The Complainant is Pembroke Isles Homeowners Association, Inc. of Pembroke Pines, Florida, United States of America (“USA” or “US”), represented by Malin, Haley, DiMaggio & Bowen, P.A., USA.
The Respondent is Luz Velez-Cardamone of Pembroke Pines, Florida, USA, represented by Santucci Priore, P.L., USA.
The disputed domain name <pembrokeisles.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2015. On March 31, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 31, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was April 22, 2015. At the request of the Parties, the due date for Response was extended to May 22, 2015. The Response was filed with the Center on May 22, 2015.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 2, 2015. 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.
The Complainant is a non-profit homeowners association organized under the laws of the State of Florida, USA. The Complainant exists to provide “homeowner services” and promote the interests of the homeowners in the “Pembroke Isles” residential development, located in the south Florida city of Pembroke Pines, as well as marketing the community to potential residents and investors.
It does not appear that the developer of Pembroke Isles, Lennar Homes, LLC, sought trademark registrations for the name of the development. According to the online database operated by the Florida Department of State, Division of Corporations, the Complainant homeowners association was created in November 1994, when the first homes were being built. The Complainant asserts that it has used PEMBROKE ISLES as a service mark since November 1994. The Complainant recently obtained a Florida State trademark registration for PEMBROKE ISLES, Florida Trademark Registration Number T15000000152 (registered February 11, 2015) and applied for US trademark registration on February 10, 2015, Serial Number 86529791. That application is pending.
The Complainant operates a website at “www.prembrokeisles.org”. According to the registrar’s WhoIs database, that domain name was created in December 1999. Screen shots of the associated website from early 2001, found on the Internet Archive’s Wayback Machine, display an informational website for Pembroke Isles residents operated by a group called the “Pembroke Isles Civic Association”. By the end of 2001, the website associated with the Domain Name was labelled with the Complainant’s name.
The Respondent is a real estate broker who is one of the original homeowners in the “Pembroke Isles” development, residing there since 1996. The Respondent registered the Domain Name on October 5, 1999, and she states in her affidavit that she has used the Domain Name for fifteen years in connection with her real estate brokerage services, which are conducted in the name of her company, Luz Velez-Cardamone, P.A.
The Domain Name redirects visitors to a landing page on the Respondent’s website at “www.velezcardamone-team.com”, which advertises the Respondent’s real estate brokerage business. The landing page for the Domain Name is headed with a logo for “Velez Cardamone Real Estate Team” and displays the Respondent’s name and photograph. It contains two paragraphs of general information about the Pembroke Isles planned community, with links to other pages on the Respondent’s website listing homes for sale, rentals, foreclosures, and short sales in the Pembroke Isles development. Other portions of the Respondent’s website feature different real estate developments and describe a wide variety of residential properties for sale or rent in Pembroke Pines, Miami, Fort Lauderdale, and other south Florida cities. The Complainant asserts, and the Respondent does not deny, that the Pembroke Isles section of the Respondent’s website has at times published the Complainant’s property management reports and other information, such as events announcements, that appear to be copied from the Complainant’s website.
The Respondent states in her affidavit that she has been selling properties in Pembroke Isles since 1998 and has been involved in transactions in that development amounting to approximately USD 79 million. The Respondent has advertised her services since 1998 in the Complainant’s newsletter and magazine, on postcards mailed to residents of Pembroke Isles, on the community television channel operated by the Complainant, and on sponsored “dog waste stations” throughout the community. These advertisements have all included the Domain Name. Affidavits of former board members indicate that the Complainant was aware of the Respondent’s advertising including the Domain Name since at least 2001.
In December 2014, the Complainant refused to continue printing the Respondent’s advertisements in the Complainant’s magazine displaying the Domain Name, and in January 2015 the Complainant removed the Respondent’s signage displaying the Domain Name from the sponsored dog waste stations in the community. There is no evidence in the record that the Complainant objected to the Respondent’s use of the Domain Name before December 2014.
