WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick
Case No. D2014-1359
1. The Parties
The Complainants are 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. of San Francisco, California, United States of America ("U.S.") represented by Kilpatrick Townsend & Stockton LLP, U.S.
The Respondent is John Kirkpatrick of San Francisco, California, U.S., represented by Owen, Wickersham & Erickson, PC, U.S.
2. The Domain Name and Registrar
The disputed domain name <luminacondo.com> 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 August 11, 2014. On August 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2014, 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 proceeding commenced on August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2014. The Respondent was granted an extension until September 22, 2014 in which to file a Response. The Response was filed with the Center on September 22, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on September 29, 2014. 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.
On October 13, 2014, the Panel issued an Administrative Procedural Order inviting the Parties to provide supplemental submissions regarding the United States Patent and Trademark Office's (USPTO) registration of the LUMINA mark, issued to the Complainant 201 Folsom Option JV, L.P. subsequent to the filing of the Complaint and the Response. The Panel's Order also invited the Complainants to provide information relating to the Complainant 201 Folsom Acquisition, L.P.'s assertion of rights in the LUMINA mark, and invited the Respondent to provide information relating to its contention that the Complainants are not Tishman Speyer companies. The Complainants and the Respondent filed their supplemental submissions to the Center on October 20, 2014.
In view of the foregoing, the date for the submission of the Panel's decision to the Center was extended to October 28, 2014.
4. Factual Background
The Complainants identify themselves as members of the Tishman Speyer family of companies.1 Tishman Speyer is large real estate owner, developer and operator. In February 2013 Tishman Speyer entered into a joint venture with China Vanke Co. Ltd. (Vanke), a large residential developer in China, to develop a luxury condominium project in the SoMa neighborhood of San Francisco, California, at 201 Folsom Street. Tishman Speyer was to be the developer, but Tishman Speyer and Vanke agreed to establish a limited partnership in connection with the project development. "Lumina" was the name given to the project.
On May 31, 2013, the Complainant 201 Folsom Option JV, L.P. filed on an intent to use trademark application for LUMINA with the USPTO. Subsequently, groundbreaking ceremonies for the project were held on June 26, 2013, at which time the Lumina name was publicly revealed. The official Lumina website at "www.luminasf.com" also was launched on June 26, 2013. The <luminasf.com> domain name, which resolves to the website, was registered by Tishman Speyer Properties. The website's home page displays a stylized LUMINA mark and renderings of the Lumina.
On September 23, 2014, the USPTO issued to the Complainant 201 Folsom Option JV, L.P. a registration certificate for LUMINA covering "real estate marketing services in the field of condominiums" in Class 35, and reflecting a first use date in June 2014. The USPTO's registration of the LUMINA mark came after the filing of the Complaint and Response; however, the USTPO approved the mark for publication on December 3, 2013, and a Statement of Use and use specimens were submitted by the Complainant on June 25, 2014, all prior to the filing of the Complaint.2 The USPTO also has issued a Notice of Allowance respecting the registration of LUMINA for "real estate services, namely, property management services for condominium associations, homeowner associations, and apartment buildings" in Class 36, and "restaurant services" in Class 43.3
The Respondent identifies himself as a leading Broker Associate for Coldwell Banker in San Francisco. The Respondent registered the disputed domain name <luminacondo.com> on July 4, 2013. The disputed domain resolves to a website on which the Respondent provides information about the Lumina development. A screen shot of the Respondent's website was captured on August 7, 2014.4 At that time the Respondent's website prominently displayed the stylized LUMINA mark, images of the Lumina properties displayed on the official LUMINA website, and floor plans.
