DECISION

Pawleys Island Realty Co., LLC v. Registrant

Claim Number:  FA0305000156316

PARTIES

Complainant is Pawleys Island Realty Co., LLC, Pawleys Island, SC, USA (“Complainant”) represented by Nate Fata. Respondent is Registrant, Hong Kong, CN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <pawleysislandrealty.com>, registered with Enom, Inc.

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 1, 2003; the Forum received a hard copy of the Complaint on April 30, 2003.

On May 7, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <pawleysislandrealty.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 May 13, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 2, 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@pawleysislandrealty.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 June 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <pawleysislandrealty.com> domain name is identical to Complainant’s PAWLEYS ISLAND REALTY mark.

2. Respondent does not have any rights or legitimate interests in the <pawleysislandrealty.com> domain name.

3. Respondent registered and used the <pawleysislandrealty.com> domain name in bad faith.

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

FINDINGS

Complainant, Pawleys Island Realty Co., LLC, established in 1962, is a rental property management and real property sales company in Pawleys Island, South Carolina. Pawleys Island is one of the United States’ oldest family resort destinations, where Complainant manages over seventy percent of all beach house rentals. Complainant has used the PAWLEYS ISLAND REALTY mark since 1962 to promote and market its services, spending more than $120,000 in advertising in 2001.

Complainant aquired the <pawleysislandrealty.com> domain name in 2001 from “Vince,” and registered it with Verisign. Complainant used the domain name to market its services in the Pawleys Island area. While it possessed the disputed domain name, Complainant used it in various forms of advertising material and also linked the page to its <pawleysislandrentals.com> and <pawleysislandsales.com> domain names.

In the summer of 2002, Verisign sent a renewal notice for the <pawleysislandrealty.com> domain name. However, Verisign’s information reflected “Vince’s” email address as the proper contact for the renewal notice and not Complainant’s. As a result, Complainant did not receive this renewal notice, and its domain name registration inadvertently lapsed.

Respondent, listed simply as “Registrant,” registered the <pawleysislandrealty.com> domain name on August 24, 2002, and is not licensed or authorized to use Complainant’s mark for any purpose. After registering Complainant’s lapsed domain name, Respondent notified a sales associate of Complainant that it had registered the domain name, and during the course of an e-mail exchange between the parties it was found that Respondent wanted $2,000 for the transfer of the domain name registration. This request came after Respondent threatened to point the disputed domain name to some “other place” soon.

At one point, the disputed domain name redirected Internet users to an adult-oriented website. Complainant has received numerous calls and complaints concerning the current nature of the disputed domain name.

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 rights in the PAWLEYS ISLAND REALTY mark through forty years of use of the mark, establishing secondary meaning associated with the mark. This is sufficient to grant Complainant standing under the UDRP. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).

Complainants rights are sufficient regardless of the fact that Respondent operates in China, while Complainant has developed its rights in the United States. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which Respondent operates.  It is sufficient that Complainant can demonstrate a mark in some jurisdiction).

Respondent’s <pawleysislandrealty.com> domain name is identical to Complainant’s PAWLEYS ISLAND REALTY mark. Neither the addition of the top-level domain “.com” nor the elimination of the spaces in Complainant’s mark are relevant differences between Complainant’s mark and the disputed domain name for the purposes of Policy ¶ 4(a)(i). See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

Accordingly, the Panel finds that the <pawleysislandrealty.com> domain name is identical to Complainant’s PAWLEYS ISLAND REALTY mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent failed to respond to the Complaint. Therefore, the Panel chooses to view the Complaint in a light most favorable to Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on the Respondent’s failure to respond: (1) the Respondent does not deny the facts asserted by the Complainant, and (2) the Respondent does not deny conclusions which the Complainant asserts can be drawn from the facts).

As evidenced in the email exchange between Respondent and Complainant, Respondent was aware of Complainant’s rights in the PAWLEYS ISLAND REALTY mark and its previous use of the <pawleysislandrealty.com> domain name. Given the limited uses available to the very specific <pawleysislandrealty.com> domain name, the Panel infers that Respondent’s knowledge of Complainant’s rights in the PAWLEYS ISLAND REALTY mark was it’s sole reason in registering the disputed domain name. This does not evidence rights or legitimate interets in the domain name. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that “Respondent’s opportunistic registration of the Complainant’s domain name, within 24 hours of its lapse, weighs strongly in favor of a finding that Respondent has no rights or legitimate interests in the disputed domain name”).

Similarly, Respondent’s demand for $2,000 to transfer the domain name registration, coupled with its threat to point the domain name to “some other” website, imply that Respondent’s reasoning behind registering the domain name was knowledge of the value the domain name had to Complainant, and a desire to capitalize on that value. Registering a domain name in order to sell the registration to the corresponding trademark holder is evidence that Respondent does not have rights or legitimate interests in the disputed domain name. See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).

Respondent uses the disputed domain name to redirect Internet users to an adult oriented website. The fact that Respondent carried through with its threat to redirect Complainant’s website, that not only tarnishes Complainant’s mark but offends customers of Complainant who expect to find Complainant’s website at the disputed domain name, is further evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See MatchNet plc. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material where such use is calculated to mislead consumers and to tarnish Complainant’s mark); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).

The Panel also chooses to view Respondent’s failure to respond to the Complainant as evidence that it lacks rights or legitimate interests in the disputed domain name. 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 BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <pawleysislandrealty.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

In determining whether Respondent registered and used the disputed domain name in bad faith, the Panel will analyze the circumstances surrounding Respondent’s registration and subsequent use, not just the provisions of Policy ¶¶ 4(b)(i)-(iv), in reaching its conclusion. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”)

Respondent registered the <pawleysislandrealty.com> domain name because it knew of the domain name’s value to Complainant, not because it had any good faith use planned for the domain name. While a complainant’s previous ownership of a domain name registration is not evidence that any subsequent registrant of that domain name is blameworthy per se, in these circumstances such registration and use amounts to bad faith. See InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (inferring that Respondent had knowledge that the <tercent.com> domain name, which previously belonged to Complainant, when Respondent registered said domain name the very same day Complainant’s registration lapsed).

Furthermore, the evidence before the Panel indicates that Respondent registered the disputed domain name in order to earn a profit through re-sale of its registration to Complainant for at least $2,000. Registering a domain name for the primary purpose of selling the domain name registration to the proper trademark holder is evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277 (WIPO May 30, 2000) (finding that the name was registered in bad faith because of the short time frame between Respondent’s registration and the unsolicited offer of sale to Complainant).

The Panel thus finds that Respondent registered and used the <pawleysislandrealty.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

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

Accordingly, it is Ordered that the <pawleysislandrealty.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  June 10, 2003

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