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G.L. Homes Licensing Corporation v. Michael Pagliccia LLC [2005] GENDND 761 (25 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

G.L. Homes Licensing Corporation v. Michael Pagliccia LLC

Case No. D2005-0337

1. The Parties

The Complainant is G.L. Homes Licensing Corporation, Coral Springs, Florida, United States of America.

The Respondent is Michael Pagliccia, LLC, of Naples, Florida, United States of America.

2. The Domain Name and Registrar

The disputed Domain Name <saturniafalls.com> is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2005. On April 4, 2005, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On April 4, 2005, Register.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 11, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 1, 2005. The Response was filed with the Center on April 30, 2005.

The Center appointed Lawrence K. Nodine as the sole panelist in this matter on May 11, 2005. 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 states that it is one of the leading residential real estate developers in Florida, and one of the fastest-growing homebuilders in the country and that, since 1976, it has created exceptional communities and has built and sold homes in the most desirable locations throughout Florida including Broward, Palm Beach, Collier and Osceola Counties.

Complainant is the owner of several United States trademark registrations, including Registration No. 2,393,604 for the SATURNIA mark, which it has used since at least as early as 1997 to identify its real estate development services.

Complainant has used the SATURNIA mark in association with developments in Florida’s Broward, Palm Beach, Collier and Osceola counties to create a family of marks including SATURNIA ISLES, SATURNIA LAKES and, most recently, SATURNIA FALLS.

Complainant has used its SATURNIA^® FALLS mark since as early as September 26, 2003, for a new development in Naples, Florida, just a few miles from another development, SATURNIA LAKES.

On January 9, 2004, sales associates for SATURNIA FALLS began to gather traffic leads for the newly announced SATURNIA FALLS project.

Shortly thereafter, on January 20, 2004, Respondent registered the Domain Name <saturniafalls.com>, on behalf of himself and/or Downing-Frye, without Complainant’s knowledge, consent, or authority.

On February 24, 2004, Complainant’s General Counsel sent a letter to Respondent, demanding that Respondent cease and desist all further use of its SATURNIA mark and assign the <saturniafalls.com> Domain Name to Complainant.

As of February 24, 2004, the “www.saturniafalls.com” website was not active.

On March 4, 2004, Respondent, through its attorney, refused to cease use of the Domain Name. A few weeks later, Respondent began using the “www.saturniafalls.com” website to sell real estate in Naples. The site currently includes photos of properties not associated with Complainant or any SATURNIA development.

On March 1, 2004, Respondent applied to register “www.saturniafalls.com” with the United States Patent and Trademark Office “as a means of generating leads for resales of homes in the [SATURNIA FALLS] development and surrounding areas.” On September 20, 2004, the USPTO refused registration of Respondent’s mark on the ground that it was likely to be confused with Complainant’s SATURNIA mark.

Respondent states that he is a Realtor in Naples, Florida, holding his license with Downing-Frye Realty, Inc., also located in Naples, Florida, and that he markets homes to customers on a world wide basis through the use of internet advertising, newspaper marketing, direct mail and strategic marketing efforts through his website, “www.buyanapleshome.com”.

Respondent contends that on January 20, 2004, he heard about a new community that was going to be developed in Naples, that being SATURNIA FALLS and that, since he had a keen interest in moving to this new community, he felt it would be a great benefit to set up a community website. Respondent states that this would provide the residents with useful information that would benefit them and possibly generate new business for the Respondent’s real estate group.

5. Parties’ Contentions

A. Complainant

With respect to paragraph 4(a)(i) of the Policy Complainant contends that:

(1) It is the owner of U.S. Registration No. 2,393,604 for the SATURNIA mark for use in connection with various real estate related services and that it also has rights with respect to the SATURNIA FALLS trademark.

(2) The Domain Name <saturniafalls.com> is identical or confusingly similar to GL Homes’ SATURNIA and SATURNIA FALLS marks and the Domain Name <saturniafalls.com> appropriates Complainant’s SATURNIA FALLS mark in its entirety.

