Decisión del Panel Administrativo nº D2014-1359 of WIPO Arbitration and Mediation Center, October 28, 2014 (case 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick)

Resolution DateOctober 28, 2014
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick

Case No. D2014-1359

1. The Parties

The Complainants are 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. of San Francisco, California, United States of America ("U.S.") represented by Kilpatrick Townsend & Stockton LLP, U.S.

The Respondent is John Kirkpatrick of San Francisco, California, U.S., represented by Owen, Wickersham & Erickson, PC, U.S.

2. The Domain Name and Registrar

The disputed domain name [luminacondo.com] is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 11, 2014. On August 12, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2014, 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 proceeding commenced on August 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 10, 2014. The Respondent was granted an extension until September 22, 2014 in which to file a Response. The Response was filed with the Center on September 22, 2014.

The Center appointed William R. Towns as the sole panelist in this matter on September 29, 2014. 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.

On October 13, 2014, the Panel issued an Administrative Procedural Order inviting the Parties to provide supplemental submissions regarding the United States Patent and Trademark Office's (USPTO) registration of the LUMINA mark, issued to the Complainant 201 Folsom Option JV, L.P. subsequent to the filing of the Complaint and the Response. The Panel's Order also invited the Complainants to provide information relating to the Complainant 201 Folsom Acquisition, L.P.'s assertion of rights in the LUMINA mark, and invited the Respondent to provide information relating to its contention that the Complainants are not Tishman Speyer companies. The Complainants and the Respondent filed their supplemental submissions to the Center on October 20, 2014.

In view of the foregoing, the date for the submission of the Panel's decision to the Center was extended to October 28, 2014.

4. Factual Background

The Complainants identify themselves as members of the Tishman Speyer family of companies.[1 ] Tishman Speyer is large real estate owner, developer and operator. In February 2013 Tishman Speyer entered into a joint venture with China Vanke Co. Ltd. (Vanke), a large residential developer in China, to develop a luxury condominium project in the SoMa neighborhood of San Francisco, California, at 201 Folsom Street. Tishman Speyer was to be the developer, but Tishman Speyer and Vanke agreed to establish a limited partnership in connection with the project development. "Lumina" was the name given to the project.

On May 31, 2013, the Complainant 201 Folsom Option JV, L.P. filed on an intent to use trademark application for LUMINA with the USPTO. Subsequently, groundbreaking ceremonies for the project were held on June 26, 2013, at which time the Lumina name was publicly revealed. The official Lumina website at "www.luminasf.com" also was launched on June 26, 2013. The [luminasf.com] domain name, which resolves to the website, was registered by Tishman Speyer Properties. The website's home page displays a stylized LUMINA mark and renderings of the Lumina.

On September 23, 2014, the USPTO issued to the Complainant 201 Folsom Option JV, L.P. a registration certificate for LUMINA covering "real estate marketing services in the field of condominiums" in Class 35, and reflecting a first use date in June 2014. The USPTO's registration of the LUMINA mark came after the filing of the Complaint and Response; however, the USTPO approved the mark for publication on December 3, 2013, and a Statement of Use and use specimens were submitted by the Complainant on June 25, 2014, all prior to the filing of the Complaint.[2 ] The USPTO also has issued a Notice of Allowance respecting the registration of LUMINA for "real estate services, namely, property management services for condominium associations, homeowner associations, and apartment buildings" in Class 36, and "restaurant services" in Class 43.[3 ]

The Respondent identifies himself as a leading Broker Associate for Coldwell Banker in San Francisco. The Respondent registered the disputed domain name [luminacondo.com] on July 4, 2013. The disputed domain resolves to a website on which the Respondent provides information about the Lumina development. A screen shot of the Respondent's website was captured on August 7, 2014.[4 ] At that time the Respondent's website prominently displayed the stylized LUMINA mark, images of the Lumina properties displayed on the official LUMINA website, and floor plans.

On August 12, 2014, the Respondent modified his website to identify Polaris Pacific as the listing agent. This was inserted at the bottom of the website's home page, immediately below the Respondent's name and contact information. Subsequently, the Respondent has further modified his website to remove the stylized LUMINA mark, mock-up images of the completed property, and floor plans.[5 ] The Respondent's website at present prominently displays the LUMINA word work mark at the top of the website's home page.[6 ]

5. Parties' Contentions

A. Complainants

i. Complaint

The Complainants submit that the disputed domain name is confusingly similar to the LUMINA mark. The Complainants explain that the addition of the common and descriptive term "condo" (short for condominium) does not serve to distinguish the disputed domain name from the Complainants' mark, but in fact increases the confusing similarity of the disputed domain name with the LUMINA mark.

The Complainants asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainants explain that the Lumina condos are expected to be available in early 2015 and that sales efforts have already begun, with the condos marketed to the "very highest end of the condo market." The Complainants submit that due to the tremendous success of the Infinity, a related luxury condominium property developed by Tishman Speyer, there will be strong demand for the Lumina units, portending substantial and lucrative sales commissions for real estate agents/brokers in San Francisco. The Complainant relates that commissions paid to independent real estate agents arising from sales at the Infinity exceeded USD 12 million.

The Complainants represent that the Respondent has not been authorized to use the LUMINA mark, and that he has not been commonly known by the disputed domain name. The Complainants maintain that the Respondent registered and is using the disputed domain name and associated website to mislead consumers into thinking he enjoys an affiliation or special relationship with the Lumina, making him far more attractive as an agent or broker to potential buyers of Lumina condos, which in turn would potentially generate lucrative commissions for the Respondent. The Complainants further assert that the Respondent's website provides links to properties being offered by the Complainants competitors. The Complainants maintain that the Respondent's use of the disputed domain name cannot qualify as a bona fide offering of goods or services, or support a claim by the Respondent to be making a legitimate noncommercial or other fair use of the disputed domain name.

The Complainants contend that the Respondent registered and is using the disputed domain name in bad faith. The Complainants assert that the Respondent was aware of the Complainants' rights in the LUMINA mark when registering the disputed domain name, and that the Respondent is intentionally using the disputed domain name to capitalize on, or otherwise take advantage of, the Complainants' trademark rights, for commercial gain, by creating a likelihood of confusion with the Complainants' LUMINA mark as to source, sponsorship or affiliation.

ii. Complainants' Supplemental Filing

The Complainants urge the Panel to accept the USPTO's registration of the LUMINA mark to the Complainant 201 Folsom Option JV, L.P. as a sufficient showing of trademark rights for purposes of the Policy. The Complainants submit that as a related entity and the operator of the Lumina property the Complainant 201 Folsom Acquisition L.P. also has rights in the LUMINA mark. According to the Complainant's Supplemental Filing, the Complainants, both of which are limited partnerships, are controlled by the same general partner, TS 201 Folsom Promote, L.P., which in turn is controlled by Tishman Speyer. The Complainants request that an amendment to paragraph 40 of the Complaint be made to provide for the transfer of the disputed domain name to the Complainant 201 Folsom Option JV, L.P., should the Panel determine that the Complainant 201 Folsom Acquisition L.P. does not have an interest in the disputed domain name.

B. Respondent

i. Response

The Respondent initially submits that the Complaint should be denied...

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