National Arbitration Forum

DECISION

Independence Harbor I Condominium Association, Inc. v. Noel Turner
Claim Number: FA0603000666077

PARTIES
Complainant is Independence Harbor I Condominium Association, Inc. (“Complainant”), represented by Tracey E. Diamond, of Berger Legal, 52 Cameo Drive, Cherry Hill, NJ 08003.  Respondent is Noel Turner (“Respondent”), 504 Smith Court, Independence Harbor, Edgewater, NJ 07020.

REGISTRAR AND DISPUTED DOMAIN NAME 
The domain name at issue is <independenceharbor.com>, registered with Go Daddy Software, Inc.

PANEL
The undersigned certifies that he or she has acted independently and impartially and to the best of his  knowledge has no known conflict in serving as Panelist in this proceeding.

Professor Darryl C. Wilson as Panelist.

PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 27, 2006.

On March 27, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <independenceharbor.com> domain name is registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 19, 2006 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@independenceharbor.com by e-mail.

A timely Response was received and determined to be complete on April 13, 2006.

On April 19, 2006, the Forum received an additional submission from Complainant.  This submission failed to comply with Supplemental Rule 7 due to a lack of the required fee. The fee was ultimately received late.  Despite the submission’s failure to comply with the applicable rules, it will be considered by the Panel.

On April 19, 2006, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.

RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS
A. Complainant

Complainant asserts that it has used the trademark INDEPENDENCE HARBOR extensively and continuously since 1987 in the real estate community.  Complainant states that it “is the exclusive licensee of this trademark in connection with real estate management...” activities associated with the “Independence Harbor” development located in Edgewater, New Jersey.  Complainant contends that significant money has been invested in advertising and promotion of the trademark, thereby giving rise to “substantial public recognition and goodwill” in the mark.  Complainant states that Respondent has registered a domain name identical to its mark, specifically <independenceharbor.com>.  Complainant argues that Respondent has no legitimate interests or rights in the mark and that the domain name was registered in bad faith.  Complainant further contends that Respondent is not currently known, nor has he been known by the domain name but instead registered the name solely for the purpose of disrupting the Complainants’ business.

B. Respondent

Respondent asserts that he has rights and interests with respect to the disputed domain name and that he neither registered nor has ever used the domain name in bad faith.  Respondent contends that since August 2000 he has been a resident condominium owner in the Independence Harbor development and that in October of that year he registered the domain name <independenceharbor.com>.  He then established a website to serve as a non-profit, non-commercial information site for residents and non-residents alike.  Respondent asserts that he has continuously maintained the website at his own expense and that the website has received no advertising or any kind of sponsorship, nor has it ever been offered for sale or for lease in any way.  Respondent further contests Complainants’ rights in the INDEPENDENCE HARBOR mark and also emphasizes the presence of a disclaimer on his website that indicates that there is no relationship between himself and the registered mark holder.

C. Additional Submissions

Complainant further asserted that Respondent’s use of the domain name did not constitute fair use and that, to the contrary, Respondent’s unfair use of the domain name was harmful to the entire condominium development.  Complainant also contends that Respondent’s disclaimer is insufficient to prevent Internet users from being confused as to sponsorship, endorsement, or affiliation with the condominium.  Complainant asserts that Respondent does not have the right to provide the information he does on his website based on principles of free speech.

FINDINGS
Complainant, Independence Harbor I Condominium Association, Inc., is an organization that claims an exclusive license in the federally registered mark INDEPENDENCE HARBOR.  In support of this assertion, Complainant provided copies of various legal documents, including an Assignment and License Back Agreement (“Agreement”) executed by the Delaware River Port Authority (“DRPA”) and Hartz River Road Limited Partnership (”Hartz”) on July 15, 2002.  Pursuant to the Agreement, Hartz assigned the INDEPENDENCE HARBOR mark to DRPA in exchange for an exclusive license to use the mark for real estate purposes associated with the Independence Harbor development located at 361 River Road in Edgewater, N.J.  The legal documents indicate that Hartz owned the U.S. Federal Registrations for INDEPENDENCE HARBOR No. 2567209, Registered May 7, 2002, and No. 2558616, Registered April 19, 2002.  Both marks are for real estate management and leasing of commercial, residential and retail store properties.  One of the documents indicates that Hartz will permit the Condominium Association to freely use the INDEPENDENCE HARBOR mark in connection with its activities.  That document further provides that “DRPA shall have the sole right, at its sole expense, to seek legal redress for unauthorized use or infringement of the Independence Harbor mark.”  However, if DRPA chooses to not take any action against infringement, Hartz may, under certain circumstances, take action to enforce its rights in the mark.  A separate document assigns rights in the mark from Hartz to the Complainant.  However, it does not make mention of any enforcement rights. 

Complainant has not clearly shown that they are the proper parties to bring an enforcement action regarding the Independence Harbor mark.

Respondent, Noel Turner registered the domain name <independenceharbor.com> on October 31, 2000 to supply information about the condominium development in which he lives and owns.  The site includes information such as contact numbers, condo rules, sales information, and other data available to residents and the general public.  Respondent and the present officers of Complainant condominium association have been involved in a long-running dispute over the content and ownership of Respondent’s website.  On May 11, 2004, the condominium association registered their own website <independenceharbor.org>.

DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
  2. the 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 contends that the <independenceharbor.com> domain name is identical to its mark because the domain name completely incorporates the name and merely adds the generic top-level domain (gTLD) “.com.”  Addition of gTLD’s is necessary for domain name registration and does not negate the identical aspects of the name and Complainant’s mark INDEPENDENCE HARBOR, pursuant to Policy ¶4(a)(i).  See Nev. State Bank v. Modern Ltd.—Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy”); see also Daedowg-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent’s domain name, <kioti.com>, is identical to Complainant’s KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶4(a)(i).”).

However, Respondent’s registration of the <independenceharbor.com> domain name predates Complainant’s registration of the INDEPENDENCE HARBOR mark with the USPTO.  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (finding that Policy ¶4(a)(i) “necessarily implies that Complainant’s rights predate Respondent’s registration . . . of the domain name”); see also Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (noting that as the respondent’s registration of the <razorbox.com> domain name predated the complainant’s alleged rights (the respondent registered the domain name more than two years prior to the complainant’s stated first use in commerce), the complainant did not have standing to bring a claim under the UDRP).

While the Panel recognizes that the disputed domain name and the registered mark are virtually identical, the Respondent’s registration of the domain name predates the Complainants’ federal registration by two years.  Although Complainants’ registration indicates a first use in commerce date prior to Respondent’s registration, there is no explanation of the nature or scope of the use in commerce by Complainant, and it is clear that others used the name Independence Harbor prior to Respondent’s domain name registration and continue to do so.  While the INDEPENDENCE HARBOR mark is presumptively distinctive for the services noted based on the registered mark, this does not remove the terms from the lexicon of the public to the extent necessary for common descriptive needs.  The mark INDEPENDENCE HARBOR is a descriptive term that is required to be used in order to identify a particular geographical location.  See Zero Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (“Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis.”).

Complainant has not proven this element.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interest in <independenceharbor.com>.  Complainant states that the only apparent use of Respondent’s website is to describe the Independence Harbor real estate development.  Complainant has not authorized this use and states that the website contains numerous inaccuracies about the Independence Harbor real estate property.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (where the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within control of the Respondent”).

Respondent disputes Complainant’s characterization of the website and points out that he has never been contacted by the board regarding factual inaccuracies since the website’s inception and that the information is correct and up-to-date and meets his goals of objectivity and full disclosure.  Because Respondent does not use the domain name for commercial purposes, the Respondent has established rights in the disputed domain pursuant to Policy ¶4(c)(iii).  See Lockheed Martin Corp. v. Etheridge, D2000-0906 (WIPO Sept. 24, 2000) (finding respondent has rights in the <missionsucces.net> domain name where she was using the domain name in connection with a non-commercial purpose); see also Baja Marine Corp. v. Wheeler Techs., Inc., FA 96954 (Nat. Arb. Forum May 17, 2001) (finding that respondent has rights and legitimate interests in the domain name where the respondent made a non-commercial use of the <bajaboats.com> domain name and received no funds from users of the site connected to the domain name).

Respondent also uses a prominent disclaimer on his website.  This disclaimer also supports Respondent’s claim that he has rights or legitimate interests in the disputed domain.  See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent has rights or legitimate interests in the <aoltrafficschool.com> domain name by virtue of the respondent’s prominent use of a disclaimer).

Complainant has not proven this element.

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith.  Complainant claims that Respondent has intentionally attempted to attract Internet users to its website by creating a likelihood of confusion, and that users have likely mistakenly visited Respondent’s website and received bogus information about the Independence Harbor property.  Complainant fails to cite any specific portions of Policy ¶ 4(b) that are implicated by Respondent’s website or provide any facts as evidence of Respondent’s registration and use in bad faith aside from the general assertion noted above.  The Panel notes that the elements set forth in Policy ¶ 4(b) are illustrative rather than exclusive and that evidence may be presented that does not rely on Policy ¶ 4(b) factors to show registration and use in bad faith.  However, conflicting assertions regarding the general veracity of the information on a disputed website without more is insufficient evidence of registration and use in bad faith within the meaning of Policy ¶ 4(b).

Respondent’s registration of the disputed domain name predating Complainant’s registration of the INDEPENDENCE HARBOR mark indicates a lack of bad faith on Respondent’s behalf.  See Ode v. Intership Ltd., D2001-0074 (WIPO May 1, 2001) (“We are of the unanimous view that the trademark must predate the domain name.”).

Respondent’s disclaimer also indicates a lack of bad faith as it shows Respondent does not intend to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark.  See Al-Anon Family Group Headquarters, Inc. v. Reid, D2000-0232 (WIPO June 5, 2000) (refusing to find bad faith where the respondent conspicuously informs viewers that his site is not affiliated with the complainant and alternatively finding that such a disclaimer is evidence of good faith on the part of the respondent which precludes any determination that the respondent intentionally attempted to attract Internet users to his website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website).

Numerous cases find that if a Respondent has rights or legitimate interests in the disputed domain, pursuant to Policy ¶4(a)(ii), then Respondent’s registration and use of the domain name are not in bad faith pursuant to Policy ¶4(a)(iii).  These cases find such a result even where the Respondent is using the domain name in connection with a fair business interest or otherwise offering goods or services on their website.  See Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000); see also DJF Assocs., Inc. v. AIB Commc’ns., FA 95612 (Nat. Arb. Forum Nov. 1, 2000).  There is even stronger support for a finding of good faith where Respondent’s use of the domain name is merely descriptive and Respondent’s website is purely informational and non-commercial in nature.

Complainant has not proven this element.

DECISION
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Professor Darryl C. Wilson, Panelist
Dated:May 3, 2006

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