The Complainant is SC Property Acquisition, LLC of Fort Lauderdale, Florida, United States of America (“United States”) and SC Residences Condominiums, LLC of Fort Lauderdale, Florida, United States, represented by Burr & Forman LLP, United States.
The Respondent is George Thomas d/b/a George Thomas Real Estate of Fort Lauderdale, Florida, United States.
The disputed domain names <thesurfclubinfo.com> and <thesurfclubmiami.com> are registered with eNom, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 14, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 15, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2018.
The Center appointed Kimberley Chen Nobles as the sole panelist in this matter on March 28, 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.
The Complainants’ company names are SC Property Acquisition, LLC (“SCPA”) and SC Residences Condominiums, LLC (“SC Residences”). SCPA acquired the rights to THE SURF CLUB mark in 2013 as part of its efforts to redevelop The Surf Club beachfront property based in Surfside, Florida (located in Miami-Dade County). THE SURF CLUB mark has been in commercial use since 1931 when it was opened as an exclusive social club. Presently, The Surf Club property is composed of a social club, a 77-room hotel, 120 residences, 30 hotel residences, two restaurants, a spa, 40 beach cabanas, and 2 boutiques, all occupying three buildings on a nine acre beachfront land plot. SC Residences manages these properties and related activities using THE SURF CLUB mark under license from SCPA. Pursuant to these duties, the Complainants have expended significant resources promoting services and properties under THE SURF CLUB mark and have developed a significant presence in the real estate market.
The Complainants obtained a registration for the mark THE SURF CLUB on March 31, 2015 (United States registration No. 4713379).
The disputed domain name <thesurfclubmiami.com> was registered on May 2, 2013. The disputed domain name <thesurfclubinfo.com> was registered on May 21, 2013. Both disputed domain names are in use for two identical websites in which luxury hotel rooms and residences are showcased.
The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants’ THE SURF CLUB mark. The Complainants have rights in THE SURF CLUB mark by virtue of their trademark registrations. When comparing the disputed domain names to the Complainants’ trademark, the comparison should be made to the second-level portion of the disputed domain names only. The Top-Level Domain (“TLD”) “.com” should not be considered. The disputed domain names consist of THE SURF CLUB trademark plus the term “info”, which is shorthand for “information”, and “miami”, which is a geographical location. The generic terms “info” and “miami” do not negate the confusing similarity. Additionally, the Respondent’s use of the disputed domain names to contributes to the confusion because the Respondent is using the disputed domain names to direct Internet users to a website featuring a logo highly similar to an older version of the Complainants’ The Surf Club logo. This indicates that the Respondent intended the disputed domain names to be confusingly similar to the Complainants’ trademark.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not sponsored by or affiliated with the Complainants. The Complainants have not given the Respondent permission to use the Complainants’ trademark in any manner, including in domain names. The Respondent is not commonly known by the disputed domain names. The WhoIs data for the disputed domain names identifies the registrant as “George Thomas”, which does not resemble the disputed domain names in any way. The Respondent’s use of the Complainants’ mark in the Respondent’s domain name website is a direct attempt to take advantage of the fame and goodwill that the Complainants have built in their brand since 1931. (The brand establishment date given in the complaint is 1931, but the founding date given by “www.thesurfclub.com” and “press.fourseasons.com” is December 31, 1930. For consistency across related case files, this decision will use the date given in the complaint.)
Finally, the Complainants contend that the Respondent registered and is using the disputed domain names in bad faith. The Complainants’ THE SURF CLUB mark enjoys a substantial and widespread reputation and has been in use since 1931, well before the Respondent registered the disputed domain names. By registering domain names that incorporate the Complainants’ THE SURF CLUB mark in its entirety and adding the terms “info” and “miami”, the Respondent has created domain names confusingly similar to the Complainants’ mark and domain name. THE SURF CLUB mark is so associated with the Complainants that the Respondent’s use of it strongly implies bad faith. It is unlikely that the Respondent coincidentally chose the disputed domain names without knowledge of the Complainants because the Respondent added the term “info” which is related to the Complainants’ business activities and added the term “miami” as it related to the Complainants’ business activities in real estate there. At the time of the registration of the disputed domain names, the Respondent knew, or at least should have known, of the existence of the Complainants’ trademark and that registration of domain names containing well-known trademarks constitutes bad faith per se.
