WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Scott Elliott v. Bill Baldwin
Case No. D2011-1713
1. The Parties
The Complainant is Scott Elliott, Cayman Paradise Properties Ltd., of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom.
The Respondent is Bill Baldwin, Grand Cayman, Cayman Islands, Overseas Territories of the United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <paradisepropertiescayman.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2011. On October 10, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On October 11, 2011, 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 for the disputed domain name. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on October 10, 2011. The Center verified that the Complaint together with the amendment to 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 October 19, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2011. The Response was filed with the Center on November 6, 2011.
The Center appointed John Swinson as the sole panelist in this matter on November 11, 2011. 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 Complainant is Scott Elliott. The Complainant operates a real estate business and is the registered owner of the domain name <caymanparadiseproperties.com>. The Complainant is the sole shareholder of Cayman Paradise Properties Ltd.
The Respondent is Bill Baldwin. The Respondent operates a real estate business under the name Paradise Properties Cayman Ltd.
The disputed domain name was registered on June 9, 2011.
5. Parties’ Contentions
The Complainant makes the following assertions:
Identical or Confusingly Similar
The Complainant owns the domain name <caymanparadiseproperties.com>. The Complainant has used this domain name in connection with its real estate business since November 2008, and continues to use it for that purpose. The business engaged in by the Complainant is to assist clients with buying, selling, leasing and managing real estate.
The Complainant claims it has common law trade mark rights in the words comprising its domain name, namely “caymanparadiseproperties”, as it has been consistently and continuously used by the Complainant in marketing and advertising material for the Complainant’s real estate business since December 2008. The Complainant asserts that together with its particular branding, the words are distinctive and have acquired a reputation with the public both in the Cayman Islands and beyond. It therefore has acquired legal protection under United Kingdom common law. Given the number of years that “caymanparadiseproperties” has been used in promoting the Complainant’s business, and the recognition by the public of those words in association with the Complainant’s business, considerable and tangible goodwill has been created. The Complainant’s domain name is also the subject of a pending trade mark application in the United Kingdom.
The disputed domain name contains the same words as the Complainant’s domain name. The only difference between the domain names is the order of the words. The similarity of the domain names is likely to cause confusion to the public and detriment and loss to the Complainant and its business.
Rights or Legitimate Interests
Prior to the Respondent using its domain name for its real estate business, which began operation in September 2011, the Complainant contacted the Respondent by email and advised him of the similarity of the domain names and requested that he not use the disputed domain name in connection with his business. However, the Respondent started his real estate business using the disputed domain name in September 2011, fully aware of the Complainant’s domain name.
Prior to September 2011, the Respondent had not used the disputed domain name for his real estate business, and therefore his business was not known or affiliated with the disputed domain name. The Respondent was aware, or should have been aware, of the Complainant’s domain name before registering the disputed domain name. The Respondent is attempting to divert Internet users looking for the Complainant’s business for commercial gain.
Registered and Used in Bad Faith
The disputed domain name is identical to the Complainant’s domain name, except for the re-ordering of the words.
The Respondent was aware, or should have been aware of the existence of the Complainant’s domain name and the similarity between the disputed domain name and the Complainant’s domain name, but proceeded to register and use the disputed domain name for his real estate business.
Further, the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s domain name as to the source affiliation or endorsement of the Respondent’s website and of the real estate services on the Respondent’s website or location.
Relevantly, the Respondent registered the disputed domain name in June 2011, two and a half years after the Complainant registered its domain name. In September 2011, the Respondent entered into a real estate business, which is the same business as the Complainant. It is therefore clear that the Respondent is using the dispute domain name to confuse and attract potential customers of the Complainant’s to the Respondent’s business.
Finally, it is clear that the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant and therefore the Respondent is using the disputed domain name in bad faith.
The Complainant requests that the disputed domain name be transferred to the Complainant or alternatively, cancelled.
