WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association of Real Estate Investment Trusts, Inc. v. Hilliard Equities
Case No. D2012-0066
1. The Parties
The Complainant is National Association of Real Estate Investment Trusts, Inc. of Washington, D.C., United States of America (“U.S.A.”) represented by Mosaic Legal Group, PLLC, U.S.A.
The Respondent is Hilliard Equities of San Francisco, California, U.S.A., internally represented.
2. The Domain Name and Registrar
The disputed domain name <cleanreit.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 16, 2012. On January 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 17, 2012, the Registrar 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 January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Response, dated February 8, 2012, was received by the Center on February 9, 2012, following several emails among the parties and the Center concerning both substance and procedure.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on February 15, 2012. 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 a nonprofit corporation organized under the laws of the District of Columbia, U.S.A., with its principal place of business in the State of Florida, U.S.A. According to its website, which is linked to the domain names <reit.com> and <nareit.com>, the Complainant is an industry association representing Real Estate Investment Trusts (“REITs”), publicly traded real estate companies, and individuals and companies that advise, study, or service those businesses.
“REIT” is a common acronym for a kind of tax-advantaged investment vehicle in the U.S.A. See, e.g., United States Internal Revenue Service instructions for filing Form 1120-REIT (www.irs.gov/instructions/i1120rei/ch01.html); entries on “REIT” at TheFreeDictionary.com, Acronymfinder.com, Acronymsearch.com, and All-Acronyms.com; articles on “Real Estate Investment Trust” at Wikipedia.org and “The Basics of REIT Taxation” at Investopedia.com.
The Complainant holds United States Trademark Registration No. 2445599 for the standard character mark CLEAN REIT (registered April 24, 2001). The trademark registration is for use of the mark in connection with “insurance underwriting services in the field of environmental liability.” The mark does not appear on the Complainant’s website. There is evidence in the record that at various times a third-party insurance company has offered environmental risk insurance to REITs, with advertising that indicates that the program is “sponsored” by the Complainant but that the Complainant “takes no part in providing the insurance services in the CleanREIT program other than through licensing its name and logo.”
According to information from DomainTools.com furnished by the Complainant (and not disputed by the Respondent), the Domain Name was first registered on August 27, 2009 by Cleantech Circle, LLC of San Francisco, California, U.S.A. That company’s website at “www.cleantechcircle.com” includes biographical information about Mr. Bill Hilliard, who is the principal and representative of the Respondent in this proceeding. At some point, the registration was updated to show the Respondent as the registrant of the Domain Name, with Mr. Hilliard as the administrative contact.
The Response includes little information about the Respondent or its business. However, its website at “www.hilliardvc.com” describes the Respondent as a “private equity investment management” firm and highlights the expertise of Mr. Hilliard, who submitted the Response in this proceeding, as a “professional investor in clean energy, real estate, private equity and venture capital.” The biographies of Mr. Hilliard found on the websites of Cleantech Circle, LLC and of The Angels’ Forum (“www.angelsforum.com”), an “angel investors” group for Silicon Valley technology start-up companies, indicate that Mr. Hilliard has founded at least one REIT and that he is a member of NAREIT, the Complainant in this proceeding.
These biographies also refer to CleanREIT Partners, LLC (hereafter “CleanREIT Partners”) as “a formative-stage investment entity in the solar energy market.” According to the Response, the Respondent acquired the Domain Name to use for email, and eventually for a website, in connection with a business to be developed by CleanREIT Partners. CleanREIT Partners is a California limited liability company established in January 2010, with a postal address in Calabasas, California, as shown in the online database operated by the California Secretary of State. Mr. Hilliard is listed as the registered agent for the company. There is no evidence in the record of an active business carried on under the name of this company.
The Wayback Machine operated by the Internet Archive (“www.archive.org”) shows that the Domain Name was briefly parked “for free” by the Registrar, displaying a page advertising the Registrar’s offerings, and then appeared to display a template that could be used for developing a commercial website. The Domain Name does not currently resolve to an active website.