Bad faith use can be established by evidence demonstrating that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by using the disputed domain names to create a likelihood of confusion with the Complainants’ mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, products or services. The Respondent is creating a likelihood of confusion by using a slightly modified version of the Complainants’ mark in domain names where the mark is the main feature and attempting to profit from such confusion by using the website associated with the disputed domain names to sell similar products.
The Complainants request that the disputed domain names be transferred to them.
The Respondent did not reply to the Complainants’ contentions.
The Policy provides for transfer or cancellation of the disputed domain name(s) if the complainant establishes each of the following elements set out in paragraph 4(a) of the Policy:
(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.
The Complainants have rights to THE SURF CLUB mark. The Complainants have established that they are the registered owner of trademark registrations of THE SURF CLUB mark in the United States (where the Respondent is located).
The disputed domain name <thesurfclubinfo.com> contains the elements “thesurfclub”, “info”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, WIPO Case No. DCO2012-0027; Belo Corp. v. George Latimer, WIPO Case No. D2002-0329. The addition of the word “info” does not distinguish the disputed domain name from THE SURF CLUB mark to avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, WIPO Case No. D2000-1414. Indeed, the addition of “info” may only reinforce the confusing similarity because of its common association with any online platform. THE SURF CLUB remains the dominant part of the disputed domain name.
The disputed domain name <thesurfclubmiami.com> contains the elements “thesurfclub”, “miami”, and the TLD “.com”. As a technical part of the domain name, the “.com” TLD may be disregarded in determining confusing similarity. Alienware Corp. v. Truther, supra; Belo Corp. v. George Latimer, supra. The addition of the word “miami” does not distinguish the disputed domain name from THE SURF CLUB mark to avoid confusing similarity. See Compagnie Generale des Etablissements Michelin-Michelin & Cie. v. Tgifactory, supra; Millennium & Copthorne Hotels PLC, Millennium & Copthorne International Limited (MCIL) v. Sanjay Makkar and Millennium Hotel, WIPO Case No. D2015-0210. In addition, Miami is a geographical location and the addition of the word may only reinforce the confusing similarity because the Complainants’ properties are in Miami. THE SURF CLUB remains the dominant part of the disputed domain name.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to the Complainants’ trademark.
Under paragraph 4(c) of the Policy, the respondent may demonstrate rights or legitimate interests in the disputed domain name(s) by showing any of the following circumstances, in particular but without limitation:
(i) The respondent’s use of, or demonstrable preparations to use, the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services before any notice to the respondent of the dispute; or
(ii) The respondent has been commonly known by the disputed domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence in the record to suggest that the Respondent has been commonly known by the disputed domain names. The Complainants contend, and the Respondent does not deny, that the Complainants never authorized the Respondent to use their THE SURF CLUB mark or to register any domain name incorporating that trademark. The Respondent is not affiliated with the Complainants in any way.
The Respondent is not using, nor is there evidence that the Respondent has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services as contemplated by paragraph 4(c)(i) of the Policy. The Respondent uses the disputed domain names to publish an online real estate website that offers the same products as the Complainants’ and which could be confused with the Complainants’ website and services. This is not a bona fide offering. See, e.g., America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (“[I]t would be unconscionable to find that a bona fide offering of services in a respondent’s operation of a website using a domain name which is confusingly similar to the complainant’s mark and for the same business.”). Additionally, THE SURF CLUB mark is well-known in Miami, the location of the Respondent and where the Complainants and their services maintain a presence. In the absence of evidence to the contrary, knowledge of the Complainants and their rights in THE SURF CLUB mark may be imputed to the Respondent at the time of registration of the disputed domain name. See Harvey Norman Retailing Pty Ltd v. gghome.com Pty Ltd, WIPO Case No. D2000-0945. (“The inevitable conclusion is that th[is] word[ ] [is] not one[ ] that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant.”). Indeed, the Respondent’s addition of the terms “info” and “miami”, which bear a direct connection to the services offered by the Complainants under THE SURF CLUB mark, and the use of a logo that is highly similar to an older version of the Complainants’ The Surf Club logo, indicate that the Respondent was aware of the Complainants, their services and THE SURF CLUB mark.
