Complainant is G.L. Homes Licensing Corporation of Sunrise, Florida, United States of America, represented by Peretz Chesal & Herrmann, PL, United States of America.
Respondent is G L Realty Group, LLC, Beth Nielsen, aka “real estate” of Boynton Beach, Florida, United States of America.
The disputed domain name <glhomessales.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2010. On September 27, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On the same date GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that “real estate” 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 October 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2010.
The Center appointed Lynda J. Zadra-Symes as the sole panelist in this matter on November 8, 2010. 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.
Complainant is one of the largest builders and sellers of home and residential communities in the United States.
Complainant owns the following United States Trademark Registration:
United States Trademark Registration No. 2294255 for the mark G.L. HOMES, registered November 23, 1999 for “Real estate agency; real estate brokerage; and real estate listing services” in International Class 36, with a date of first use of December 31, 1986; and for “Residential construction; house building and repair; and real estate development and planning services, namely, developing, laying out, and constructing residential communities and individual residences, and construction management” in International Class 37, with a date of first use of December 31, 1986;
Complainant also owns the domain name <glhomes.com>, which was registered in 1998. Complainant advertises its homes for sale at its “www.glhomes.com” website, with prominent use of its G.L. HOMES trademark.
The WhoIs information for the disputed domain name lists “real estate” as the Registrant. The address listed is for a property owned by Beth Nielsen. Beth Nielsen is listed as the Administrative Contact for the disputed domain name. In follows from correspondence with Complainant, that Ms. Nielsen admitted that she is the owner of the disputed domain name, and principal of a business named G L Realty Group LLC which was formed in October 2009, and acts as a real estate broker, including for sales of Complainant’s G.L. Homes.
Complainant contends that the disputed domain name is identical or confusingly similar to its G.L. HOMES trademark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is being used in bad faith.
Respondent did not reply to Complainant’s contentions.
In order to succeed in its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to 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”.
Complainant has demonstrated that it owns trademark rights in the trademark G.L. HOMES in the field of real estate and residential construction services, including real estate agency and real estate brokerage services. The disputed domain name incorporates Complainant’s trademark. The addition of a descriptive word, such as “sales” does not add any distinctive subject matter for the purpose of evaluating confusing similarity.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark.
Complainant contends that it has never authorized Respondent to register or use the G.L. HOMES trademark in a domain name or to use the G.L. HOMES trademark in any manner.
There is no evidence of any commercial relationship between Complainant and Respondent which would entitle Respondent to use Complainant’s marks.
There is no evidence that Respondent is or has been commonly known by the disputed domain name or has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is using the disputed domain name in connection with a real estate brokerage service.
Respondent’s own residence, purchased approximately two years before she registered the disputed domain name, is located in Complainant’s G.L. HOMES community of “Canyon Isles” and was purchased from Complainant.
Respondent appears to receive commissions or other financial gain by brokering and/or facilitating sales of real estate.
Prior to Respondent’s receipt of Complainant’s April 28, 2010 cease and desist letter, Respondent’s website located at the disputed domain name prominently featured Complainant’s G.L. HOMES logo mark, apparently copied from Complainant’s website, as well as Complainant’s proprietary pictures of Complainant’s G.L. HOMES properties, also apparently copied from Complainant’s website. After receipt of Complainant’s letter, Respondent removed Complainant’s GL HOMES logo and pictures from the website, but refused to transfer the disputed domain name to Complainant. Respondent also altered the heading of the website at the disputed domain name to read “Good Living in West Boynton Beach” and claimed that “GL Homes Sales” stands for “Good Living Homes Sales” rather than G.L. HOMES. As Complainant has a United States Trademark for the term G.L. HOMES covering real estate brokerage services (which issued in 1999, and claims first use from 1986), Respondent’s use of that identical trademark for the same type of services without Respondent’s permission cannot be considered a bona fide use of the disputed domain name. Moreover, Respondent was well aware of Complainant’s trademark rights when she registered the disputed domain name. Such use is not a noncommercial fair use of Complainant’s trademark and is not a bona fide offering of goods or services under the Policy.
Accordingly, the Panel finds that Complainant has satisfied the requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the disputed domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain names primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the 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 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) 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 the respondent’s 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 of a product or service on the respondent’s website or location.
Respondent was obviously aware of Complainant’s trademark rights at the time of registering the disputed domain name. Respondent’s website at the disputed domain initially displayed copies of Complainant’s logo and photographs without Complainant’s permission. The evidence of record indicates that Respondent is not using the term GL HOMES in a nominative fair use manner to refer to Complainant. Rather, the evidence indicates that Respondent is using the disputed domain name to refer to her own “Good Living Homes” real estate brokerage services. As Complainant has a United States Trademark for the term G.L. HOMES covering real estate brokerage services (which issued in 1999, and claims first use from 1986), Respondent’s use of that term for competing real estate brokerage services cannot be considered a bona fide use of the disputed domain name. Moreover, Respondent was well aware of Complainant’s trademark rights when she registered the disputed domain name.
Accordingly, the submitted evidence demonstrates that Respondent is deliberately trading off the goodwill associated with Complainants’ marks and Internet traffic intended for Complainant’s website for Respondent’s commercial gain by creating a likelihood of confusion with Complainant’s trademark and thereby obtaining a commercial benefit. Such use evidences Respondent’s bad faith in registration and use of the disputed domain name.
The Panel finds that Respondent has registered and used the disputed domain name in bad faith.
For all 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 <glhomessales.com> be transferred to Complainant.
Lynda J. Zadra-Symes
Sole Panelist
Dated: November 23, 2010