The Complainant contends that the Domain Name is identical or confusingly similar to its PEMBROKE ISLES mark and that the Respondent, which operates a real estate business under a different name, uses the mark without permission.
The Complainant argues that the Respondent has registered and used the Domain Name in bad faith, to prevent the Complainant from reflecting its mark in a corresponding domain name and to mislead Internet users for commercial gain.
The Respondent challenges the Complainant’s trademark claims and contends that she has rights in the Domain Name, using it referentially to sell real estate in the Pembroke Isles community. She denies that she registered or used the Domain Name in bad faith to attack a trademark.
The Respondent argues that in any event the Complainant has “acquiesced” in her use of the Domain Name over a period of years and “unjustifiably delayed” making a UDRP claim to the Respondent’s detriment, raising the equitable defense of laches.
The Respondent also contends that the Complaint should be dismissed because the UDRP proceeding “is part of a larger dispute between the parties and is improperly before the Panel.”
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Related legal disputes
The Respondent suggests that this proceeding should be dismissed because it is “part of a larger dispute” that cannot be resolved in the context of a UDRP proceeding. The Respondent refers to the Complainant’s recent actions refusing her advertising in the Complainant’s magazine, removing her advertising on sponsored dog waste stations, and initiating the current UDRP proceeding without meeting homeowner notification and approval requirements for legal actions undertaken by the association.
The Policy (paragraph 4(k)) provides that the mandatory administrative dispute resolution procedure does not preclude either party from submitting the dispute to a court of competent jurisdiction, although it does not appear that either party in this instance has done so. UDRP administrative panel decisions are not binding on the courts, and they have a very limited scope. UDRP decisions are speedy determinations of whether a disputed domain name should be retained, cancelled, or transferred, based on whether the complainant establishes all three elements of the UDRP complaint. If a panel orders cancellation or transfer of a disputed domain name, the concerned registrar waits ten days before proceeding to cancel or transfer the domain name (Policy, paragraph 4(k)). If the concerned registrar receives documentation, within that time, showing that that the domain name holder has commenced litigation relating to the domain name, it takes no further action until receiving evidence that the litigation has been settled, withdrawn, or dismissed, or has resulted in a judicial order declaring that the respondent does not have the right to use the domain name.
The Rules (paragraph 18(a)) provide that, “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” Clearly, the Panel has such discretion as well if there are potentially related legal issues between the parties but neither party has filed a relevant legal or administrative complaint.
The Panel in this instance finds that the Complaint can be evaluated under the Policy on the current record, without awaiting resolution of any subsequent judicial complaint that the Respondent or the Complainant might contemplate. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.14. Hence, the Panel declines to terminate or suspend this proceeding and will proceed to a decision.
Laches
The Respondent argues that the equitable doctrine of laches should bar the Complaint, because the Complainant was aware of the Respondent’s use of the Domain Name for at least thirteen years before bringing the UDRP Complaint, and the Respondent has in the interim invested in the Domain Name and advertising using the Domain Name.
The parties in the current proceeding are both located in the USA, where courts recognize the equitable doctrine of laches, which can result in the dismissal of a complaint for undue delay in asserting legal claims. The Respondent cites UDRP decisions accepting something along the lines of a defense of laches in the UDRP context. These decisions are in the minority, however. See WIPO Overview 2.0, paragraph 4.10. It is important to recognize that in US courts the defense of laches typically bars the recovery of damages incurred before the filing of a lawsuit, and courts have concluded that the rationale behind the doctrine of laches does not militate against injunctive relief in a trademark action that seeks to avoid future confusion in the marketplace. See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition (4th ed. 2005) §31: 10, p. 31-35 and cases cited therein. The remedies under the Policy are similarly injunctive rather than compensatory in nature, and the focus is on avoiding confusion in the future as to the source of goods or services. Thus, UDRP panels have generally declined to apply the doctrine of laches. See, e.g., Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447 (the Policy does not contemplate a defense of laches, which is inimical to the Policy’s purposes); see also cases cited in the Index of WIPO UDRP Panel Decisions, section III(G)(1)(c).
