WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Long Realty Uptown v. Domains By Proxy, LLC / Lloyd Fox
Case No. D2015-2076
1. The Parties
Complainant is Long Realty Uptown of Phoenix, Arizona, United States of America, internally represented.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America / Lloyd Fox of Phoenix, Arizona, United States of America, self-represented.
2. The Domain Name and Registrar
The disputed domain name <longrealtyuptown.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 November 12, 2015. On November 16, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 2015, 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 Complainant on November 20, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 24, 2015.
The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 25, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2015. The Response was filed with the Center on December 12, 2015.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on December 21, 2015. 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.
In its Response, Respondent indicated its desire to transfer the disputed domain name to Long Realty Company, Complainant's franchisor, at the direction of Long Realty Company, and Respondent requested that the domain name lock be released for that purpose. By email of December 15, 2015, the Center requested Complainant, in light of the Response, to advise whether it wished to suspend this proceeding for purposes of settlement negotiations, or for the Center to continue with appointment of the Panel. By email dated December 16, 2015, Complainant indicated it preferred for this proceeding to move forward.
Following a preliminary review of the case file in this matter, the Panel (through the Center) issued Administrative Panel Procedural Order No. 1 of January 6, 2016, further to which it requested that Complainant provide a signed and notarized authorization from its franchisor, Long Realty Co., Inc., for the filing of the Complaint and consent to Complainant acting as transferee of the disputed domain name should it be successful. By email dated January 6, 2016, Respondent indicated that Complainant was slowing the process down by pursuing this proceeding, as Respondent was prepared to transfer the disputed domain name to the franchisor. By email dated January 7, 2016, Complainant furnished the authorization and consent from Long Realty Co., Inc., as requested by the aforesaid Administrative Order.
4. Factual Background
Complainant is franchisee of Roy H. Long Realty Co., Inc., an Arizona corporation (hereinafter "Franchisor"). By the terms of the Franchise Agreement between Franchisor and Complainant, dated October 6, 2015, Complainant is authorized to use the registered service mark, LONG REALTY, owned by Franchisor, for certain purposes in connection with Complainant's business. While the Franchise Agreement does not authorize Complainant to initiate legal proceedings to protect Franchisor's service mark rights, Franchisor has expressly authorized Complainant to pursue this proceeding under the Policy and to act as transferee of the disputed domain name should it be successful. Franchisor is the owner of registration of the word service mark LONG REALTY on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 2994328, registration dated September 13, 2005, in international classes 35 and 36, covering relocation services and real estate services, including, inter alia, brokerage services.
Complainant is a full-service brokerage operating in Phoenix, Arizona, under a Franchise Agreement with Franchisor. Pursuant to the Franchise Agreement, Complainant is authorized to operate under the name "Long Realty Uptown", and Complainant does so operate.1
According to the Registrar's verification, Respondent (Lloyd Fox, an individual) is registrant of the disputed domain name. According to that verification, the record of registration of the disputed domain name was created on October 15, 2015, and has been registered to Respondent since at least November 16, 2015.
Respondent has used the disputed domain name to direct Internet users to a website identified as Uptown Realty, a brokerage operation doing business in competition with Complainant's "Long Realty Uptown" in the Phoenix, Arizona area. The disputed domain name was registered with a privacy service. Prior to the filing of the Complaint, Complainant was unable to determine the identity of the registrant of the disputed domain name. Complainant was in touch with the owner of Uptown Realty. Based on email correspondence between Complainant and the owner of Uptown Realty, it would appear that the designated broker of Uptown Realty was as surprised as Complainant to learn that the disputed domain name was directed to his website. There is no indication whatsoever that the owner of Uptown Realty had any knowledge or participation in arranging the registration and use of the disputed domain name.
Respondent, like Complainant, is a franchisee of Franchisor, operating in the Phoenix, Arizona area. Respondent has provided no explanation for his decision to register the disputed domain name or direct it to a competitor of Complainant. There is no indication that Respondent had permission from Franchisor to use its trademark in connection with the term "uptown" in the disputed domain name, and correspondence from Respondent makes clear that Complainant has objected to Respondent's registration and use of the disputed domain name.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
5. Parties' Contentions
Complainant alleges that it has rights in the trademark LONG REALTY based on its Franchise Agreement with the owner of trademark registration for that term, and that is has secured express authorization to use the trademark in its domain name.
Complainant argues that the disputed domain name is confusingly similar to the trademark in which it has rights because the term "Uptown" is used by it in conjunction with the trademark to form its business trade name, and Internet users would presume that the disputed domain name directs them to the business operated by Complainant.
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not related to Complainant and has never had any ownership interest in Complainant's business; (2) Respondent is required pursuant to its franchise agreement to obtain approval from Franchisor for use of Franchisor's trademark, and Respondent has not obtained consent from Franchisor for use of the term "uptown" in connection with its trademark; (3) Respondent used a privacy shield specifically to prevent Complainant and Franchisor from learning its identity, and; (4) the disputed domain name has been used to direct Internet users to a brokerage that is in no way affiliated with Franchisor or Complainant.
Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Respondent by directing Internet users to a competitor of Complainant is attempting to disrupt and damage the business of Complainant; (2) Respondent has sought to damage the reputation of an independent brokerage, Uptown Realty, by creating the appearance that Uptown Realty had engaged in a practice seeking to take unfair advantage of Complainant.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent has indicated that it has been directed by Franchisor to transfer the disputed domain name to Franchisor.
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent by email, fax and express courier. Respondent by his filing of the Response has confirmed receipt of the Complaint. The Center followed the procedures for notification established by the Rules. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by Complainant to merit a finding that Respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Complainant's Franchisor owns rights in the service mark LONG REALTY as evidenced by registration at the USPTO, and by use in commerce in the United States (see Factual Background, supra). Respondent has not challenged the service mark ownership rights of Franchisor. Complainant is authorized to use the LONG REALTY service mark in connection with its business as specified in its Franchise Agreement, and has been expressly authorized by Franchisor to pursue this proceeding under the Policy and to act as transferee of the disputed domain name should it be successful. The Panel determines that Complainant has rights in the service mark within the meaning of the Policy.
The disputed domain name directly incorporates Complainant-franchisee's service mark, and adds the term "uptown". The term "uptown" is distinctively associated with the business operated by Complainant-franchisee in combination with the service mark. When the disputed domain name <longrealtyuptown.com> is viewed by Internet users they would likely understand it to refer to Complainant's business. The Panel determines that the disputed domain name is confusingly similar to Complainant-franchisee's service mark.
The Panel determines that Complainant has rights in a service mark and that the disputed domain name is confusingly similar to that mark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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." (Policy, paragraph 4(c)).
Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not presented evidence that might rebut the prima facie showing by Complainant.
The evidence before the Panel does not otherwise suggest rights or legitimate interests on the part of Respondent.
The Panel determines that Complainant has demonstrated that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These include that "(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor".
The evidence presented to the Panel indicates that Respondent registered and is using the disputed domain name for the purpose of diverting business away from Complainant, a recently-formed competing franchisee of Franchisor. There is no apparent motive attributable to Respondent other than to injure Complainant. Such action is manifestly in bad faith.
The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(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 <longrealtyuptown.com> be transferred to Complainant.
Frederick M. Abbott
Date: January 8, 2016
1 See, e.g., annexed records of email correspondence from Complainant's designated