On August 12, 2014, the Respondent modified his website to identify Polaris Pacific as the listing agent. This was inserted at the bottom of the website's home page, immediately below the Respondent's name and contact information. Subsequently, the Respondent has further modified his website to remove the stylized LUMINA mark, mock-up images of the completed property, and floor plans.5 The Respondent's website at present prominently displays the LUMINA word work mark at the top of the website's home page.6
5. Parties' Contentions
The Complainants submit that the disputed domain name is confusingly similar to the LUMINA mark. The Complainants explain that the addition of the common and descriptive term "condo" (short for condominium) does not serve to distinguish the disputed domain name from the Complainants' mark, but in fact increases the confusing similarity of the disputed domain name with the LUMINA mark.
The Complainants asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants explain that the Lumina condos are expected to be available in early 2015 and that sales efforts have already begun, with the condos marketed to the "very highest end of the condo market." The Complainants submit that due to the tremendous success of the Infinity, a related luxury condominium property developed by Tishman Speyer, there will be strong demand for the Lumina units, portending substantial and lucrative sales commissions for real estate agents/brokers in San Francisco. The Complainant relates that commissions paid to independent real estate agents arising from sales at the Infinity exceeded USD 12 million.
The Complainants represent that the Respondent has not been authorized to use the LUMINA mark, and that he has not been commonly known by the disputed domain name. The Complainants maintain that the Respondent registered and is using the disputed domain name and associated website to mislead consumers into thinking he enjoys an affiliation or special relationship with the Lumina, making him far more attractive as an agent or broker to potential buyers of Lumina condos, which in turn would potentially generate lucrative commissions for the Respondent. The Complainants further assert that the Respondent's website provides links to properties being offered by the Complainants competitors. The Complainants maintain that the Respondent's use of the disputed domain name cannot qualify as a bona fide offering of goods or services, or support a claim by the Respondent to be making a legitimate noncommercial or other fair use of the disputed domain name.
The Complainants contend that the Respondent registered and is using the disputed domain name in bad faith. The Complainants assert that the Respondent was aware of the Complainants' rights in the LUMINA mark when registering the disputed domain name, and that the Respondent is intentionally using the disputed domain name to capitalize on, or otherwise take advantage of, the Complainants' trademark rights, for commercial gain, by creating a likelihood of confusion with the Complainants' LUMINA mark as to source, sponsorship or affiliation.
ii. Complainants' Supplemental Filing
The Complainants urge the Panel to accept the USPTO's registration of the LUMINA mark to the Complainant 201 Folsom Option JV, L.P. as a sufficient showing of trademark rights for purposes of the Policy. The Complainants submit that as a related entity and the operator of the Lumina property the Complainant 201 Folsom Acquisition L.P. also has rights in the LUMINA mark. According to the Complainant's Supplemental Filing, the Complainants, both of which are limited partnerships, are controlled by the same general partner, TS 201 Folsom Promote, L.P., which in turn is controlled by Tishman Speyer. The Complainants request that an amendment to paragraph 40 of the Complaint be made to provide for the transfer of the disputed domain name to the Complainant 201 Folsom Option JV, L.P., should the Panel determine that the Complainant 201 Folsom Acquisition L.P. does not have an interest in the disputed domain name.
The Respondent initially submits that the Complaint should be denied, contending that the domain name dispute is merely ancillary to a much larger, complex disputes between the parties. The Respondent submits that he is a top broker associate with Coldwell Banker, that he has consistently been ranked within the top one percent of brokers internationally, and is the top individual producer at Coldwell Banker.7 The Respondent states that he is not a cybersquatter looking to make a quick buck or needing to ride the coattails of another to succeed, and adds that he is a giving and active member of his community.
The Respondent expresses his belief that the real party driving this action is Polaris Pacific, the exclusive listing agent for the Lumina. According to the Respondent, Polaris Pacific has the most to gain from disrupting his business. The Respondent submits this is so because, as the Complainants also observe, sales of Lumina condominiums will be at the "very highest end of the condo market." The Respondent predicts this will result in millions of dollars of commissions for independent real estate agents representing buyers.
