LandAmerica Financial Group, Inc. v. Joseph Virzi

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LandAmerica Financial Group, Inc. v. Joseph Virzi

Case No. D2002-0145

1. The Parties

The Complainant is LandAmerica Financial Group, Inc., a corporation organized

in the State of Virginia, United States of America (USA), with place of business

in Richmond, Virginia, United States of America.

The Respondent is Joseph Virzi, with address in Fremont, California, United

States of America.

2. The Domain Name and Registrar

The disputed domain name is <landamerica.com>.

The registrar of the disputed domain name is Network Solutions, Inc., with

business address in San Francisco, California, United States of America.

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

(a) The Complainant initiated the proceeding by the filing of a complaint via

e-mail and courier mail received by the WIPO Arbitration and Mediation Center

("WIPO") on February 14, 2002. Complainant paid the requisite

filing fee. On February 25, 2002, WIPO transmitted a Request for Registrar

Verification to the registrar, Network Solutions, Inc. The Registrar’s Response

was received the same day.

(b) On March 5, 2002, WIPO transmitted notification of the complaint and commencement

of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On March 25, 2002, Respondent’s response was received via e-mail by WIPO,

and on March 27, 2002, the response was received in hardcopy.

(d) On April 11, 2002, WIPO received a supplemental filing via e-mail from

Complainant.

(e) On April 18, 2002, WIPO received a supplemental filing via e-mail from

Respondent.

(f) WIPO advised Complainant and Respondent via e-mail that requests to file

supplemental submissions and the text of such submissions would be transmitted

to the Panel and that the determination whether to accept and consider those

submissions would be made by the Panel.

(g) On April 23, 2002, WIPO invited the undersigned to serve as panelist in

this administrative proceeding, subject to receipt of an executed Statement

of Acceptance and Declaration of Impartiality and Independence ("Statement

and Declaration"). On April 30, 2002, the undersigned transmitted

via telefax the executed Statement and Declaration to WIPO.

(h) On May 1, 2002, Complainant and Respondent were notified by WIPO of the

appointment of the undersigned sole panelist as the Administrative Panel (the

"Panel") in this matter. WIPO notified the Panel that, absent exceptional

circumstances, it would be required to forward its decision to WIPO by May 15, 2002.

The Panel received a hard copy of the file in this matter by courier from WIPO.

The Panel has not received any requests from Complainant or Respondent regarding

further submissions, waivers or extensions of deadlines, and the Panel has not

found it necessary to request any further information from the parties. The

proceedings have been conducted in English.

4. Factual Background

Complainant is the holder of trademark and service mark registrations for the

term "LANDAMERICA" on the Principal Register at the United States

Patent and Trademark Office (USPTO), as assignee of Commonwealth Land Title

Insurance Company. The word service mark registration application was filed

July 22, 1997, claims a date of first use and first use in commerce

of February 28, 1998, and has a registration date of November 6, 2001

(Reg. No. 2,504,846, in International Classes (IC) 35, 36, 37 and 42, generally

pertaining to real estate related services). The word trademark registration

application was filed July 22, 1997, claims a date of first use and

first use in commerce of February 1998, and has a registration date of

April 18, 2000, (Reg. No. 2,343,936 , in IC’s 21, 23, 26, 36 and 38,

generally pertaining to computer programs for use in connection with real estate

related services). (Complaint, Annex C)

Complainant holds various additional trademark and service mark registrations

and intent to use allowances that pertain to stylized representations of the

"LANDAMERICA" mark, as well as "LANDAMERICA"-formative marks

(such as "LANDAMERICA ONESTOP"). None of these registrations or allowances

claims a date of first use prior to February 1998. (Id.)

Complainant has used the "LANDAMERICA" mark in commerce in the United

States of America in connection with the provision of services related to real

estate (e.g., insurance services) and real estate transactions. Complainant

has undertaken substantial advertising using the mark. Complainant maintains

an active commercial website at Internet address (URL) <www.landam.com>.

(Id., Annexes D & E)

According to the registrar’s verification response to WIPO, dated February 26, 2002,

"Joseph Virzi" is the listed registrant of the domain name <landamerica.com>.

According to a Network Solutions WHOIS database printout dated January 13, 2002,

the record of the disputed domain name was created on June 4, 1996,

and was last updated on July 19, 2000. The record is scheduled to

expire on June 5, 2004. (Complaint, Annex A)

Landamerica is a Nevada Corporation whose officers are Vincent D. Virzi, President

and Lawrence D. Virzi, Secretary-Treasurer. (Incorporated June 24, 1997,

File No. C13524-1997), Records of Nevada Secretary of State, Jan. 24, 2002.

