DECISION

The Trustee of the Trust Number SR-1, a Florida trust, Donald Soffer v. Randall Klopp

Claim Number: FA0308000187430

PARTIES

Complainant is The Trustee of the Trust Number SR-1, a Florida trust, Donald Soffer, Aventura, FL (“Complainant”) represented by David A. Gast, of Malloy & Malloy, P.A. Respondent is Randall Klopp, Las Vegas, NV (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <turnberryplace-resales.com> and <turnberryplaceresales.com> registered with Register.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 19, 2003; the Forum received a hard copy of the Complaint on August 21, 2003.

On August 19, 2003, Register.com confirmed by e-mail to the Forum that the domain names <turnberryplace-resales.com> and <turnberryplaceresales.com> are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On August 26, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 15, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@turnberryplace-resales.com and postmaster@turnberryplaceresales.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 26, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.)as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names are confusingly similar to Complainant’s TURNBERRY PLACE mark.

2. Respondent does not have any rights or legitimate interests in the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names.

3. Respondent registered and used the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant provides evidence of pending trademark applications with the United States Patent and Trademark Office (“USPTO”) for the TURNBERRY PLACE mark, including Ser. No. 75/678,578 (filed on April 2, 1999) in relation to real estate management and leasing services in the field of residential home and condominium projects, country clubs, and recreational facilities, along with real estate development and construction services.

Respondent registered the <turnberryplace-resales.com> domain name on May 8, 2002 and the <turnberryplaceresales.com> domain name on January 28, 2002. Respondent is using the disputed domain names to divert Internet traffic to Respondent’s website, which purports to sell condominiums located at Complainant’s development in Las Vegas, Nevada.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established its rights in the TURNBERRY PLACE mark through its pending trademark applications with the USPTO. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's trademark or service mark be registered by a government authority or agency for such rights to exist. Rights in the mark can be established by pending trademark applications); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place).

Complainant contends that Respondent’s <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names are confusingly similar to Complainant’s TURNBERRY PLACE mark because the disputed domain names appropriate Complainant’s mark in its entirety and merely add the generic or descriptive term “resales” to the end of the mark. The addition of a generic or descriptive term does not sufficiently distinguish the domain names from Complainant’s mark under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward and answer the allegations in the Complaint. Therefore, the Panel accepts all of Complainant’s reasonable allegations and inferences as true. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, based on Respondent’s failure to contest Complainant’s allegations, the Panel presumes Respondent lacks any rights to or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Respondent is using the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names to redirect Internet traffic to Respondent’s website for the purpose of offering condominiums at Complainant’s development for resale. The use of a domain name confusingly similar to Complainant’s mark to sell property at Complainant’s developed property does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding Respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated).

Respondent has proffered no proof and there is no evidence in the record that Respondent is commonly known by <turnberryplace-resales.com> or <turnberryplaceresales.com>. Thus, Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name in accord with Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent is using the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names to divert Internet users to Respondent’s website where property at Complainant’s development is offered for sale. The Panel finds that Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website, which evidences bad faith registration and use with regard to Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

Furthermore, based on Respondent’s registration and use of the disputed domain names, which incorporate Complainant’s mark, to sell condominiums located at Complainant’s development, the Panel infers Respondent’s actual knowledge of Complainant’s rights in its mark. The registration of the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names despite actual knowledge of Complainant’s rights in the TURNBERRY PLACE marks establishes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on Respondent’s website was obvious, Respondent “must have known about the Complainant’s mark when it registered the subject domain name”); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (“It can be inferred that Respondent had knowledge of Complainant’s rights in the CELEBREX mark because Respondent is using the CELEBREX mark as a means to sell prescription drugs, including Complainant’s CELEBREX drug”).

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <turnberryplace-resales.com> and <turnberryplaceresales.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  October 8, 2003

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