WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lennar Pacific Properties Management, Inc., Lennar Corporation v. Super Privacy Service LTD c/o Dynadot / Rezzan Kiraz

Case No. D2020-1414

1. The Parties

The Complainants are Lennar Pacific Properties Management, Inc. (“First Complainant”) and Lennar Corporation (“Second Complainant”), both of the United States of America (“United States”), represented by Slates Harwell LLP, United States.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States / Rezzan Kiraz, Turkey.

2. The Domain Name and Registrar

The disputed domain name <lmfalennar.com> (“Domain Name”) is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 3, 2020. On June 3, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 8, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant 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 15, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on August 3, 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 First Complainant is the owner of trade mark registrations for a mark consisting of the word LENNAR (the “LENNAR Mark”) in the United States, including registration number 3108401, registered on June 27, 2006 for services in classes 35, 36, and 37, relating to real estate development and management. On January 7, 2020, the First Complainant applied to register a trade mark containing of the terms LMF A LENNAR COMPANY (“LMF LENNAR Mark”) with the United States Patent and Trademark Office for financial services in class 36.

The Second Complainant is a related company to the First Complainant and is the authorized licensee of the LENNAR and LMF LENNAR Marks. The Second Complainant, under the LENNAR and LMF LENNAR Marks, offers real estate management, brokerage, development, construction, and financial services and has done so since 1973. The Complainants also offer home building services in 21 states in the United States.

The Domain Name <lmfalennar.com> was registered on January 10, 2020, three days after the First Complainant applied to register the LMF LENNAR Mark. It presently redirects to a website (the “Respondent’s Website”) that indicates the Domain Name is for sale for a sum that prima facie is larger than any out-of-pocket costs directly related to the Respondent’s registration of the Domain Name.

5. Parties’ Contentions

A. Complainant

The Complainants make the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainants’ LENNAR Mark;

(ii) that the Respondent has no rights or any legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The Complainants are the owner of the LENNAR Mark, having registered and used the LENNAR Mark in the United States. The Domain Name is confusingly similar to the LENNAR Mark since it wholly incorporates the LENNAR Mark and adds the letters “lmfa”, part of the LMF A LENNAR COMPANY trade mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainants to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is simply offering the Domain Name for sale without any other use. Such use of the Domain Name cannot and does not constitute bona fide commercial use, sufficient to legitimize any rights and interests the Respondent might have in the Domain Name and therefore Respondent has no rights or legitimate interests in the Domain Name under paragraph 4(c)(ii) of the Policy.

The Domain Name has been registered and is being used in bad faith. The only possible motive held by the Respondent in registering the Domain Name is for the purpose of selling, renting, or otherwise transferring the Domain Name registration to the Complainant 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. In the present case, the Respondent’s Website indicates that the Domain Name is for sale although it has been recently acquired by the Respondent days after the First Complainant applied to register the LMF LENNAR Mark, which shows that the Respondent’s primary intention was to sell it for valuable consideration, and not to use it for a real and proper website. Furthermore, the fact that the Domain Name was registered shortly after the Complainant applied for the LMF LENNAR Mark indicates that that the registration of the Domain Name was made in awareness of the Complainant and its activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Consolidation of Multiple Complainants

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides at section 4.11.1, in respect of the issue “Multiple complainants filing against a single respondent” that:

“Paragraph 10(e) of the UDRP Rules grants a panel the power to consolidate multiple domain name disputes. At the same time, paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.

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.”

The present proceeding involves two Complainants bringing a single complaint against a common Respondent. The Complainants have made a request for consolidation and bear the onus of establishing that such a consolidation is justified.

The Panel is satisfied, based on the material filed, that the Complainants have a specific common grievance against the Respondent, in that the Complainants have a common legal interest as related entities that hold and use the LENNAR Mark.

The Panel has considered whether it would be equitable and procedurally efficient to permit the consolidation. In the present case, it is no doubt equitable and procedurally efficient.

The Panel finds that it is equitable and procedurally efficient to grant the Complainants’ request for consolidation.

B. Identical or Confusingly Similar

To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark.

The First Complainant is the owner of the LENNAR Mark, having registrations for the LENNAR Mark as a trade mark in the United States. The Domain Name wholly incorporates the LENNAR Mark along with the letters “lmfa” (and the “.com” generic Top-Level Domain (“gTLD”), which can be discounted as an essential element of any domain name). The addition of “lmfa”, arguably taken from the Complainants’ recent trade mark application, to the LENNAR Mark does not prevent a finding of confusing similarity as it is a well-established principle that in cases where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing (see Section 1.7, WIPO Overview 3.0).

The Panel finds that the Domain Name is confusingly similar to the Complainants’ LENNAR Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“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.”

The Respondent is not affiliated with the Complainants in any way. The Respondent has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the LENNAR Mark or a mark similar to the LENNAR Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial fair use or a bona fide offering of goods and services; the use of the Domain Name for a page advertising itself as being for sale, does not, in the absence of other evidence, amount to use for a bona fide offering of goods and services.

The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has failed to rebut that prima facie case and establish that it has rights or legitimate interests in the Domain Name under the Policy. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainants and their reputation in the LENNAR Mark at the time the Domain Name was registered. It is implausible that a party would register a domain name that has no descriptive meaning, that almost precisely copied the key elements of the LMF LENNAR Mark (three days after it was applied to be registered) and then advertise the Domain Name for sale unless it had an awareness of the reputation of the Complainant and its LENNAR and LMF LENNAR trade marks. The registration of the Domain Name in awareness of the LENNAR and LMF LENNAR trade marks and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

At some point, either immediately after or shortly after the Domain Name was registered, the Respondent placed an advertisement on the website indicating that the Domain Name was for sale. The presence of an advertisement indicating that the Domain Name was for sale within a few months of the registration of the Domain Name, along with the lack of any evidence supporting any other explanations as to the possible (legitimate) use of the Domain Name leads the Panel to conclude that the Respondent registered the Domain Name for the purpose of selling it for an amount in excess of the out-of-pocket costs. Pursuant to 4(b)(i) of the Policy the Respondent has registered and used the Domain Name in bad faith.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name, <lmfalennar.com>, be transferred to the Second Complainant.

Nicholas Smith
Sole Panelist
Date: August 5, 2020