Complainants are PHD Group Pty Ltd, Barrett Property Group Pty Ltd., Barrett Property Group Western Region Pty Ltd., Bps Group Pty Ltd., BPG Access Pty Ltd., RSS Property Holdings Pty Ltd. of Victoria, Australia represented by Middletons Lawyers, Australia.
Respondent is Abedellatif Shatila of Hamra, Beirut, Lebanon, representing himself.
The disputed domain name <porterdavis.com> (the “Domain Name”) is registered with Reg2C.com Inc./Answerable.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2010. On that same day, the Center transmitted by email to Reg2C.com Inc. a request for registrar verification in connection with the Domain Name. On May 25, 2010, Reg2C.com Inc. indicated by email to the Center that the Domain Name is registered with Answerable.com, not Reg2C.com. Thus, on May 26, 2010, the Center transmitted by email to Answerable.com a request for registrar verification in connection with the Domain Name. Answerable.com transmitted by email to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was June 21, 2010. The Response was filed with the Center on June 21, 2010.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on June 30, 2010. 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.
PHD Group Pty Ltd either wholly owns, or is the majority owner, of the other Complainants (collectively “Complainants”). RSS Property Holdings Pty Ltd owns registered trademarks in Australia featuring the mark PORTER DAVIS, which it licenses to the other Complainants. Those marks include No. 1017202 for PORTER DAVIS HOMES (filed on August 24, 2004); and Nos. 1035294 and 1035445 for PORTER DAVIS PRESTIGE and PORTER DAVIS LIFESTYLE, respectively (filed on December 22, 2004). Since they began operating their business in 1999, Complainants have marketed and promoted their house designs and building and design services using the PORTER DAVIS Mark. These activities have included using the Mark: on signage and brochures for example, in conjunction with display homes open to the public; on Complainants' website; in print media including industry publications; and on television.
For the past seven years since 2003, Complainants have been awarded the Housing Industry Association's “Most Professional Builder” Award. From all of its marketing and use activities, Complainants have developed a substantial reputation and goodwill in the PORTER DAVIS Mark.
Respondent registered the Domain Name on November 3, 2009.
Complainants have rights in the PORTER DAVIS Mark. The name “Porter Davis” is a unique and distinctive business name that Respondent would not have legitimately chosen as part of the Domain Name. Respondent registered it only for the purpose of selling it either to Complainants or one of its competitors. Upon viewing the Domain Name, customers would expect the name to be owned by Complainants especially given that the <porterdavis.com>.au domain name is owned by Complainants. Any person who omits the “.au” when attempting to access Complainants' domain name will be directed to their website.
Respondent does not have any rights or legitimate interests in respect of the Domain Name. Respondent is neither commonly known by “Porter Davis” or the Domain Name. Respondent also does not have any registered trademarks or business names for, or incorporating, “Porter Davis”. Respondent is not making a legitimate non-commercial use of the Domain Name because he is trying to sell it for a minimum of USD $1,200.
Respondent has acted in bad faith in registering and using the Domain Name because:
(1) “Porter Davis” is an invented, highly distinctive business name which Respondent would not have legitimately chosen unless it was attempting to trade off Complainants' rights in their Mark; (2) Complainants' earliest priority date for the PORTER DAVIS Mark is 2004, which is 5 years before Respondent registered the Domain Name in 2009; and Respondent registers domain names with the sole purpose of selling them to the trade mark owner. Respondent owns about 415 other domain names which all resolve to a similar website.
Complainant requests that the Domain Name be transferred to RSS Property Holdings Pty Ltd.
Respondent claims he is making a legitimate noncommercial and 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. Respondent further alleges that he registered the Domain Name thru Snapnames.com and it is now parked with “Domainsponsor.com”.
Respondent claims that when he has used the Domain Name, he has not attempted either to attract Internet users to Complainants' website <porterdavis.com.au> or to create a likelihood of confusion with Complainants' PORTER DAVIS mark as to the source, sponsorship, affiliation, or endorsement. According to Respondent, the “landing page” of the website associated with the Domain Name “automatically set keywords of visitor search in a rotation way and it is always changing rapidly.”
Respondent states that he cannot afford to lose the Domain Name and it cost a lot when he registered it.
Paragraph 4(a) of the Policy requires that a complainant prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by the respondent 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Panel finds that by virtue of its Australian trademark registrations and use since at least 2004, Complainants have established rights in a series of marks which feature the term “PORTER DAVIS” as the dominant portion (e.g., PORTER DAVIS HOMES, PORTER DAVIS PRESTIGE and PORTER DAVIS LIFESTYLE). Indeed, Complainants have made of record marketing materials showing that they refer to themselves, or others refer to them, simply as PORTER DAVIS. Respondent has not contested these facts.