The Panel in the current proceeding declines to dismiss the Complaint on the ground of laches. As noted above, the Policy offers a limited remedy to avoid future confusion in the marketplace, and it does not contemplate that such a remedy would be unavailable solely because of delay in instituting a Policy proceeding. However, the Panel observes that lengthy delays in seeking legal or administrative remedies can often have the effect of eroding or undermining the complainant’s arguments with respect to the respondent’s rights or legitimate interests in a disputed domain name, or the respondent’s alleged bad faith in registering and using the domain name. The Panel considers it more appropriate to address such issues squarely within the terms of paragraphs 4(a)(ii) and (iii) of the Policy, as it does below, rather than analyzing them under the equitable doctrine of laches.
Acquiescence
Similarly, the Panel declines to dismiss the Complaint on the ground that the Complainant knowingly acquiesced to the Respondent’s use of the Domain Name over a period of years. In US trademark law, detrimental reliance on a trademark owner’s acquiescence to otherwise infringing use may be asserted as a defense (see 15 United States Code, section 1115(b)(9)).
The Policy does not refer to such a defense. However, it is often appropriate to consider facts indicating permissive use in the context of the second element of the Complaint, assessing the Respondent’s rights or legitimate interests in the Domain Name, or the third element of the Complaint, the Respondent’s alleged bad faith, and the Panel will do so here.
The Complainant claims use of PEMBROKE ISLES as an unregistered mark since the Complainant’s inception in November 1994. The Panel notes that although such marking (which puts third parties on notice of claimed trademark rights) is not a legal requirement, the Complainant’s website does not include a statement of trademark rights, and the Complainant’s name and logo are displayed on the website without a “TM” or “SM” symbol signifying the assertion of unregistered trademark rights. These symbols also do not appear on the copies of the Complainant’s magazine and promotional brochures attached to the Complaint.
A few weeks before filing the Complaint in this proceeding, the Complainant applied for US trademark registration and obtained an unexamined Florida State trademark registration for PEMBROKE ISLES. In the Panel’s view, the Complainant’s unexamined Florida state trademark registration is not entitled to significant deference on its own (see WIPO Overview 2.0, paragraph 1.1), and its recent US trademark application has not yet been examined or even completed the period for filing an opposition.
Absent an examined, registered trademark, the Panel is of the view that there is no presumption for purposes of the Policy that the Complainant’s name has acquired a secondary meaning associated with goods or services in commerce. See WIPO Overview 2.0, paragraph 1.7. The Complainant must demonstrate such acquired distinctiveness. In a UDRP proceeding, “[r]elevant evidence of such ‘secondary meaning’ includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition.” Id. The Complaint provides only screenshots of the Complainant’s current website and recent copies of its magazine and brochures. The record includes no compelling evidence, particularly concerning the “length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition”, containing instead only vague and conclusory statements about “extensive advertising and commission of homeowner association services.” Moreover, the Complaint does not describe these “homeowner association services” or explain how they should be characterized as goods or services offered in commerce.
Based on the factual background to the case, with particular regard to the relationship between the developer Lennar Homes LLC and the Complainant, it may be that some unregistered rights in the PEMBROKE ISLES identifier were accrued by the developer, and would have possibly passed to the Complainant. The Panel does not find sufficient evidence on this record to establish that the Complainant (Pembroke Isles Homeowners Association) has used its name as a trademark or service mark for purposes of the present Policy proceeding so as to be able to come to a clear conclusion on this element of the Policy. In any event, in light of the conclusions under the third element below, the Panel need not make a definitive finding under the first element of the Policy.
Paragraph 4(c) of the Policy gives non-exhaustive examples of instances in which the Respondent may establish rights or legitimate interests in the 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 Domain Name in connection with a bona fide offering of goods or services; or
(ii) that 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production to show rights or legitimate interests in the disputed domain name shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
The Respondent here is not known by a name corresponding to the Domain Name, but she offers ample evidence that she has used the Domain Name for some fifteen years in connection with her brokerage services for buyers and sellers of properties in the Pembroke Isles community. The Domain Name is relevant to a substantial part of her real estate brokerage business for properties within the Pembroke Isles community, although she handles transactions for properties outside the community as well via the website to which the Domain Name redirects.