The Respondent explains that the commissions given to independent real estate agents for sales of new properties is paid by the developer, and is generally around fifty percent of the total commission, with the other fifty percent going to the listing agent; but where there is no buyer's agent, the listing agent receives the total commission. This is why, according to the Respondent, Polaris Pacific, was the first of the Lumina interests to contact the Respondent, complaining that the Respondent's website content suggested that the Respondent was the exclusive listing agent for the Lumina, even though the website identified the Respondent as a Broker Associate at Coldwell Banker. The Respondent further represents that Polaris Pacific also voiced concern about intellectual property issues without identifying those issues specifically.
The Respondent explains that after further contact from Polaris Pacific, on August 12, 2014, as a concession to Polaris Pacific, and not an admission of liability, he changed the content of his website to specifically state that Polaris Pacific is the exclusive listing agent, and later removed from his website the mock-up images of the completed property, floor plans, and the stylized LUMINA mark.
The Respondent relates that Polaris Pacific filed an ethics complaint with the San Francisco Association of Realtors against the Respondent and Coldwell Banker, and that a response has been submitted denying any liability. The Respondent alleges that agents of Polaris Pacific and Tishman Speyer have since threatened not to acknowledge the Respondent's clients and not to pay a commission to the Respondent should one of his clients buy a Lumina residence. The Respondent further alleges that while attending a showing at the Lumina with a client, also attended by other agents and their clients, a Polaris Pacific representative approached and in a loud voice said that the Respondent would not receive commissions from Tishman Speyer.
The Response references settlement discussions between the Parties, but indicates that if no settlement is reached, Tishman Speyer and Polaris Pacific's alleged actions may result in claims by the Respondent for unfair business practices, restraint of trade, interference with prospective economic advantage, and slander.
According to the Respondent, UDRP panels have held, where the dispute concerning the domain name is ancillary to much larger disputes involving questions of ethical disputes and tortious conduct, that it would be inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute. The Respondent cites Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006, and Clinomics Biosciences, Inc. v. Simplicity Software, Inc., WIPO Case No. D2001-0823. The Respondent requests that the Complaint be denied for this reason.
Alternatively, the Respondent submits that the Complainants have not established trademark rights to the LUMINA mark. According to the Respondent, based on the evidence submitted by the Complainants it appears that the mark is owned by a third party, Tishman Speyer, and not by the Complainants. The Respondent asserts that the statement of use specimens for LUMINA submitted to the USPTO include the Tishman Speyer brand, creating the impression that the LUMINA mark and Lumina property are owned by Tishman Speyer. The Respondent further note that the domain name that resolves to the LUMINA website the Complainants claim to operate is registered to and owned by Tishman Speyer. The Respondent further alleges that the following legend on the website — "©2014, LUMINA I Real Estate Consulting, Sales and Marketing by Polaris Pacific" — suggests the website is operated by an entity called "LUMINA" or by Polaris Pacific, and not the Complainants.
The Respondent asserts that the Complainants have offered "absolutely no evidence" to support their claim to be part of the Tishman Speyer family of companies, or to establish that they own the LUMINA mark. If the Complainants are related to Tishman Speyer, the Respondent presumes that the entities were created for the purposes of separating certain assets and avoiding legal and financial liabilities for Tishman Speyer. The Respondent further argues that absent a contractual arrangement Tishman Speyer's use of the LUMINA mark would not inure to the "true owner", and the Respondent suggests "naked licensing" has occurred. The Respondent submits that the record reveals a "complicated ownership arrangement" raising complex questions of fact that cannot be resolved in a proceeding under the Policy.
The Respondent contends that he has established rights or legitimate interests in the disputed domain name by making a nominative fair use of the disputed domain name. According to the Respondent, he "needs to use the LUMINA mark to communicate to potential buyers that he can assist them in acquiring a property at the Lumina." The Respondent asserts that the nominative fair use doctrine allows the truthful use of a mark so long as it is not likely to cause confusion, even in the absence of a disclaimer, citing as authority Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171, 1177 (9th Cir. 2010) (hereinafter referred to as Tabari).