(3) The USPTO found that confusion was likely between Complainant’s SATURNIA mark and Respondent’s Domain Name when it refused registration of the term “www.saturniafalls.com” on that ground.

(4) Respondent and Downing-Frye knew of Complainant’s use and ownership of the SATURNIA and SATURNIA FALLS marks when it registered a confusingly similar domain name; Respondent’s own description of services in the trademark application filed with the USPTO demonstrates Respondent’s intent to confuse the public into believing that Respondent is somehow connected to the SATURNIA FALLS development, namely, that Respondent intended to use the term “as a means of generating leads for resales of homes in the [SATURNIA FALLS] development and surrounding areas.”

(5) Respondent misappropriated Complainant’s existing trademark, in its entirety, for the apparent purpose of confusing the public and benefiting, without authority, from Complainant’s goodwill. See, e.g., Paging Network, Inc. v. Network Installation Computer Services, Inc., WIPO Case No. D2001-0543 (absence of rights or legitimate interest where party demonstrated its ownership of the mark, the validity of the mark, the value of the mark, its continuous use of the mark before registration of the respondent’s domain name, and the lack of authority by the complainant to the respondent’s use of the domain name).

With respect to paragraph 4(a)(ii) of the Policy, Complainant contends that:

(1) It has exclusive rights in and to the SATURNIA and SATURNIA FALLS marks by virtue of its substantial and continuous use of those marks and its U.S. trademark registration.

(2) Respondent has no rights or legitimate interests in respect of the Domain Name <saturiafalls.com>.

(3) Respondent has used the Domain Name to misdirect Internet users to its website by creating the false impression that the site is owned or affiliated with GL Homes’ SATURNIA FALLS development in Naples, Florida.

(4) Respondent admitted in his trademark application that it uses the <saturniafalls.com> Domain Name “as a means of generating leads for resales of homes in the [SATURNIA FALLS] development and surrounding areas.”

(5) That such use cannot constitute a bona fide use of the Domain Name pursuant to paragraph 4(c) of the Policy.

(6) That Respondent has not established goodwill in the disputed Domain Name and is not identified or commonly known by the name “saturniafalls.com”.

(7) That prior to receiving notice of the dispute, there is no evidence that Respondent used the Domain Name <saturniafalls.com>, or a name corresponding to that Domain Name, in connection with a bona fide offering of goods or services.

(8) That Respondent is not making a legitimate, non-commercial or fair use of the Domain Name <saturniafalls.com>.

(9) That Respondent’s sole use of SATURNIA FALLS is apparently in connection with its on-line real estate sales site. Respondent’s attempts to divert traffic intended for GL Homes to its own website does not constitute a bona fide use.

With respect to paragraph 4(a)(iii) of the Policy, Complainant contends that:

(1) The Domain Name <saturniafalls.com> was registered and used in bad faith by the Respondent for the sole commercial purpose of diverting Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website.

(2) Respondent is not making a legitimate noncommercial or fair use of the disputed Domain Name.

(3) Complainant’s SATURNIA and SATURNIA FALLS marks are well recognized as a source identifiers of quality residential real estate services and quality real estate development services and that Respondent’s website benefits from the goodwill and commercial value created and enjoyed by Complainant in its SATURNIA marks.

(4) As a result of Respondent’s use of the mark, consumers are likely to visit Respondent’s website and utilize Respondent’s services believing them to be the services of Complainant.

(5) If Respondent continues to use and infringe upon the SATURNIA and SATURNIA FALLS marks in its Domain Name: (a) consumers will be confused, misled and deceived as to the source and origin of Respondent’s services; (b) the distinctive value and reputation of the SATURNIA and SATURNIA FALLS marks will be diluted, impairing the value of Complainant’s intangible property; (c) Respondent will continue to benefit from the goodwill and commercial value enjoyed by Complainant in its marks; and (d) Complainant will suffer from the permanent loss of substantial revenues should visitors to Respondent’s website or purchasers of Respondent’s services be dissatisfied and believe that there is in fact some affiliation between Respondent and Complainant.