Nevertheless, this would not be considered a bona fide use of the Domain Name, for Policy purposes, if the evidence indicated that the Respondent selected and used the Domain Name to engender confusion with the Complainant and exploit the Complainant’s mark. See WIPO Overview 2.0, paragraph 2.3, concerning the similar question of how resellers or distributors may legitimately use a manufacturer’s trademark in a domain name. Here, the Respondent uses the Domain Name inter alia for sales activity in Pembroke Isles, and the landing page makes it relatively clear that it is published by a real estate broker, not the Complainant homeowners association. Thus, while there appears to be some risk of confusion with the Complainant, as concluded above, there is insufficient evidence that the Complainant has established its name as a mark, or that the Respondent should have anticipated that the Complainant would seek to establish such rights
The Complainant cites 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, WIPO Case No. D2014-1359 (“Folsom”), where the panel found that a real estate broker did not have a right to use a domain name incorporating the trademarked name of a residential development where the broker assisted clients in buying or selling properties. But in Folsom, the broker registered the domain name a few days after the real estate developer announced the development and filed a trademark application. The broker’s associated website displayed the developer’s logo. Thus, it was reasonably clear that the broker targeted the developer’s asserted or anticipated trademark and took insufficient steps to avoid confusion. Here, while the Respondent’s registration of the Domain Name logically presupposes the Respondent’s knowledge of the Complainant there is no evidence that the developer or the Complainant had obtained or applied for trademark registration or publicly asserted any trademark rights at the time the Respondent registered the Domain Name. Had the Complainant done so, the question as to the Respondent’s use – fair or otherwise – of the Domain Name would require examination. That, however, is not the case here.
In light of the outcome of the present case under third element, the Panel need not make a finding under the second element of paragraph (4)(a) of the Policy.
The Policy furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following cited by the Complainant:
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.
The first point is inapposite, since there is no evidence that the Respondent has engaged in a “pattern” of registering domain names to prevent trademark owners from reflecting their marks in corresponding domain names. See WIPO Overview 2.0, paragraph 3.3. (For example, the Complainant has been operating a website with a corresponding domain name for years – <pembrokeisles.org>).
The second point is also unpersuasive given the limited scope of the Policy, because the Complainant has not presented sufficient evidence to come to a clear conclusion that it had unregistered trademark rights in 1999, when the Domain Name was registered. The fact that the Complainant was aware of the Respondent’s advertising, presumably including the Domain Name, for at least thirteen years and took no steps to object or offer (licensing-like) permission tends to undercut its claims to possessing common law trademark rights. The Respondent, on the other hand, has sufficiently demonstrated that she had a prima facie legitimate reason to select the Domain Name (even if it exactly matches the Complainant’s community name). She was already engaged in selling properties in the Pembroke Isles development when she registered the Domain Name, and that business has continued over the succeeding years. Thus, the Panel cannot find, on this limited record, that the Complainant has met its burden of establishing that the Respondent registered and used the Domain Name in bad faith. The Panel notes in this regard, however, that screenshots of the Domain Name from the Internet Archive show that in 2003, for example, the use of the Domain Name made it far more clear that the Respondent was not affiliated with the Complainant. As stated above, the Respondent was necessarily aware of the Complainant when she registered the Domain Name. However, given the aforementioned lack of demonstrated unregistered rights by the Complainant, and the Respondent’s prima facie legitimate reason for selecting the Domain Name, the Complaint must fail. The Parties will be aware that they are not prevented from seeking redress in a judicial proceeding, where a court presented with a fuller record and evidentiary exchange can better explore the nuanced potential fair use (or acquiescence) questions presented here.
The Panel concludes that the Complainant has failed to establish the third element of the Complaint.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Sole Panelist
Date: June 10, 2015