that Complainant does not have trademark or service mark rights in the designation "Tahoe Luxury Properties" sufficient for it to prevail in this proceeding, a discussion of whether Respondents have rights or legitimate interests in the contested domain names, or whether the domain names where registered and used in bad faith, is unnecessary.
For all the foregoing reasons, the Complaint is denied.
Dated: May 21, 2004