The Respondent submits that other UDRP panels have recognized that a domain name registrant may have the legitimate interest in using a domain name that incorporates a complainant's mark if the domain name is being used in connection with a bona fide offering of a complainant's goods or services, citing Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, and Red Pocket Inc. v. American Wireless LLC, WIPO Case No. D2013-0318. The Respondent maintains that he has always accurately listed on his website his name, title, and association with Coldwell Banker, has never suggested an affiliation or exclusive arrangement with the Complainants or their agents or licensees, and has not tried to corner the market in official sounding LUMINA-formative domain names. While the Respondent acknowledges that he has provided links to other sites on the website, he denies using the website as a means of offering his real estate services in connection with other properties.
Reiterating the foregoing, the Respondent denies bad faith registration and use of the disputed domain name. The Respondent further asserts that while his website informs Internet visitors that he helps sell other properties, this does not establish he is acting in bad faith. The Respondent notes that in Tabari the court indicated that the Tabaris' use of a LEXUS-formative domain name would not preclude them from advertising other automobile brands on the website.
Should the Panel conclude that the content on his original website goes beyond what is acceptable under nominative fair use principles, the Respondent submits that a mistake would not necessarily mean that his registration and use of the disputed domain name was in bad faith. According to the Respondent, it is common practice for real estate agents to register and use domain names that contain the names of properties for sale, and it is common practice for real estate agents to use the developer's mock-ups to show what the building will look like once completed – especially given that developers and agents have a common goal in selling units.
The Respondent maintains that he registered and is using the disputed domain name in good faith to help the Complainants sell their products. The Respondent further submits that his efforts to change his website and his attempt to salvage a relationship with Tishman Speyer and Polaris Pacific are evidence of his good faith intent.
ii. Respondent's Supplemental Filing
The Respondent submits that the USPTO's registration of the LUMINA mark to the Complainant 201 Folsom Option JV, L.P. makes little difference in this proceeding, since the Complainants assert common law right in the Complaint. The Respondent does not dispute that the LUMINA mark has been used in commerce or that trademark rights would flow from that use. Rather, the Respondent's argument is that the Complainants have failed to meet their burden to demonstrate they own rights to LUMINA under U.S. law. The Respondent's position is that there are substantive questions of fact as to (1) which party or parties own or use the mark; (2) whether the Complaint has been filed by the "true owner" of the mark; (3) whether there are additional or different "real parties-in-interest"; and (4) whether any rights in the mark "have been forfeited by the haphazard Tishman Speyer family-of-ownership structure asserted by the Complainants."
Regarding the relationship between the Complainants and Tishman Speyer, the Respondent states that he is not in a position to have access to the Complainants' business documents, contracts, or licenses, and that the Complainants have provided none. The Respondent observes that the Policy is not a forum in which discovery may be obtained, that the Respondent must rely on publicly accessible documents or the substance of the Complaint, and thus the Respondent has no additional facts about the Complainants' relationship with Tishman Speyer.
6. Preliminary Matters
As discussed above, the Respondent has requested the Complaint be denied based on an assertion that the domain name dispute is merely ancillary to much larger disputes involving alleged tortious conduct. In view of this, the Respondent argues that it would be inappropriate to use the Policy to attempt to carve out and resolve the relatively minor, but interconnected, domain name dispute.
The Respondent apparently relies on UDRP panel decisions in two cases: Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, supra and Clinomics Biosciences, Inc. v. Simplicity Software, Inc., supra. In Adaptive Molecular Technologies the panel decided that acquiescence and nominative fair use involved principles of trademark law that should be resolved by the courts, making the case inappropriate for resolution under the Policy. In Clinomics Biosciences, the complainant, owner of the CLINOMICS mark, hired the respondent to provide web development services. The respondent registered the domain name <clinomics.com>, and retained the domain name after the termination of the business relationship in an effort to collect on unpaid invoices. The panel concluded that matter was primarily contractual and therefore outside the scope of the Policy.