It is undisputed that in March 2010, at a conference sponsored by the Complainant, Mr. Hilliard discussed with a representative of the Complainant the possibility of cooperating in a program to demonstrate how federal tax incentives for solar energy installations could be used more efficiently by REITs. The Complainant’s representative expressed concern that the name of Mr. Hilliard’s company (and the associated Domain Name) were similar to the Complainant’s registered CLEAN REIT mark. Subsequent correspondence between Mr. Hilliard and representatives of the Complainant failed to resolve the Complainant’s demand that the Respondent cease any use of the name and transfer the Domain Name to the Complainant.
In August 2011, CleanREIT Partners applied for United States trademark registration of the standard character mark CLEANREIT (Serial No. 85397294), for use in connection with “energy management services” including rooftop solar energy projects. The application is pending.
5. Parties’ Contentions
The Complainant characterizes the Domain Name as identical to the Complainant’s registered CLEAN REIT mark, arguing that the space between “clean” and “reit” (which cannot be reproduced in a URL address) is immaterial.
The Complainant contends that the Respondent has no legitimate rights or interests in the Domain Name, as evidenced by its failure to use the Domain Name for an active website. The Complainant infers bad faith in the registration and repeated renewal of the Domain Name, including renewals following cease-and-desist demands from the Complainant, given that the Complainant’s mark was registered and in use for several years before the Domain Name was registered.
The Respondent argues that only third-party insurers, not the Complainant, have made commercial use of the CLEAN REIT mark registered by the Complainant, and that there is no likely confusion resulting from the Respondent using a similar mark (which it has applied to register) for a different class of services.
The Respondent contends that it has a legitimate interest in using a domain name corresponding to its company name, and that it never intended to “misleadingly divert consumers” by using the Domain Name. The Respondent states that it has not offered the Domain Name for sale to the Complainant or any other party but only intends to use the Domain Name for the business the Respondent plans to develop.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules:
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Late Response
The Respondent, which is not represented by legal counsel, requested an extension to file the Response. The Complainant did not stipulate consent to such an extension, citing the fact that the parties had already engaged in extensive correspondence over the dispute since 2010. The Response was sent the day after the deadline for filing a response and logged by the Center two days after the deadline, given the time difference between California and Switzerland.
The Panel concludes that the proceeding has not been materially delayed and that the Complainant has not suffered significant prejudice thereby. Accordingly, the Panel accepts the Response as filed for consideration in this proceeding.
B. Identical or Confusingly Similar
The Respondent’s remarks about the Complainant’s non-use of the mark are immaterial for this element of the UDRP Complaint. The record shows that the Complainant licensed the mark to at least one insurer, and the Complainant remains the owner of record of the trademark registration. This is a sufficient interest in the mark to satisfy the requirement of the Policy, paragraph 4(a)(i).
The Domain Name differs from the Complainant’s mark only in the addition of URL address elements (“www” and “.com”) that are immaterial for Policy purposes and the absence of a space between “clean” and “reit”. The Panel finds that the absence of a space does not avoid confusing similarity in appearance, sound, and meaning, and therefore concludes that the Domain Name is confusingly similar to the Complainant’s mark for purposes of this element of the Complaint.
C. Rights or Legitimate Interests
It is undisputed that the Complainant has not authorized the Respondent to make use of the CLEAN REIT mark in the Domain Name or otherwise. The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which the Respondent could nevertheless demonstrate rights or legitimate interests in the Domain Name:
“(i) before any notice to you 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 (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 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.”
The Domain Name was registered in August 2009. CleanREIT Partners was established in January 2010, and the Respondent states that the Domain Name was immediately used for emails and in correspondence. Beginning in March 2010, representatives of the Respondent and the Complainant discussed the prospective business of CleanREIT Partners and its potential trademark infringement. In August 2011, the Respondent filed its own application for trademark registration.
Apart from the legal formation of CleanREIT Partners and asserted email use, the record is silent on the Respondent’s use or “demonstrable preparations to use” the Domain Name or a corresponding name in connection with a business before March 2010, when the Respondent was put on notice of a potential dispute over use of the name. The Respondent relies on the fact that the Domain Name corresponds to the first part of the company name, CleanREIT Partners LLC, in which the Respondent’s principal Mr. Hilliard has an interest. However, the formation of CleanREIT Partners is not in itself sufficient to demonstrate “demonstrable preparations” to make commercial use of the Domain Name, nor that a business associated in some undisclosed manner with the Respondent has been “commonly known by the domain name”, where there is no evidence of sales, advertising, employment, or other commercial activities under that name.
