WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lennar Pacific Properties Management, Inc., Lennar Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / Amy Sutherland, Sutherland Dynamic
Case No. D2020-1421
1. The Parties
The Complainants are Lennar Pacific Properties Management, Inc. and Lennar Corporation, United States of America (“United States”), represented by Slates Harwell LLP, United States.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Amy Sutherland, Sutherland Dynamic, United States.
2. The Domain Name and Registrar
The disputed domain name <lennarco.xyz> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 9, 2020 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amendment to the Complaint on June 9, 2020.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 1, 2020.
The Center appointed David H. Bernstein as the sole panelist in this matter on July 8, 2020. 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 Lennar Pacific Properties Management Inc. (“LPPM”) is the owner of United States trademark registrations for LENNAR (stylized) (Reg. No. 3,108,401, registered on June 27, 2006 with first use claimed back to 1973) for various financial and real estate services, and LENNAR (Reg. No. 3,477,143, registered on July 29, 2008 with first use claimed back to 2006) for various real estate services. The Complainant Lennar Corporation (“Lennar”), a subsidiary of LPPM, is a licensee of the trademark and the owner and operator of the website located at “www.lennar.com”, which relates to services that are offered under the registered trademarks. Lennar has built and sold homes in twenty-one states in the United States.
LPPM also owns registrations for its LENNAR marks in China (Reg. No. 14666601, 22542887, and 14666599), Turkey (Reg. No. 201797484), and Brazil (Reg. No. 912898739).
The disputed domain name was registered on October 12, 2019.
On March 30, 2020, Lennar sent a cease-and-desist letter to the Respondent. Lennar has not received any response.
At the time of the filing of the Complaint, and as of the date of this decision, the disputed domain name does not resolve to an active website. At the time of the Complainants’ demand letter to the Respondent, the disputed domain name resolved to a website containing pay-per-click (“PPC”) ads including links to such topics as “home warranty,” “available new homes,” “homes and house plans,” “Lennar homes,” and “new homes.”
5. Parties’ Contentions
A. Complainant
The Complainants contend that the disputed domain name incorporates the Complainants’ LENNAR trademark in its entirety, and that the disputed domain name is therefore confusingly similar to their trademark. The Complainants further contend that the additional descriptive word “co” will be understood as a reference to “company” or “corporation.” The addition of this descriptive term to the LENNAR trademark does not negate the confusing similarity between the LENNAR mark and the disputed domain name.
The Complainants assert that the Respondent has no rights or legitimate interests in the disputed domain name as there is no evidence of the Respondent’s use or preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Complainants contend that the Respondent has not been commonly known by the disputed domain name, nor have the Complainants authorized or licensed the Respondent to use their trademark. The Complainants assert that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.
The Complainants further contend that the Respondent is merely passively holding the disputed domain name which constitutes bad faith. To support this contention, the Complainants point to (i) the reputation of the trademark, as evidenced by the trademark registrations, (ii) the Respondent’s failure to respond, (iii) the Respondent’s use of a privacy service to conceal his or her true identity, and (iv) that there is no conceivable good faith use to which the Respondent could put the disputed domain name that would not infringe the Complainants’ LENNAR mark.
The Complainants also contend that the Respondent’s registration and use of the disputed domain name is disrupting the Complainants’ business. The Complainants support this contention by pointing to the lack of a response to both the cease-and-desist letter and the Complaint itself.
B. Respondent
The Respondent did not reply to the Complainants’ contentions.1
6. Discussion and Findings
A. Procedural Ruling
As an initial matter, the Panel addresses the issue of the proper Complainant(s). “In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), Section 4.11.1.
The Panel finds that both LPPM and Lennar are proper Complainants. Both parties have a specific common grievance against the Respondent as LPPM is the owner of the trademark at issue and Lennar is the licensee of the LENNAR mark and owner of the website “www.lennar.com”. In light of this shared grievance, it would be equitable and procedurally efficient to permit this consolidation. Furthermore, there is no dispute as to which Complainant should receive transfer of the disputed domain name, as the Complainants have specified Lennar as the receiving party of the transferred disputed domain name. See WIPO Overview 3.0, Section 1.4.2.
B. Merits Decision
Paragraph 4(a) of the Policy provides that, to justify transfer of a domain name, a complainant must prove 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 respondent’s domain name has been registered and is being used in bad faith.
i. Identical or Confusingly Similar
The Complainants have established their rights to the LENNAR trademark. LPPM’s ownership of the United States trademark registrations “satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case.” WIPO Overview 3.0, section 1.2.
As the WIPO Overview makes clear, “in cases where a domain name incorporates the entirety of a trademark,” as is the case here, “the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview 3.0, section 1.7; Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505. The addition of a descriptive term, such as “co”, does not prevent the disputed domain name from being seen as confusingly similar to the trademark. WIPO Overview 3.0, section 1.8.
Unless the generic Top-Level Domain (“gTLD”) has some relevance to the assessment of identicality or confusing similarity (which is rare under the Policy, see e.g., comparing the domain name <tes.co> to the trademark TESCO, Tesco Stores Limited v. M.F, WIPO Case No. DCO2013-0017), the Top-Level Domain may be disregarded for purposes of assessing whether the domain name is identical or confusingly similar. Accordingly, the gTLD “.xyz” may be disregarded in this case as it is a functional element. Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Godaddy.com, Inc., WIPO Case No. D2017-0246.