Neither of these decisions in the Panel's view is dispositive here. In each of these decisions the UDRP panel found that the ultimate question of the respondent's rights turned on the application of U.S. law and would be more appropriately resolved under traditional methods – i.e., through the courts. While the Respondent's claim of rights or legitimate interests also is predicated on nominative fair use, the Respondent correctly notes that nominative fair use principles have been recognized and applied by UDRP panels. Further, as discussed below, a determination of the Complainants rights in the LUMINA mark is clearly within the scope of the Policy.
The "larger disputes" referred to by the Respondent apparently involve alleged tort claims against Tishman Speyer and Polaris Pacific, which the Respondent indicates may be pursued if not settled. The Panel is not persuaded that the domain name dispute presented here is truly ancillary to these disputes. Nor has the Respondent notified the Panel of the initiation of any legal proceedings in respect of the disputed domain name pursuant to paragraph 18(b) of the Rules. The Panel therefore will proceed to a decision applying the substantive criteria of the Policy.8
7. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either 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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds that the disputed domain name <luminacondo.com> is confusingly similar to the LUMINA mark. In considering this issue of identity or confusing similarity, the first element of the Policy serves essentially as a standing requirement.9 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. In this case, the disputed domain name incorporates the LUMINA mark in its entirety. The addition of the word "condo" in the Panel's judgment does not serve to distinguish the disputed domain name from the LUMINA mark, and, if anything, calls to mind the Lumina project.
The record reflects use sufficient to establish unregistered or common law rights in the LUMINA mark. As noted earlier, the Respondent does not dispute that the LUMINA mark has been used in commerce or that trademark rights would flow from such use. Under U.S. trademark law, use of the mark may include use by related companies and licensees. There is credible evidence in the record that the Complainants and Tishman Speyer are related companies.10
The Respondent's position is that the Complainants have failed to meet their burden to demonstrate they own rights to the LUMINA mark under U.S. law. The Panel finds the Respondent's argument unpersuasive. The Complainant 201 Folsom Option JV, L.P. is the owner of a U.S. trademark registration for LUMINA. It is a consensus view of UDRP panelists that a complainant's ownership of a registered trademark generally satisfies the threshold requirement of having trademark rights. The date of registration is irrelevant for the purpose of finding rights in a trademark under the first element of the Policy. See WIPO Overview 2.0, paragraphs 1.1 and 1.4. See also Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445 (USPTO post-complaint approval of mark for publication sufficient evidence of complainant's rights in mark where record reflected use in commerce).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.11
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant's mark, and no suggestion has been made the Respondent has been commonly known by the disputed domain name. The disputed domain name incorporates the Complainant's LUMINA mark in its entirety, and resolves to a website where the Respondent is making an unauthorized use of the LUMINA mark for purposes of offering his services as a real estate agent or broker.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent contends that he has established rights or legitimate interests in the disputed domain name because he is using the domain name in connection with a bona fide offering of goods and services – namely, providing information to potential buyers of Lumina properties who may benefit from his services as a real estate agent or broker. As noted earlier, the Respondent asserts that he is entitled to and is making a nominative fair use of the Complainant's LUMINA mark under U.S. trademark law, relying largely on the Ninth Circuit Court of Appeals decision Toyota Motor Sales, U.S.A., Inc. v. Tabari.12 The Tabari decision builds on the Ninth Circuit's earlier decision in New Kids on the Block v. News American Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992), in which the court of appeals held the referential use of another's trademark is permissible where (1) the trademark owner's product or service cannot be readily identified without using the mark, (2) the mark is used only so much as is necessary for such identification, and (3) such use does not suggest sponsorship or endorsement by the mark owner.