The Respondent is not making any noncommercial or fair use of the disputed domain names. To the contrary, the evidence in the record indicates that the Respondent uses the disputed domain names for commercial gain by seeking to create an impression of an association with the Complainants and to misleadingly divert consumers to the Respondent’s competing website.
Accordingly, the record indicates that the Respondent has no rights or legitimate interest in respect of the disputed domain names.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular, but without limitation, shall be evidence of the registration and use of the disputed domain name(s) in bad faith:
(i) Circumstances indicating that the respondent has registered or has acquired the disputed domain name 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 that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) The respondent has registered the disputed 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 disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed 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 such website or location or of a product or service on such website or location.
The present case falls squarely within that contemplated by paragraph 4(b)(iv) of the Policy.
The Respondent registered the disputed domain names in bad faith. The Respondent undoubtedly was aware of the Complainants and their THE SURF CLUB mark at the time of registration of the disputed domain names and that such registration was in bad faith. The Complainants and their THE SURF CLUB mark are widely known throughout the United States. The Respondent must have had the Complainants’ famous trademark in mind when the Respondent registered the disputed domain names, as evidenced by the Respondent’s use of the disputed domain names to direct Internet users to a website offering services that compete with those of the Complainants. See Balenciaga v. liu zhixian, zhixian liu, WIPO Case No. D2010-1831. Moreover, the Respondent included the terms “info” and “miami”, words that bear a direct connection to the Complainants’ THE SURF CLUB-branded services, in the disputed domain name and uses a logo that is very similar, if not identical, to an older version of the Complainants’ The Surf Club logo prominently on the Respondent’s website, further indicating that the Respondent was well aware of the Complainants, their services and THE SURF CLUB marks. The Respondent’s registration of the disputed domain names incorporating the Complainants’ mark, being fully aware of the Complainants’ rights in the mark, without any rights or legitimate interests in doing so is registration in bad faith. See, e.g., Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. D2009-0320; The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113.
The Respondent also uses the disputed domain names in bad faith. By using the disputed domain names to link to a website that promotes and offers competing services, the Respondent conveyed the impression that the Respondent’s website was affiliated with or created, endorsed or sponsored by the Complainants. See Dow Jones & Company, Inc. v. Down Johns Update, WIPO Case No. D2000-0495. The Respondent’s website does not offer any statements indicating that the Respondent and the website lack affiliation with the Complainants. The Respondent has intentionally attempted to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainants’ THE SURF CLUB mark as to the source, sponsorship, affiliation, or endorsement of such website. The Respondent further attempted to create Internet user confusion by prominently displaying a The Surf Club logo on the Respondent’s website that is very similar to an older version of the Surf Club logo used by the Complainants in connection with their services. These activities amount to bad faith use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy. See id. Additionally, the Respondent’s failure to respond to the Complainants’ efforts to contact the Respondent for settlement outside of this proceeding “provide[s] strong support for a determination of ‘bad faith’ registration and use.” Encyclopaedia Britannica, Inc. v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330.
For these reasons, the Panel finds that the Respondent’s registration and use of the disputed domain names is in bad faith.
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 names, <thesurfclubinfo.com> and <thesurfclubmiami.com> be transferred to the Complainants.
Kimberley Chen Nobles
Sole Panelist
Date: April 10, 2018