The Panel therefore concludes that the Complainants have satisfied the first element of the Policy.
ii. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a disputed domain name by demonstrating the following:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Section 2.1 of the WIPO Overview 3.0 states that, in order to satisfy the second UDRP element, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interests. The burden of production will then shift to the respondent to come forward with evidence showcasing rights or legitimate interest in the use of the domain name (although the burden of proof always remains on the complainant). This burden of proof is low due to the difficulty in producing evidence which would support a negative statement. If the respondent fails to respond or come forward with such evidence, the complainant satisfies the second element.
The Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainants have produced evidence demonstrating that the Respondent has not used, and does not appear to be preparing to use, the disputed domain name in connection with any bona fide offering of goods or services or for any legitimate noncommercial or fair use of the disputed domain name. As of the time of this decision, the disputed domain name does not resolve to an active website; in the past, it has resolved to a website with PPC links that sought to capitalize on the Complainants’ trademark by virtue of their advertising goods and services that compete with the Complainants. See WIPO Overview, Section 2.9 (“the use of a domain name to host a parked page comprising of PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”). Additionally, the Complainants have alleged that they never authorized or licensed the Respondent to use their trademark, and that there is no affiliation between the Respondent and the Complainants.
The Respondent has not responded to the Complaint, which means that the Complainants’ prima facie showing is unrebutted. Accordingly, the Complainants have satisfied the second element of the Policy.
iii. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the disputed domain name can be considered to have been used and registered in bad faith if:
(i) circumstances indicate that the respondent has registered and has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the complainant from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.
The Respondent’s current passive holding of the disputed domain name supports a finding of bad faith. As explained in Section 3.3 of the WIPO Overview 3.0, “the non-use of a domain name (including a blank or coming soon page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good-faith use to which the domain name may be put.”
Here, all four of those factors are present and support a finding of bad faith.
First, the LENNAR mark is distinctive. Although the file wrapper for LPPM’s registration for the LENNAR word mark reflects that the United States Patent and Trademark Office (“USPTO”) originally refused registration on the ground that Lennar is a surname, the trademark registrations were ultimately registered under section 2(f) of the Lanham Act with a claim of “acquired distinctiveness” based on the mark’s continuous use in commerce since 1973. As for the reputation of the mark, the fact that the mark has been in use for more than four decades and has been used in connection with the sale of homes in nearly half the states in the United States suggests that the mark has some reputation.
Second, the Respondent has failed to submit a Response or to provide any evidence of actual or contemplated good faith use. If the Respondent had some good faith basis for registering and using the disputed domain name, it was the Respondent’s burden to bring that information to the Panel’s attention once the Complainants made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. Even without a Response, the Panel could still assess whether the Respondent appears to have rights or legitimate interests based on other evidence – such as the Respondent’s name or the contents of the Respondent’s website – but here, there is no other evidence available to the Panel that could support such a finding.
Third, the Respondent initially concealed its identity by registering the disputed domain name through a privacy service. Although there can be some legitimate reasons to use a privacy service, here, the use of a privacy service has frustrated the Complainants’ ability to investigate the Respondent’s possible legitimate intentions, interfered with the Complainants’ ability to try to reach out to the Respondent to resolve this dispute short of filing a Complaint, and increased the time and cost of this proceeding because the Complainants had to file an amendment to their Complaint once the Respondent’s true identity was revealed by the Registrar. Seegenerally WIPO Decision Overview 3.0, Section 3.6.
Fourth, it is implausible that the Respondent could use the disputed domain name in good faith. By registering a domain name that consists of “Lennar Co” and the TLD “.xyz,” the disputed domain name impersonates the Complainants. Such impersonation is likely to cause Internet users to believe that the disputed domain name is authorized by or affiliated with the trademark holder. Dover Downs Gaming & Entertainment, Inc. v. Domains By Proxy, LLC / Harold Carter Jr, Purlin Pal LLC, WIPO Case No. D2019-0633. See generally WIPO Decision Overview 3.0, Section 2.5.1.
In addition, the Annexes to the Complaint reveal that the Respondent used the disputed domain name for a PPC landing page at the time of the Complainant’s demand letter to the Respondent. If the PPC links were related solely to the Lennar surname, those uses may have been legitimate. See WIPO Overview 3.0, Section 2.9 (“Panels have recognized that the use of a domain name to host a page comprising of PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark”). Here, though, the links all related to the kind of home-related goods and services that the Complainants offer, which shows that the Respondent was taking advantage of the trademark value of the LENNAR mark with its registration and use of the disputed domain name. Id. The fact that the Respondent disabled the PPC landing page at some point after receipt of the Complainants’ demand letter does not vitiate the fact that the Respondent did use the disputed domain name in bad faith, which also supports an inference that the registration was in bad faith as well.
The Panel therefore concludes that the Complainants have satisfied the third element of the Policy.
7. Decision
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 <lennarco.xyz> be transferred to the Complainant Lennar.
David H. Bernstein
Sole Panelist
Date: July 22, 2020
1 Given the absence of a Response, the Panel has carefully reviewed the record to ensure that the Center discharged its obligations to give the Respondent fair notice of this proceeding. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, WIPO Case No. D2000-1415. In an attempt to provide notice to the Respondent, the Center sent notification of the Complaint to the Respondent via email, fax and (DHL) courier. The Center’s records reflect that, although the email notices bounced back, the fax notice was successfully transmitted and both packages sent via courier were successfully delivered. In light of the successful transmission of the Notice of Complaint via fax and courier, it appears that the Respondent received actual notice of the Complaint. Regardless, even if the Respondent did not receive actual notice, the Panel finds that the Center has discharged its obligation to provide fair notice to the Respondent under paragraph 2(a) of the Rules. Sermo, Inc. v. CatalystMD, LLC, WIPO Case No. D2008-0647.
2 The .xyz TLD has the claimed intention of connecting Generations X, Y, and Z. See https://nic.xyz.