WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Howard Hughes Company, LLC v. Luke Cash, Sulumena Development Inc
Case No. D2016-0585
1. The Parties
Complainant is The Howard Hughes Company, LLC of Dallas, Texas, United States of America, represented by CSC Digital Brand Services AB, Sweden.
Respondent is Luke Cash, Sulumena Development Inc of Houston, Texas, United States.
2. The Domain Name and Registrar
The disputed domain name <howardhughesdevelopment.com> is registered with GoDaddy.com, LLC ("Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("Center") on March 25, 2016. On March 29, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the WhoIs information and other details pertaining to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("Supplemental Rules").
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on April 5, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2016. A communication from Respondent (received from two different email addresses) was received by the Center on April 8, 2016.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 3, 2016. 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
Complainant owns U.S. federal and European Union trademark registrations for a number of marks that include the name "Howard Hughes," including HOWARD HUGHES as a word mark for a variety of real estate related services—management, brokerage, leasing, etc. The earliest of these is the registration for THE HOWARD HUGHES CORPORATION, which was registered on March 25, 1997 and claims a date of first use of 1994.
The disputed domain name <howardhughesdevelopment.com> was registered on September 17, 2015. The Complaint includes a screenshot of the web page associated with the disputed domain name; it includes a list of "related links" such as: "Property Homes", "Foreclosure Listings", "Custom Homes Construction", etc. The legend below indicates that the page "is provided courtesy of" the Registrar.
5. Parties' Contentions
1. Identical or Confusingly Similar
Complainant owns, manages, and develops various types of real estate throughout the United States and owns a number of United States and European Union registrations for trademarks that include "Howard Hughes". The Complaint includes copies of several such registrations covering an array of real estate-related services.
Respondent has simply added the generic, descriptive term "development" to Complainant's HOWARD HUGHES mark. Because the term "development" is closely linked and associated with Complainant's brand and mark, it increases the confusing similarity between the disputed domain name and Complainant's mark.
2. Rights or Legitimate Interests
Complainant's trademark registrations establish the validity of and its ownership of the HOWARD HUGHES mark.
Respondent is not sponsored by or affiliated with Complainant.
Complainant has not given Respondent permission to use Complainant's trademarks in any way, including in a domain name.
Respondent is not commonly known by the disputed domain name. The WhoIs information identifies registrant as "Luke Cash / Sulumena Development Inc."
Respondent is using the disputed domain name for a website that features links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from the linked websites. Prior UDRP decisions have consistently held that respondents that monetize a domain name in this way are not making a bona fide offering of goods or services that gives rise to rights or legitimate interests in a disputed domain name.
3. Registration and Use in Bad Faith
Complainant and its HOWARD HUGHES mark are internationally-known. Complainant has offered its services under the mark since 1994, predating the September 17, 2015 registration of the disputed domain name.
At the time of the registration, Respondent knew, or at least should have known, of the existence of the Complainant's famous name and mark. Registration of the disputed domain name containing a well-known trademark constitutes bad faith per se.
Respondent is using the disputed domain name to confuse unsuspecting Internet users who are looking for Complainant's services, and to mislead them as to the source of the disputed domain name and website.
Respondent is capitalizing on the fame and good will of the HOWARD HUGHES mark to increase website traffic for Respondent's pecuniary gain, as evidenced by the presence of multiple pay-per-click links on the website.
Respondent has ignored Complainant's prior attempts to resolve this dispute, failing to respond to its cease and desist letters.
On April 8, 2016, the Center received the following email communication, apparently from an individual named "Luke Cash", one of the names identified as a registrant of the disputed domain name:
"Greetings . We are the owners of Sulumena development, we own several domain names including HowardHughesDevelopment.com. Although we do not have a website attached to this domain name we still intend on holding on to it until such time as an offer is received for it . We do not intend on releasing it or having it "legally stolen" from us from your organization. We are not infringing on any trademarks whatsoever. If the Hughes foundation would like to purchase it from us then they may do so at anytime until then we intend to to fight this "extradition"or "legal theft" of our domain name that was acquired some time ago. Our contact information is as follows […]".
6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent's rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent's bad faith registration and use, see Policy, paragraph 4(b).
A. Identical or Confusingly Similar
Complainant has established rights in the marks THE HOWARD HUGHES CORPORATION and HOWARD HUGHES by virtue of the evidence of the U.S. federal and European Union trademark registrations.
The disputed domain name is not identical to Complainant's marks. It consists of the dominant element of the mark THE HOWARD HUGHES CORPORATION combined with the common term "development". The Panel agrees that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2. Such a finding is not automatic, however.
Here, the addition of the word "development" after the dominant component of Complainant's THE HOWARD HUGHES CORPORATION mark1 (even absent the space between the terms and the addition of the generic Top-Level domain ("gTLD") ".com", which are not relevant for these purposes), does nothing to differentiate or distinguish the disputed domain name from Complainant's mark. "Howard Hughes" remains the dominant portion of the disputed domain name. Further, in the Panel's view, the term "development" serves only to reinforce a connection to Complainant's real estate-related services.
Respondent's sole argument on this point is its conclusory denial that it is "infringing on any trademarks". In the Panel's view, consistent with the consensus view, see WIPO Overview 2.0, paragraph 1.2, it is the degree of resemblance between Complainant's mark and the disputed domain name that determines confusing similarity, rather than a consideration of all of the factors considered in assessing an infringement claim.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Panel finds that Complainant has made a prima facie showing as to each of these examples, which Respondent has not rebutted. There is no evidence to suggest that Respondent is commonly known by the disputed domain name. Respondent appears to be an individual named Luke Cash and a corporation, Sulumena Development Inc. Nor does it appear that use of the disputed domain name is noncommercial, a fair use, or in connection with a bona fide offering of goods and services. The page appears to be being used to generate "pay-per-click" revenue. Use of a domain name for a web page that generates such revenue is not inherently objectionable; however, in the Panel's view, that use "does not of itself confer rights or legitimate interests arising from a 'bona fide offering of goods or services' […] or from 'legitimate noncommercial or fair use' of the domain name." See WIPO Overview 2.0, paragraph 2.6.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
A complainant must establish that a disputed domain name was registered and is being used in bad faith. The Policy sets out four circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] web site or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] web site or location or a product or service on [the respondent's] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant's rights in its HOWARD HUGHES mark long predate registration of the disputed domain name. The Panel finds it is most probable that Respondent was aware of Complainant's HOWARD HUGHES mark and services at the time the disputed domain name was registered and in fact registered the disputed domain name with Complainant's mark in mind. Further, it appears that the disputed domain name is being used to attract visitors for commercial gain by confusing them into believing that they are accessing a site affiliated with Complainant but instead generating revenue through the pay-per-click links.
The Panel finds that Complainant has established that Respondent registered and is using the disputed domain name in bad faith.
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 <howardhughesdevelopment.com> be transferred to Complainant.
Debra J. Stanek
Date: May 17, 2016
1 Because Complainant's registrations for the mark HOWARD HUGHES did not issue until after the registration of the domain name, the Panel focuses on its registration for THE HOWARD HUGHES CORPORATION, which predates registration of the disputed domain name by several years.