WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
HABITAT RESORTS S.L., BANCAJA HABITAT S.L. v. Mr. Mark S. Chasan
Case No. D2010-1261
1. The Parties
The Complainant is Habitat Resorts S.L., Bancaja Habitat S.L. of Valencia, Spain, represented by Despacho Profesional S.L., Spain.
The Respondent is Mr. Mark S. Chasan of Los Angeles, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The disputed domain name <liferesort.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On July 30, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. The Response was filed with the Center on August 9, 2010.
The Center appointed Alistair Payne as the sole panelist in this matter on September 2, 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.
4. Factual Background
Since November 2005, the Complainant has developed and operated residential retirement complexes, in particular, under the name or style Life Resorts and owns a Community Trade Mark for LIFE RESORTS dating from August 2005 and a number of domain names incorporating its name and mark including the website “www.liferesorts.es”.
The Respondent registered the Disputed Domain Name in 1999.
5. Parties’ Contentions
The Complainant submits that it owns a Community Trade Mark for LIFE RESORT under registration number 4589875 which was filed in November 2005 the same year that it undertook its first retirement complex development and commenced this particular business. It submits that it also owns a range of other trade mark registrations containing its trade mark. The Complainant says that the Disputed Domain Name is identical or confusingly similar to its LIFE RESORT trade mark.
The Complainant says that the Disputed Domain Name was bought by the Respondent in 1999, but that the trade mark application for LIFE RESORT in the United States of America was made by Liferesort Corporation in 1999 and was subsequently abandoned after an opposition proceeding in 2001 and the applicant ceased to exist. As a consequence the Complainant submits that the Respondent cannot maintain an interest in the LIFE RESORT mark or in the Disputed Domain Name and therefore has no rights or legitimate interests.
The Complainant essentially says that holding the Disputed Domain Name for eleven years without using it is an act of bad faith for the purposes of the third element of the Policy.
The Respondent submits that the Complainant has correctly admitted that the Disputed Domain Name was registered some 6 years prior to the commencement of the Complainant’s business in the development and marketing of retirement homes under its LIFE RESORT trade mark. The Respondent goes on to say that it registered the Disputed Domain Name, filed a corporation, developed a website and invested one hundred thousand dollars of his own money into a business to be run under the Disputed Domain Name and that this was all undertaken in the United States many years before the Complainant began its business or filed its trade mark applications in 2005.
Further the Respondent says that his business was focused on providing education training and entertainment services and was therefore never in the same field of activity as the Complainant’s business. Accordingly the Respondent submits that there is no likelihood of confusion because the parties have operated in different fields of activity.
The Respondent submits that it has rights or legitimate interests in the Disputed Domain Name based on its prior registration and bona fide business activities. Lastly the Respondent says that its registration of the Disputed Domain Name was in good faith well prior to the date on which the Complainant says that it commenced its business and that it used the mark in a different field of activity there has also been no use of the Disputed Domain Name in bad faith and as a result the Complainant cannot make out its claim under the third element of the Policy.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has demonstrated that it has registered trade mark rights in the mark LIFE RESORTS under Community trade Mark registration number 4589875. The Panel finds for the purposes of the first element of the Policy that the Disputed Domain Name is confusingly similar to this trade mark in that it differs by only one letter. As a result the Panel finds that the Complaint succeeds in relation to the first element of the Policy.
B. Rights or Legitimate Interests
The onus is upon the Complainant to demonstrate that the Respondent has no rights or legitimate interests in the Disputed Domain name and it is then for the Respondent to rebut the Complainant’s prima facie case.
In the Panel’s view the Complainant has not even made out its prima facie case under this element of the Policy. For the reasons discussed below under bad faith, it is not tenable for the Complainant to assert that the Respondent has no rights or legitimate interests in the Disputed Domain Name in circumstances that there is no evidence to suggest other than that the Respondent set out to make a bona fide use of the Disputed Domain Name and a supporting trade mark at a point in time well before the Complainant even entered into business using its trade mark and in a completely different field of activity.
C. Registered and Used in Bad Faith
It is an acknowledged requirement of the third element of the Policy that the Disputed Domain Name must be both registered and used in bad faith unless there is evidence fulfilling the requirements of the deemed provisions of paragraph 4(b) of the Policy. Clearly, there is no evidence of bad faith registration before the Panel and neither is there any evidence that any subparagraph of paragraph 4(b) of the Policy is fulfilled.
The Complainant admits that the Respondent registered the Disputed Domain Name some six years prior to the Complainant’s first real estate retirement development project. The Panel accepts the Respondent’s evidence that it bona fide set about creating a web based business under the Disputed Domain Name and through a corporation set up for that purpose. The Respondent’s field of activity was quite different from the Respondent’s subsequent business and as it turned out the business apparently failed. There is nothing here to suggest that the original registration by the Respondent was made in bad faith and nor is there anything to support a case that subsequent to the business ceasing to trade that the Respondent has somehow used the Disputed Domain Name in bad faith or in a manner which would fulfill one of the requirements under paragraph 4(b) of the Policy.
Accordingly, the Complaint also fails in relation to the third element of the Policy.
For all the foregoing reasons, the Complaint is denied.
Dated: September 16, 2010