B. Respondent

With respect to paragraph 4(a)(i) of the Policy, Respondent contends that:

(1) Owning the trademark to the name “Saturnia” does not allow the Complainant to own every word around the trademark.

(2) The fact that respondent was not granted the trademark, WWW.SATURNIAFALLS.COM by the USPTO has no relevance to the domain registration and that the guidelines for trademark registration are federally regulated and fall under stricter rules.

With respect to paragraph 4(a)(ii) of the Policy, Respondent contends as follows:

(1) Respondent had a keen interest in moving to this new community; Respondent felt it would be a great benefit to set up a community website and that this would provide the residents with useful information that would benefit them and possibly generate new business for the Respondent’s real estate group; the website would be set up with different categories such as items for sale, babysitters, association newsletters, social gathering and a way to effectively market homes in the re-sale market.

(2) Respondent markets the resale of homes in the Naples, Florida area and there is a clear and defined interest in having the website “www.saturniafalls.com”; Respondent has been a realtor in Naples since February 2002 and was recently recognized by Downing-Frye Realty, Inc with an Outstanding Performance Award for his efforts.

(3) The Domain Name <saturniafalls.com> was purchased on January 20, 2004, and the website was under construction the following week; that it has been up and running since February of 2004 for the purpose of generating resale activity in the Naples & Bonita Springs area.

(4) Respondent agrees that it intends to use the site to generate resales “ ..as a means of generating leads for resale’s of homes in the Saturnia Falls development and surrounding areas.”

(5) Respondent has a legal right to resell any home on the market; the contract to sell a home is between the owner of the home and the Realtor; Complainant can not dictate who will be doing resales in the Saturnia Falls community.

With respect to paragraph 4(a)(iii) of the Policy Respondent contends that:

(1) Contrary to the Complainant’s contention that Respondent was “cybersquating”, Respondent contends that it intended and still intends not to sell the Domain Name to another party, nor did the Respondent ever request monetary compensation.

(2) The “www.saturniafalls.com” website clearly states that Respondent is in fact a Realtor with Downing-Frye Realty, Inc.; the home page shows both the Downing-Frye Realty, Inc logo and Downing-Frye Realty, Inc printed out. Respondent contends that there is absolutely no confusion as to whom the Respondent works for and the logo and Downing-Frye Realty, Inc. name has been on the site since it was created; per Florida law, Respondent has to put his company name on the home page so that there is no confusion as to whom he as a realtor works for.

6. Discussion and Findings

Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (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 in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Policy, Paragraph 4(a).

A. Identical or Confusingly Similar

The Panel finds that Complainant has trademark rights in the SATURNIA and SATURNIA FALLS marks. Complainant has a United States Federal trademark registration for SATURNIA. Its claim of common law use as of September 26, 2003, of SATURNIA FALLS is uncontroverted.

The Panel finds that <saturniafalls.com> is confusingly similar to the registered SATURNIA mark since “Saturnia” is the dominant portion of Complainant’s registered mark and of the disputed Domain Name. Thus, the public would associate the SATURNIA FALLS mark with Complainant in the same way that the prior SATURNIA, SATURNIA LAKES and SATURNIA ISLES marks are associated with Complainant. The USPTO office action is consistent with this ruling.

The Panel also finds that the challenged Domain Name is confusingly similar to the SATURNIA FALLS mark in which Complainant has rights. The disputed Domain Name differs from Complainant’s common law mark only in that it contains the non descriptive gTLD domain name suffix “.com.” See Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”).

Therefore, the Domain Name is confusingly similar to Complainant’s registered SATURNIA mark and its common law SATURNIA FALLS mark.

B. Rights or Legitimate Interests

In order for the Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show:

“(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 subject Domain Name was not in use prior to the Respondent receiving notice of the dispute from Complainant. The record also contains no evidence that Respondent had made demonstrable preparations to use the Domain Name.