Respondent has registered the entirety of the dominant element (PORTER DAVIS) of Complainants' registered marks as the Domain Name. The addition of “.com” does not provide any distinctiveness between the Domain Name and Complainants' Mark. Thus, the Panel finds that the Domain Name is confusingly similar to the PORTER DAVIS Mark in which Complainants have established rights. See Wilmar Cororation v. Performance Tools/Domains By Proxy, Inc., WIPO Case No. D2007-1243.
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
Complainant asserts that Respondent does not have any rights or legitimate interests in the Domain Name because: (1) Respondent is not commonly known by the PORTER DAVIS mark nor does he have any registered trademarks or business names incorporating that mark; and (2) Respondent is making a commercial use of the Domain Name by offering it for sale for a minimum of USD$1,200 on the website “AfterNic DLS Domain Listing Service” (http://domainersadvantage.afternic.com/?page_id=661) via a link to this website from the website associated with the Domain Name. Respondent does not contest the former allegation or the evidence of record supporting the latter allegation.
Respondent claims that he is making a legitimate noncommercial use of the Domain Name, without intent for commercial gain and he denies attempting to attract Internet users to his website or creating a likelihood of confusion. Those conclusory claims do not rebut Complainants' prima facie case and other evidence of record showing: (1) Respondent is not commonly known by the PORTER DAVIS Mark nor does he have any registered trademarks or business names incorporating that Mark; (2) Respondent is making a commercial use of the Domain Name by selling it for a minimum of USD$1,200; (3) Respondent has registered a confusingly similar domain name that wholly incorporates the dominant portion (PORTER DAVIS) of Complainants' marks; and (4) Respondent adopted the Domain Name <porterdavis.com> for its website and prominently displays the Domain Name on its website where it maintains links to a variety of products and services including those akin to Complainants' (e.g., House And Land Packages, Home Buying, Buy A Home, Real Estate Commercial) likely for click through revenue.
The Panel therefore concludes that Respondent does not have any rights or legitimate interests in the PORTER DAVIS Mark, thus, Complainants have satisfied paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(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.”
These criteria are not exclusive and the panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the Domain Name.
The Panel concludes that Respondent either knew, or should have known, of the PORTER DAVIS Mark at the time he registered the Domain Name. It is undisputed that Complainants were using the PORTER DAVIS Mark and the Mark was registered in Australia long before Respondent registered the Domain Name. In fact Complainants were using the PORTER DAVIS Mark in connection with services similar (namely the sale of homes) to those promoted by sponsored links on Respondent's website. Insofar as Respondent has not presented any evidence to the Panel showing that it has rights granted from Complainants to use the PORTER DAVIS Mark or that Respondent has been commonly known by “PORTER DAVIS,” the Panel concludes Respondent registered the Domain Name knowing its distinctiveness to and ownership by Complainants. To have registered the Domain Name knowing of Complainants' rights in the PORTER DAVIS Marks demonstrates Respondent's bad faith. See, America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004 (Respondent's knowledge of Complainant's mark before he registered the disputed domain name constitutes bad faith, especially where Respondent knew or should have known of the registration and use of the trademark prior to registering the domain name).
Respondent's bad faith use is demonstrated by the fact that Respondent is using the Domain Name in connection with a website that offers, among other things, competing home buying products and services to those of Complainants and, thus, Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the PORTER DAVIS Mark as to the source, sponsorship, affiliation, or endorsement of the website. Respondent accomplishes this through the structure of their website which (1) provides sponsored links to various companies including ones directly competing with Complainants in home sales; and (2) launches a variety of “pop-up” advertisements.
Further evidence of Respondent's bad faith use of the Domain Name is that in addition to benefiting commercially from the sponsored links, Respondent is attempting to sell the Domain Name for at least USD$1,200. And it appears Respondent is in the business of registering domain names to sell them to the trademark owner. According to a Domain Tools WhoIs search Complainants made of record here, Respondent owns about 415 other domain names that resolve to websites similar to the one to which the Domain Name at issue here resolves (e.g., sponsored sites). The Panel further notes that it verified the “for sale” status of at least half of the short list of domain names Respondent owns searching the website “AfterNic DLS Domain Listing Service” (i.e., the domain names are up for sale as follows: sporlife.com for USD$360; cyrnos.com for USD$670; safirhotel for USD$5,000; alasad.com for USD$500; and csvn.com for USD $560).
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <porterdavis.com> be transferred to Complainant RSS Property Holdings Pty Ltd., as requested by the Complainants.
Harrie R. Samaras
Dated: July 14, 2010