Moreover, if the evidence indicated the likelihood that the Domain Name (and the company name) were chosen in order to exploit the Complainant’s trademark, that could not be considered a bona fide commercial use for purposes of the Policy. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847: “use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.” That issue is discussed further below in connection with the Complainant’s arguments concerning bad faith.
Although the Complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative proposition, requiring information that is primarily if not exclusively within the knowledge of the Respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the Domain Name, once the Complainant has made a prima facie showing (as it has in this case). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), section 2.1 (and cases cited therein). The Respondent has not done so in this proceeding, and the Panel finds, therefore, that the second element of the Complaint is established.
D. Registered and Used in Bad Faith
The Complainant infers bad faith from “the totality of the circumstances”, emphasizing that (a) the CLEAN REIT mark was registered years before the Domain Name was registered and CleanREIT Partners was formed and (b) the Respondent refused to transfer the Domain Name, and continued to renew it, after being notified about the mark. The latter facts are not sufficient, however, to establish bad faith both in the registration and the use of the Domain Name, as required by the Policy. The consensus view as reported in the WIPO Overview 2.0, section 3.7, is that the Policy requires a showing of bad faith at the time of initial registration by the respondent, rather than at the time of a later renewal of registration. See Mile, Inc. v. Michael Burg, WIPO Case No. D2010-2011. Moreover, while a failure to respond to allegations of trademark infringement might indicate a telling disregard for the trademark rights of others, disagreement over the extent of those rights it not itself a proof of bad faith. The Respondent in this case replied on several occasions to the Complainant’s assertions of trademark infringement and suggested alternatives, including disclaimers and alternate domain names, to further reduce the likelihood of confusion in the marketplace.
The problem for the Complainant, therefore, is establishing that the Respondent or its predecessor registered the Domain Name in 2009 in contemplation of the Complainant’s mark, hoping to benefit from it in the manner described by the Policy, paragraph 4(b):
“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”
Some UDRP panels have made findings of bad faith with reference to the respondent’s “constructive notice” of a registered trademark. However, the decisions typically recite additional facts lending support to the inference that the respondent had actual knowledge of the mark and a motivation to exploit it, such as the respondent’s participation in the relevant industry and evidence that the mark was famous or at least well known and long-established. See WIPO Overview 2.0, section 3.4 (and cases cited therein). The Panel is unwilling to conclude that the mere fact of trademark registration is sufficient to establish bad faith within the terms of the Policy.
Here, the fact that the Respondent’s principal, who also appears to be a principal of CleanREIT Partners, is a member of the Complainant organization makes it more likely that the Respondent was aware of the Complainant’s mark. The Response does not expressly deny such prior knowledge, although it denies any intent to mislead consumers. But the record does not establish that in 2009, when the Domain Name was registered, the mark was actively used by the Complainant or a third party licensed by the Complainant, much less that the mark was advertised or promoted in any manner that it could be considered well known or likely to have come to the Respondent’s attention even as a member of NAREIT. The mark is a composite of a dictionary word and a common acronym used by both parties, and it is entirely conceivable that both the Complainant and the Respondent found it conveniently descriptive of their different commercial purposes, as the Respondent contends.
As noted above, the Complainant has the burden of persuasion on all three elements of the Complaint. The last element, bad faith, is typically the most invisible and hardest to prove. In the end, the UDRP panelist must be persuaded from the available record that a respondent, more likely than not, registered and used the domain name at issue with the intent of exploiting the reputation of a mark held by a complainant. The Panel is not so persuaded in this proceeding. There is little evidence of commercial use of the mark and therefore little to support an inference of the Respondent’s actual knowledge of the mark or of the potential commercial value of emulating the mark in the Domain Name. The Panel concludes that the third element of the Complaint has not been established.
For all the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Dated: March 4, 2012