WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Silvercreek Realty Group LLC v. LLC Perfect Privacy
Case No. D2018-0788
1. The Parties
The Complainant is Silvercreek Realty Group LLC of Meridian, Idaho, United States of America (“U.S.” or “United States”), represented by Pedersen & Co., PLLC, United States.
The Respondent is LLC Perfect Privacy of Jacksonville, Florida, United States.
2. The Domain Name and Registrar
The disputed domain name <silvercreekrealty.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 April 9, 2018. On April 12, 2018, 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 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 Complainant on April 20, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 24, 2018.
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 the Respondent of the Complaint, and the proceedings commenced on April 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 22, 2018.
The Center appointed William R. Towns as the sole panelist in this matter on May 31, 2018. 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 is a real estate brokerage company located in Meridian, Idaho. The Complainant is the owner of a United States trademark registration for its SILVERCREEK mark, U.S. Reg. No. 5,272,769, applied for on October 7, 2016, and registered by the United States Patent and Trademark Office (“USPTO”) on August 22, 2017. The Complainant has used the SILVERCREEK mark for its real estate brokerage services since November 2008.
The disputed domain name <silvercreekrealty.com> was created on September 29, 2000, according to the concerned Registrar’s WhoIs records. The initial registrant of the disputed domain name was a real estate company in California, which the Complainant became aware of in 2008 when it sought to register domain names reflecting the Complainant’s SILVERCREEK mark. The Complainant instead registered and began using the domain name <silvercreekrealty.net> in November 2008.1
The Complainant subsequently noticed on or about April 7, 2014, that the disputed domain name was no longer in active use. Working with the Registrar, the Complainant initiated negotiations seeking to acquire the disputed domain name. The Complainant’s initial offer of USD 1,500 was rejected by the seller. After some back and forth the seller in October 2015 made an offer of USD 5,000. The Complainant agreed to pay USD 5,000; however, the seller thereafter withdrew the offer.
In November 2016 the Complainant decided to renew its efforts to acquire the disputed domain name. The Complainant learned around that time that the disputed domain name had been transferred to the Respondent. Based on relevant WhoIs data, it appears that the Respondent acquired the disputed domain name on or about November 4, 2016. The Complainant then contacted the Respondent, who responded with an offer to sell the disputed domain name to the Complainant for USD 18,000. The Complainant reverted to its original offer of USD 1,500, which the Respondent rejected. The Complainant thereafter brought this proceeding under the Policy.
The Respondent presently is using the disputed domain name with a website entitled “silvercreekrealty.com”, with pay-per-click links to online MLS listing sites, including MLS listings for residential properties in Meridian, Idaho.
5. Parties’ Contentions
A. Complainant
The Complainant submits that the disputed domain name <silvercreekrealty.com> is confusingly similar to the Complainant’s SILVERCREEK mark, in which the Complainant asserts rights based on registration and the Complainant’s continuous use of the mark since November 22, 2008. The Complainant observes that the disputed domain name incorporates the Complainant’s mark, and maintains that the inclusion of the descriptive word “realty” does not dispel confusing similarity as it falls within the realm of the Complainant’s registration and use of its SILVERCREEK mark for real estate brokerage services.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent has acquired no trademark rights in and has not been commonly known by the disputed domain name. The Complainant contends that the Respondent registered and is using the disputed domain name to divert customers from the Complainant’s business to a website providing advertising links to the Complainant’s competitors. In light of the foregoing, the Complainant submits that the Respondent has not used or made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services, and that the Respondent is not making a legitimate or fair use of the disputed domain name.
The Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the disputed domain name was first registered on September 29, 2000, for use by a California realty company with “Silver Creek” in its name. The Complainant allows that it launched its realty company in Idaho in November 2008, and acknowledges that the initial registration of the disputed domain name by the California entity 2000 would not have been in bad faith. The Complainant explains its efforts made beginning in April 2014 to acquire the disputed domain name from the original registrant, the subsequent transfer of the disputed domain name to the Respondent in November 2016, and the Respondent’s offer to sell the disputed domain name to the Complainant for the sum of USD 18,000, which the Complainant did not accept.
