WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Arizona Golf Properties, Inc. v. Mr. Dean Benigno d/b/a Realty Executives
Case No. D2003-0571
1. The Parties
The Complainant is Arizona Golf Properties, Inc., a corporation organized under the laws of the State of Arizona, United States of America, having its principal place of business at Carefree, Arizona, United States of America.
The Respondent is Mr. Dean Benigno d/b/a Realty Executives in Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <arizonagolfproperties.com>. The registrar for the disputed domain name is Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 22, 2003. On July 23, 2003, the Center transmitted by email to Network Solutions, Inc. a request for verification in connection with the domain name at issue. On July 30, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 July 31, 2003. The Response was filed with the Center August 20, 2003.
The Center appointed Mark Partridge, Steven Fox and Diane Cabell as panelists in this matter on September 24, 2003. The Panel finds that it was properly constituted. Each member of 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 incorporated its business name "Arizona Golf Properties" in the State of Arizona on March 4, 1996, and has been using the name in interstate commerce since January 1, 1997. The Complainant is also the owner of pending U.S. Service Mark Application No. 76/169176 for the mark ARIZONA GOLF PROPERTIES for use for real estate agencies, including real estate listing and real estate brokerage services.
Respondent Dean Benigno is a real estate broker in Scottsdale, Arizona, doing business as Realty Executives. Respondent has been involved in the business of selling real estate in Arizona with an emphasis on golf properties since 1988. In the 1990s, he and his family published a magazine called "Exclusive Arizona Golf Properties and Luxury Homes".
In May 1997, the Respondent caused the domain name <arizonagolfproperties.com> to be registered by T.G. International, a web site developer no longer in business. The domain name was transferred to Realty Executives in late June or early July of 2003, with Mr. Benigno listed as the Administrative Contact.
On May 5, 2003, the Complainant, through its attorney, sent a cease and desist letter to T.G. International requesting that its use of <arizonagolfproperties.com> be stopped based on its confusing similarity to Complainantís service mark. The letter was also forwarded to Respondent on the same date.
5. Partiesí Contentions
Complainant contends that Respondent, through T.G. International, caused to be registered a domain name that is confusingly similar to the Complainantís service mark, as the domain name is identical to the Complainantís mark.
Complainant contends that Respondent has no rights or legitimate interests in the domain name. Respondentís business name, Realty Executives, is very different from the domain name, whereas Complainantís business name and pending service mark are identical to the domain name. Complainant contends that Respondent is not commonly known as Arizona Golf Properties. Complainant therefore concludes that Respondent is not making a legitimate non-commercial or fair use of the domain name as Respondent is using the site for commercial purposes. Complainant further contends that Respondentís use of the site misleads consumers. Additionally, Complainant contends that Respondent knew or should have known of Complainantís rights in the domain name as both Complainant and Respondent are real estate companies in the Scottsdale, Arizona area that deal with similar properties.
Finally, Complainant contends that Respondent registered and is using the domain name in bad faith. Both T.G. International and Respondent were sent a cease and desist letter by Complainantís attorney on May 5, 2003, and thus Respondentís acquisition of the domain name from T.G. International in late June or early July of 2003, was made with knowledge of Complainantís rights in the domain name. Additionally, the letter alleged that Respondent is using the domain name in bad faith as its only purpose is to confuse consumers, by creating a likelihood of confusion, and preventing Complainant from obtaining the domain name in dispute. Because the Respondent and Complainant are within the same industry and area, the Respondent knew or should have known of the Complainant, its use of the service mark, and that the Complainant previously registered its business name in Arizona.
Respondent contends that it has sold real estate in the Scottsdale, Arizona area since 1987, and has focused on selling golf properties and luxury homes since 1988. Throughout the 1990s, the Respondent, along with his family, published a magazine called "Exclusive Arizona Golf Properties and Luxury Homes." Respondent registered the domain name <arizonagolfproperties.com> in May 1997, and has maintained a web site focused on selling golf properties in Arizona ever since.
Respondent contends that the domain name is not confusingly similar to a mark in which the Complainant has rights, that Complainantís pending service mark is merely descriptive and therefore the Complainant must show that the mark had acquired secondary meaning prior to the time at which Respondent registered the domain name, and that Complainantís first use of the mark was in January of 1997. Accordingly Complainant must show that the mark obtained secondary meaning prior to the Respondentís registration of the domain name in May of 1997.
Respondent also contends that it has a legitimate interest in the domain name. Respondent notes that his use of the <arizonagolfproperties.com> domain name came years before notice of this dispute and without awareness that the Complainant was using the phrase. Respondent notes that he and his family have published the magazine "Exclusive Arizona Golf Properties and Luxury Homes" throughout the 1990s. Respondent states that the domain name was chosen because it described what he sold, and he wanted a domain name that reflected this.