The Respondent makes the following submissions:
Identical or Confusingly Similar
The Respondent does not question the Complainant’s interest in the Complainant’s domain name. However, the Complainant does not have any trade mark rights in the <paradisepropertiescayman.com> disputed domain name, or similar variations, as this term is comprised of three, very common, generic words.
Moreover, the evidence submitted by the Complainant does not demonstrate that it has trade mark rights in its own <caymanparadiseproperties.com> domain name. Relevantly, as of August 2011, the Complainant did not have a company or relevant license under a corresponding name to its domain name.
In any event, there has been no evidence of customer confusion arising from the Respondent’s use of the disputed domain name.
Rights or Legitimate Interests
The Respondent registered the company name “Paradise Properties Cayman Ltd.” in order to operate its real estate business and the disputed domain name is identical, in all relevant respects, to the Respondent’s registered company name. The company name was registered in June 2011, two months before the Complainant attempted to register its trade mark. The Respondent has been operating its business under this name.
The Respondent consistently markets its company using its legal name, which corresponds to the disputed domain name, through a variety of mediums. The Respondent has spent significant time and effort establishing its brand recognition.
Registered and Used in Bad Faith
The Respondent is not attempting to pass itself off as the Complainant and has never had any intention of doing so. The business of the Complainant is different to that of the Respondent. There is no evidence to suggest that the Respondent has registered or used the disputed domain name in bad faith.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant.
A. Procedural Issues
The Respondent sent several communications prior to the formal commencement of the proceedings. There is no obligation on the Panel to consider this information and it is at the Panel’s discretion as to whether it wishes to consider these communications. The Panel finds that the information contained in these pre-commencement communications adds nothing to the Response and will not impact the finding of the case. As such, the Panel will not consider this information.
B. Identical or Confusingly Similar
In order for the Complainant to succeed under the Policy, it must first establish it has trade mark. Here, the Complainant does not have any registered trade mark rights in the terms, “caymanparadiseproperties.com”, “caymanparadiseproperties”, “Cayman Paradise Properties”, or similar variations. The Panel notes that the Complainant has a pending trade mark application for “Cayman Paradise Properties” and “Paradise Properties Cayman”, which were filed after the Respondent established his business and registered the disputed domain name.
As such, for the Complainant to satisfy this threshold requirement, it must establish that it has unregistered or common law trade mark rights in the relevant terms. In order to demonstrate common law trademark rights, the Complainant must show that the term has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trademark, nature and extent of advertising and media recognition.
Here, the Complainant has not submitted sufficient evidence to establish unregistered trade mark rights in “caymanparadiseproperties.com” or similar variations. Importantly, the evidence submitted by the Complainant does not show use of this term as a trade mark. All advertising material provided by the Complainant as evidence, contains the branding of “Remax Cayman Islands”. The Panel finds that the term, “caymanparadiseproperties.com”, is not used as a trade mark anywhere in the material provided by the Complainant. In short, upon review of the materials provided, “caymanparadiseproperties.com” is used by the Complainant as website address and not as a trade mark.
“Cayman” is a geographical place, and there is no evidence that the Complainant has rights in this term.
“Properties” is a common term used by real estate agents and brokers.
There is no evidence available to the Panel that the Complainant has any reputation in the term “Cayman Paradise Properties” or similar.
As the Complainant has not established it owns any relevant trade mark rights, the Complainant must necessarily fail.
C. Rights or Legitimate Interests
The Panel notes for completeness that the Respondent registered the company name “Paradise Properties Cayman Ltd.” and trades and operates under this name. The Policy provides that a respondent can demonstrate it has rights and legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) if the respondent (as an individual, business, or other organization) has been commonly known by the domain name (Policy, paragraph 4(c)(ii)). As the Respondent operates its business under the company name, “Paradise Properties Cayman Ltd.”, and this name corresponds to the disputed domain name, it appears that the Respondent does have rights and legitimate interests in the disputed domain name.
For this reason also, the Complainant must fail.
D. Registered and Used in Bad Faith
In light of the above findings, there is no need for the Panel to consider this element.
For all the foregoing reasons, the Complaint is denied.
Dated: November 24, 2011