In Tabari, the plaintiffs were auto brokers, who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com>. The Ninth Circuit reasoned that where a domain name making a nominative use of a mark does not suggest sponsorship or endorsement, the worst that can happen is that some consumers may arrive at the site uncertain as to what they will find.13 The Tabari court concluded that "momentary uncertainty" does not preclude the nominative use of another's mark in a domain name, provided that a truthful use is being made to describe the domain name registrant's business,14 but on the other hand observed that consumers may reasonably infer sponsorship or endorsement if a company unnecessarily uses a trademark or "more" of a mark than necessary.15 The Ninth Circuit also noted that the Tabaris had placed a disclaimer at the top of their website, which stated prominently and in large font: "We are not an authorized Lexus dealer or affiliated in any way with Lexus. We are an Independent Auto Broker." The Tabari court reasoned that consumers arriving at the Tabaris' site "would immediately see the disclaimer and would promptly be disabused of any notion that the Tabaris' website is sponsored by Toyota.16
As articulated in Ninth Circuit decisions, the nominative fair use doctrine rests on a fundamental principle that trademark law "does not prevent the truthful use of trademarks."17 Conversely, it is axiomatic under U.S. trademark law that the referential use of another's mark is permissible only to the extent necessary and that such use must not suggest a false affiliation or endorsement by the plaintiff.18 These principles have been applied by panels in UDRP decisions, initially in respect of resellers or distributors of trademarked goods or services that registered domain names containing the owner's mark.19 The leading decision is Oki Data Americas, Inc. v. ASD, Inc., supra (hereinafter "Oki Data"), and is relied on by the Respondent.
In Oki Data, the respondent was a reseller of the complainant's OKIDATA branded products, and registered the domain name <okidataparts.com>. The panel in Oki Data concluded that the use of a manufacturer's trademark as a domain name by a reseller could be deemed a "bona fide offering of goods or services" within the meaning of the Policy only if the following conditions are satisfied:
- the respondent must actually be offering the goods or services at issue;
- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);
- the site itself must accurately disclose the respondent's relationship with the trademark owner; and
- the respondent must not try to "corner the market" in all relevant domain names, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.
The Oki Data approach considers and applies nominative fair use principles not in the broader context of traditional trademark disputes, but with reference to the limited scope of the Policy, and specifically with respect to the respondent's use of the complainant's mark in a domain name. While the instant case does not involve a reseller or distributor of a manufacturer's trademarked products, several panels have concluded that consideration of the Oki Data criteria may be appropriate under the Policy in other contexts. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin' Connection, Inc., WIPO Case No. D2007-1524; Starwood Hotels & Resorts Worldwide Inc., The Sheraton LLC, Sheraton International Inc., Societe des Hotels Meridien, Westin Hotel Management L.P. v. Media Insight a/k/a Media Insights, WIPO Case No. D2010-0211; BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, WIPO Case No. D2010-1038; Project Management Institute v. CMN.com, WIPO Case No. D2013-2035.
After careful consideration of the totality of circumstances in the record, the Panel is of the view that the Respondent is making a less than bona fide use of the disputed domain name <luminacondo.com> under the Policy. In Tabari the domain names <buy-a-lexus.com> and <buyorleaselexus.com> accurately conveyed to Internet consumers that the plaintiffs sold or leased Lexus vehicles. The Tabari court also emphasized that any momentary confusion that Internet users might experience as to the endorsement or sponsorship of the Tabaris' website by Toyota was quickly dispelled by the disclaimer prominently displayed on the home page of the website.
Similarly, the panel in National Association for Stock Car Auto Racing, applying Oki Data criteriain determining whether the respondent had demonstrated legitimate interests by using the disputed domain name <nascartours.com> in connection with a bona fide offering of goods and services, observed:
"[T]he Panel finds that the Respondent is actually offering tours of NASCAR events, and only tours of NASCAR events, on the website associated with the Domain Name... The Respondent's business is NASCAR tours, just as the Domain Name implies... The Respondent's website accurately and prominently explains that the Respondent is a reseller and is not affiliated with the Complainant."