There is no evidence in the record to show that the Respondent, individually or as a business or otherwise, has been commonly known by the Domain Name.

Some cases have recognized that a real estate agent may have a legitimate right to resell property in an area known by Complainant’s mark. See Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No.D2000-1435 (respondent’s right to sell property in “Cape Harbour” development prevented transfer of <capeharbour>). Complainant’s cases to the contrary are distinguishable, at least in part. In The Bonita Bay Group, et al v. Total Concept, Inc., WIPO Case No. D2003-0126 , the respondent was not a re-seller, but rather the proprietor of a “network” of domain names that derived advertising revenue from Internet traffic. In addition, competitor sites were also present in respondent’s network. The decision in Las Vegas Joint Venture v. Principal Equity, Inc., WIPO Case No. D2002-0758 , established that the respondent was not a re-seller, but instead the operator of “neighborhood” sites. The decision in The Trustee of the Trust Number SR-1 v. Randall Klopp, FA0308000187430 (National Arbitration Forum 2003), is very nearly on point, but the respondent there defaulted on the key points in contention.

When a party’s right to resell branded goods is at issue, rulings in cases such as Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903 or Porsche AG v. Del Fabbro Laurent, WIPO Case No. D2004-0481, serve as useful guides to the analysis. In such cases, one critical factor is whether the respondent is offering only the complainant’s goods. Where sales are so limited, a respondent’s contention that it is making bona fide use of the domain name is enhanced.

That is not the case here, however. Respondent admits they are using the site not only to sell Complainant’s properties, but also real estate that has no relationship to Complainant. At the disputed Domain Name, Respondent prominently displays flashing photos of existing real estate in other developments in Naples. On the date the Panel visited the site, Respondent displayed property at Sterling Oaks, another real estate community in Naples that does not appear to be owned by Complainant. In addition, Respondent includes a prominent link at the top of the page to “Listings” which displays three properties not in Saturnia Falls or any other SATURNIA development. Presumably, these listings change as properties are sold, but obviously Respondent is not limiting this site to sales of only SATURNIA properties.

This is not simply a case where the respondent offers links to competitors, although this practice alone is often dispositive. See WeddingChannel.com Inc. v. Modern Limited -- Cayman Web Development, cited supra (finding that the respondent’s use of “www.theweddingchannel.com” to redirect Internet users to a website that features sponsored links offering the same types of wedding-related services that complainant offers did not constitute as a bona fide offering of goods or services); TM Acquisition Corp. v. Sign Guards, also cited supra (finding that the respondent’s use of complainant’s marks to divert Internet users to a website which displayed a series of links, some of which were links to sites of complainant’s competitors, was not a bona fide offering of goods or services). The Respondent’s links are more egregious because its web page includes flashing photos of properties that must, in the context of this case, be considered competitive product. In this respect, the instant facts are distinguishable from Porsche AG v. Del Fabbro Lauren, supra, where links to competitive sites did not undermine that respondent’s claim to bona fide use.

In summary, with respect to this second element, Respondent’s use is not bona fide following the analytical framework fashioned in Oki Data.

C. Registered and Used in Bad Faith

Evidence of the registration and use of a domain name in bad faith pursuant to paragraph 4(b)(iv) of the Policy is found when:

“by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

The Panel finds that the Domain Name <saturniafalls.com> was registered and used in bad faith by the Respondent for the commercial purpose of diverting Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of the website. G.D. Searle & Co. v. Mahoney, FA1112559 (National Arbitration Forum 2002) (finding that the respondent registered and used the domain name in bad faith where respondent was using the confusingly similar domain name to attract users to its commercial website).

Respondent admits that it was aware of Complainant’s intended development of property in Naples under the trademark SATURNIA FALLS. Respondent’s admission that he intends to use the disputed Domain Name to promote the sale of competing properties conclusively establishes bad faith use and registration.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <saturniafalls.com> be transferred to the Complainant.

Lawrence K. Nodine
Sole Panelist

Date: May 25, 2004