The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant in an amount greatly in excess of the Respondent’s out of pocket costs directly related to the disputed domain name. The Complainant further maintains that the Respondent is attempting intentionally to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s SILVERCREEK mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Final Report of the First WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(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 with respect to the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name are deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name <silvercreekrealty.com> is confusingly similar to the Complainant’s SILVERCREEK mark, in which the Complainant has demonstrated rights. In considering this issue, the first element of the Policy serves essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
In this case, the Complainant’s mark is clearly recognizable in the disputed domain name. The inclusion in the disputed domain name of the word “realty” does not serve to dispel confusing similarity, and if anything calls to mind the Complainant’s business.3 Top-Level Domains (“TLDs”) generally are disregarded when evaluating the identity or confusing similarity of the complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy, irrespective of any ordinary meaning that might be ascribed to the TLD.4
While the Policy makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed. Accordingly, the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the paragraph 4(a)(i) of the Policy.5
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s SILVERCREEK mark. The Respondent notwithstanding has registered the disputed domain name, which is confusingly similar to the Complainant’s SILVERCREEK mark, and is using the disputed domain name with a landing page featuring advertising links related to real estate. This includes a further link to a website of a Boise, Idaho realtor displaying MLS listings for residential properties in the Complainant’s home town of Meridian, Idaho. The Respondent has refused to transfer the disputed domain name to the Complainant unless paid the sum of USD 18,000.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to 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 domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 has not submitted a formal response to the Complaint and did not reply to the Complainant’s contentions, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
It is evident from the attendant circumstances that the Respondent was aware of the Complainant and the Complainant’s SILVERCREEK mark when acquiring the disputed domain name. The Panel finds that the Respondent more likely than not registered the disputed domain name with the intention of exploiting or profiting from the Complainant’s SILVERCREEK mark. Internet users diverted to the Respondent’s website could expect that the disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight, WIPO Case No. D2008-0774.
As noted earlier, the Respondent is using the disputed domain name with a website entitled “silvercreekrealty.com”, which includes a further link posting MLS listings for residential properties specific to Meridian, Idaho, a community where the Complainant has provided real estate brokerage services using the SILVERCREEK mark for nearly a decade. That the Respondent did so deliberately and with mala fide intent can scarcely be gainsaid. The record makes manifest that the Respondent opportunistically registered the disputed domain name with the intention of selling the disputed domain name to the Complainant for an amount significantly in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name.
In light of the foregoing, the Panel concludes that the Respondent has not used or demonstrated preparations to use the disputed domain name in connection with a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name for purposes of paragraph 4(c)(iii) of the Policy. The Respondent has not been authorized to use the Complainant’s SILVERCREEK mark, and there is no indication that the Respondent has been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In short, nothing in the record before the Panel supports a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) 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; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark 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) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt 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 its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. It is readily apparent that the Respondent had the Complainant’s SILVERCREEK mark in mind when registering the disputed domain name. That the disputed domain name was initially registered prior to the Complainant’s acquiring rights in its SILVERCREEK mark does not preclude a finding of bad faith registration and use in the circumstances of this case. As noted earlier, the Respondent obtained the transfer the disputed domain name <silvercreekrealty.com> on or about November 4, 2016. It is well settled under the Policy that the transfer of a domain name to a third party amounts to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the disputed domain name.See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. The Respondent’s opportunistic acquisition of the disputed domain name occurred long after the Complainant had established rights in its SILVERCREEK mark.
The Panel finds from the record that the Respondent registered the disputed domain name seeking to profit from and exploit the Complainant’s SILVERCREEK mark, whether by attempting to attract, for commercial gain, Internet users to its website at “www.silvercreekrealty.com”, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation with the Complainant, or by selling the disputed domain name to the Complainants for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the disputed domain name. The Respondent registered and is using the disputed domain name in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 disputed domain name <silvercreekrealty.com> be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: June 8, 2018
1 The Complainant has submitted as an annex to the Complaint the sworn Declaration of the Chief Information Officer for Silvercreek Realty Group LLC, who was involved in the Complainant’s efforts to acquire the disputed domain name.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.
3 See WIPO Overview 3.0, section 1.8 and cases cited therein. When the relevant trademark is recognizable in the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not preclude a finding of confusing similarity under paragraph 4(a)(i) of the Policy.
4See WIPO Overview 3.0, section 1.11 and cases cited therein. The meaning of a particular TLD, however, may in some cases be relevant to assessments under paragraphs 4(a)(ii) and 4(a)(iii) of the Policy.
5 See WIPO Overview 3.0, section 1.1.3 and cases cited therein.