Unlike the domain names in Tabari, the disputed domain name adopted by the Respondent does not in the Panel's opinion accurately convey the message that the Respondent is an unaffiliated real estate agent who can assist potential buyers in acquiring a property at the Lumina. Internet visitors seeking out the Respondent's website could easily expect to arrive at an official website of the Complainant or at a website that otherwise is affiliated with, sponsored or endorsed in some manner by the Complainant.
In the absence of a prominent disclaimer on the Respondent's website, providing an accurate disclosure of the Respondent's relationship with the trademark owner as required under Oki Data, Internet user confusion as to affiliation, sponsorship or endorsement is unlikely to be dispelled by the website's content. The Respondent's eventual identification of Polaris Pacific as the listing agent, without more, does not in the Panel's opinion comport with the Oki Data requirement. This "concession" by the Respondent was not made until August 12, 2014, more than a year after the registration of the disputed domain name. The record reflects that filing of the Complaint on August 11, 2014. By the Respondent's on account, the other changes to the Respondent's website were not made until later. This is not in the Panel's view consistent with fair use principles. See BlackRock Institutional Trust Company, N.A. v. Investors FastTrack, supra.
The Respondent submits in his declaration that it is common practice in the San Francisco Bay Area for real estate agents to register and use domain names that contain the names of the properties that are for sale, and buyers in this area have come to expect a diligent, interested agent to use such domain names. The Respondent maintains that he acted in accordance with this common practice in this instance. The evidence proffered by the Respondent regarding this common practice, however, does not support the conclusion that the Respondent seeks to draw. Five examples of the use of LUMINA by other real estate agents promoting their services online to potential buyers have been submitted with the Response. In each case LUMINA is included in the post-domain paths of the URL (i.e., following the generic Top-Level Domain (gTLD)). In contrast to the disputed domain name registered by the Respondent, the domain names registered by these real estate agents do not include the LUMINA mark in the second level domain. In other words, none of these real estate agents registered a domain name incorporating the Complainant's LUMINA mark.20
U.S. courts have taken the view that the post-domain path of a URL simply shows how data is organized within a website, and that the use of another's trademark in the post-domain path is not an indicator of source, sponsorship, or affiliation. See, e.g., Interactive Prods. Corp. v. a2z Mobile Office Solutions, Inc., 326 F.3d 687, 696-98 (6th Cir. 2003) ("Because post-domain paths do not typically signify source, it is unlikely that the presence of another's trademark in a post-domain path of a URL would ever violate trademark law"). The Panel further notes that one of the agents' websites also includes a disclaimer of affiliation or sponsorship. If these five examples in fact are evidence of a common practice by real estate agents in San Francisco, it would appear that the Respondent's registration and use of a domain name incorporating the Complainant's LUMINA mark deviates from this practice.21
It is fundamental to the establishment of rights or legitimate interests under Oki Data, and to a claim of nominative fair use under U.S. law,that the Respondent takes steps to avoid using the Complainant's mark in a manner likely to cause consumer confusion as to source, sponsorship, affiliation or endorsement. Having regard to all of the relevant circumstances in this case, the record in this proceeding does not in the Panel's view support the Respondent's claim of nominative fair use. The Panel finds that the Respondent, before any notice to it of this dispute, had not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Panel further finds that the Respondent is not making a legitimate noncommercial or other fair use of the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is readily apparent that the Respondent was aware of the Complainant's LUMINA mark when registering the disputed domain name, as the Respondent registered the domain name shortly after the Complainant's groundbreaking ceremony and public launch of its website, and the Panel concludes from the facts and circumstances of this case that the Respondent more likely than not registered the disputed domain name based on the attractiveness of the Complainant's LUMINA mark, in order to drive traffic to the Respondent's website. In the attendant circumstances of this case, the Panel considers it more likely than not that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights, for commercial gain, by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship or affiliation. See Edmunds.com, Inc. v. Ult. Search Inc., WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <luminacondo.com> be transferred to the Complainant 201 Folsom Option JV, L.P.