Respondent contends that his registration and use of the domain name were in good faith. Respondent argues that he is not a cybersquatter, and has not registered the domain name for any other illegitimate purpose. To the contrary, Respondent notes that he is not using the domain name to deprive the Complainant of use, but instead is using the name because of its connection to his business and to the name of the magazine published by Respondent and his family. Additionally, Respondent contends that he was unaware of the Complainantís use of the mark. Respondent also maintains that the transfer of the domain name from T.G. International to Realty Executives was not in bad faith. Respondent notes that the domain name was initially registered to T.G. International because the company was the developer of the web site. Respondent also contends that the transfer of the name to Realty Executives was intended to put the domain name in the name of its true owner, Mr. Benigno, but was mistakenly placed in the name of Mr. Benignoís business, Realty Executives.
6. Discussion and Findings
Paragraph 15(a) of the Rules states: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since all parties are domiciled in the United States, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements: "(i) [the] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) [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."
A. Identical or Confusingly Similar
The question in this proceeding is not whether Respondentís domain name is identical or confusingly similar to Complainantís mark. Respondent registered the domain name <arizonagolfproperties.com>, which is identical to Complainantís alleged mark ARIZONA GOLF PROPERTIES, except for the addition of the ".com," which is without legal significance. Instead, the issue here is whether the Complainant actually has rights in the mark which are superior to the Respondentís rights in the domain name.
Although Complainant has a pending application to register the mark ARIZONA GOLF PROPERTIES, that application does not create any rights in the mark until the application matures to registration.
Complainantís service mark appears to be merely descriptive of the product Complainant sells, namely golf properties in Arizona. As such, Complainant must show that the mark has acquired secondary meaning for the mark to be protectable. "Trademark protection for descriptive marks is extended only in recognition of consumer acceptance and recognition of such mark as denoting only one seller or source." McCarthy on Trademarks, ß11:25. More importantly, a determination of priority involving a descriptive mark is "focused on when, where, and how secondary meaning was in fact established in the mark." Id. at ß16:34. In this context, U.S. case law makes clear that even if the Complainant "has acquired a right in a mark, it cannot prevent the use of that mark by one whose use had begun before the secondary meaning was acquired." Calvin Klein Co. v. Farah Mfg. Co., 229 U.S.P.Q. 795, 800 (S.D.N.Y. 1985).
Here, Complainant began using the name Arizona Golf Properties in commerce as of January 1, 1997. The Respondent registered the domain name <arizonagolfproperties.com> in May of the same year. Thus, Complainant must establish that the mark ARIZONA GOLF PROPERTIES had attained secondary meaning in the minds of consumers.
While it is highly doubtful that Complainant could establish that such secondary meaning had attached, the simple fact is that Complainant has produced no evidence as to this point. The Policy places the burden of establishing all the elements on the Complainant. Since Complainant has failed to establish this point, the Panel must find that the Respondent has not registered a domain name that is identical or confusingly similar to a mark in which the Complainant has rights.
B. Rights or Legitimate Interests
While the adverse finding on the first necessary element of the claim would be sufficient for ruling Respondent's favor, for the sake of completeness the Panel will address the remaining issues as well.
Complainant has also failed to establish that the Respondent does not have rights or legitimate interests in the domain name. Under Paragraph 4(c)(i) of the Policy, a Respondentís legitimate interest in a domain name can be established by a showing that before Respondent had notice of the dispute, Respondent was using "the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services." As the facts show, Respondent caused the domain name to be registered in May 1997, and a web site has been in operation at the domain name ever since. This registration occurred six years prior to any notice of any dispute regarding the domain name.
Moreover, it appears that Respondent has been commonly known by the domain name, even though no trademark or service mark rights have been acquired. See Policy Paragraph 4(c)(ii). Respondent was involved in the publication of a magazine entitled "Exclusive Arizona Golf Properties and Luxury Homes" in the 1990s. The Respondentís mother, Joanne Bradley, has owned an Arizona trade name registration for EXCLUSIVE ARIZONA GOLF PROPERTIES AND LUXURY HOMES since 1991.
Considering the above, it appears that Respondent does have a legitimate interest in the domain name <arizonagolfproperties.com>. Again, the burden is on the Complainant to show the Respondentís lack of such interest, and the Complainant has failed to do so.
C. Registration and Use in Bad Faith
Finally, Complainant has not established that Respondent registered, and is using the domain name in bad faith. Respondent does not appear to be a cybersquatter. There have been no attempts by Respondent to sell the domain name to the Complainant at a price above the cost to Respondent of obtaining the domain name. Moreover, there is no indication that Respondent is attempting to disrupt Complainantís business or cause confusion among consumers. In short, Complainant has not established that any of the four types of bad faith listed in Paragraph 4(c) of the Policy are present in this case. Additionally, nothing alleged convinces the Panel that any other type of bad faith is present.
We find in favor of Respondent and deny the relief requested by Complainant.
Dated: October 6, 2003