William R. Towns
Date: October 28, 2014
1 The Complainants have submitted a sworn declaration from a director of Tishman Speyer attesting on personal knowledge to this. Complaint, Ex. J (Declaration of Joseph W. Victor).
2 This information is publicly available on the USPTO's website through the USPTO's online Trademark Electronic Search System (TESS).
3 The Complainant 201 Folsom Option JV, L.P. initially filed intent to use (ITU) application for LUMINA (S/N 85947425) on May 31, 2013, for real estate and restaurant services in Classes 35, 36, and 43. On June 25, 2014, the Complainant requested that the LUMINA application be divided by the USTPO between Class 35 services, for which the Complainant asserted use, and the Class 36 and 43 services filed on an ITU basis. The USPTO granted the Complainant's request, retaining in the original ("parent") application Classes 36 and 42 services (S/N 85947425), and creating the "child" application (S/N 85982622) respecting the Class 35 services. In addition to registering the "child" LUMIINA for real estate services in Class 35 on September 23, 2014, the USPTO on August 5, 2014, issued a Notice of Allowance (NOA) for the "parent" LUMINA application covering the claimed services in Classes 36 and 43.
4 Complaint, Ex. I.
5 Response, Annex A (Declaration of John Kirkpatrick).
6 Response, Annex C.
7 The Respondent has submitted his own sworn declaration supporting the factual allegations in the Response.
8 This Panel's decision addresses only the dispute under the Policy, and would have no effect on any claims the Respondent may subsequently elect to pursue in other forums. See Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445 (at n.3).
10 It is undisputed that the Lumina project is the result of a joint venture between Tishman Speyer and Vanke, and that Tishman Speyer was the developer. This is acknowledged by the Respondent. Under the attendant circumstances of this case the Panel considers the sworn declaration of the Tishman Speyer's director, attested to on personal knowledge, to be credible.
11 As the Panel has determined that Complainant 201 Folsom Option JV, L.P. is the owner of the LUMINA mark, the Panel finds it unnecessary to address whether the second Complainant also has rights in the mark. As used hereinafter "Complainant" refers to 201 Folsom Option JV, L.P. unless otherwise indicated.
12 610 F.3d 1171 (9th Cir. 2010).
13 610 F.3d at 1179.
15 Id. at 1176.
16 Id. at 1181-82.
17 Id. at 1176-77. This principle was recognized long before the Ninth Circuit coined the term "nominative fair use." See Prestonettes, Inc. v. Coty, 264 U.S. 359, 368-69 (1924) ("When the mark is used in a way that does not deceive the public we see no such sanctity in the word as to prevent its being used to tell the truth"). See, e.g., Bandag, Inc. v. Al Bolser's Tire Stores, Inc., 750 F.2d 903, 916 (Fed. Cir. 1984) (independent tire dealer may use tire manufacturer's mark "to truthfully convey to consumers" that it sells refurbished products); Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1959) (independent service station that repaired Volkswagen cars). See also Nitro Leisure Products, L.L.C. v. Acushnet Co., 341 F.3d 1356, 1362 (Fed. Cir. 2003).
18 See Tabari, 610 F.3d at 1171.
20 "www.paulhwang.com/LUMINA_AD.html", "www.sanfranciscocondomania.corn/condos/LUMINA.php",
"www.sfcitycondos.com/lumina-sf/", "www.urbane-sf.com/Lumina-Infinity-phase-2", and
"www.sfdreamrentalsales.com/property/lumina.html". Response, Annex D.
21 The Respondent provides another example involving a listing agent's use of the domain name <infinityviews.com> in connection with what appear to be the re-sale of an individual unit at the Infinity by a previous buyer. Response, Annex E. The Panel cannot determine whether or not the listing agent may be making an authorized use of the "Infinity" designation, but in any event, a single example of such use is not sufficient to demonstrate a common practice among real estate agents or brokers.