(Complaint, Annex H). Lawrence D. Virzi has co-executed the documents submitted

by Respondent in this proceeding. Respondent asserts that he has acted in respect

to the disputed domain name on behalf of the Landamerica corporation, and the

evidence submitted by Respondent supports that claim. (Response and Respondent’s

Rebuttal). The Nevada record submitted by Complainant indicates that Landamerica

was in default as of January 24, 2002. Respondent asserts that a technical

filing deficiency has been corrected, and that the corporation is presently

in good standing (Respondent’s Rebuttal). In any event, the evidence presented

does not show that Landamerica’s corporate charter was revoked or terminated.

Respondent has submitted a deed of trust showing that Landamerica, a Nevada

corporation, acquired title to a certain parcel of real property in Sacramento,

California on November 11, 1997 (Response, Annex A).

Respondent asserts that the disputed domain name was registered on June 4, 1996,

with the intention to use it in connection with its real property business,

including to list properties offered for sale. Respondent indicates that it

delayed activating its website until it had acquired an adequate inventory of

properties. (Response and Respondent’s Rebuttal)

In its Reply brief, Complainant asserts that following its initiation of this

proceeding, it was contacted by Lawrence Virzi who indicated a potential interest

in selling the disputed domain name to Complainant or a third party. Complainant

transmitted written offers to Respondent (offering to buy at $7,500) which Respondent

rejected and proposed a counteroffer (offering to exchange it for $100,000 in

Complainant’s stock). (Complainant’s Reply). Respondent indicates that Complainant

had made several prior attempts to contact it regarding purchase of the disputed

domain name. (Respondent’s Rebuttal)

The Service Agreement in effect between Respondent and Network Solutions, Inc.,

subjects Respondent to Network Solutions, Inc.’s dispute settlement policy,

the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999,

and with implementing documents approved by ICANN on October 24, 1999.

The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires

that domain name registrants submit to a mandatory administrative proceeding

conducted by an approved dispute resolution service provider, of which WIPO

is one, regarding allegations of abusive domain name registration and use (Policy,

para. 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it is the holder of various trademark and service

mark registrations for the term "LANDAMERICA" and "LANDAMERICA"-formative

signs (see Factual Background supra).

Complainant states that it first used the "LANDAMERICA" mark in commerce

in February 1998, and also alleges that it has constructive rights in the

mark dating back to its predecessor’s filing of applications for registration

on July 22, 1997.

Complainant indicates that it has made substantial use of the LANDAMERICA mark

in commerce, and that the mark is well known.

Complainant states that the disputed domain name is identical or confusingly

similar to its mark.

Complainant asserts that Respondent has no rights or legitimate interests in

the disputed domain name. Complainant argues that Respondent has failed to use

the domain name in connection with an active website, despite the passing of

almost six years since its registration. Complainant asserts that Respondent

has not, or in any case does not, conduct business under the disputed domain

name.

Complainant alleges that Respondent registered and has used the disputed domain

name in bad faith. Complainant argues that Respondent must have known of its

mark when it registered the disputed domain name. Even if it did not know of

the disputed domain name at the time of its initial registration, it must have

been aware of the name when it renewed its registration. Complainant contends

that Respondent registered the disputed domain name with the intention of offering

it for sale to Complainant or another party, to attract Internet users to its

own website by creating confusion as to sponsorship or affiliation, and/or preventing

Complainant from registering the name. Complainant suggests that passive holding

of the disputed domain name constitutes bad faith.

In its Reply Brief, Complainant alleges that Respondent’s conduct following

initiation of this proceeding in offering to sell or exchange the disputed domain

name evidences bad faith.

B. Respondent

Respondent concedes that the disputed domain name is identical or confusingly

similar to a mark which Complainant has registered. Respondent states that Complainant

registered its mark following the date on which the disputed domain name was

registered, and that Complainant should have been aware of Respondent’s rights

in the disputed domain when it adopted and registered its mark.

Respondent asserts rights and legitimate interests in the disputed domain name.

The name was registered prior to Complainant’s adoption and use of its mark,

and Respondent registered it in connection with a planned real estate business

venture. Respondent was known by the name "Landamerica" before Complainant

registered its mark. Respondent indicates that it continues to plan to use the

disputed domain name on an active commercial website in connection with its

business.

Respondent contends that it could not have registered the disputed domain name

in bad faith since it undertook the registration prior to Complainant’s adoption,

use or registration of its mark. Respondent argues that it could not have intended

to divert Internet users by creating confusion as to Complainant’s sponsorship

of or affiliation with its website since Complainant had not used its mark when

the disputed domain name was registered.

In its Rebuttal, Respondent states that Complainant initiated discussions regarding

purchase of the disputed domain name. Respondent had never approached Complainant

prior to initiation of this proceeding.

Respondent refers to Complainant’s conduct as reverse domain name hijacking,

although it does not request a finding in this regard.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive

domain name registration and use. The Panel will confine itself to making determinations

necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process

requirements be met. Such requirements include that a respondent has notice

of proceedings that may substantially affect its rights. The Policy, and the

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"),

establish procedures intended to assure that respondents are given adequate

notice of proceedings commenced against them, and a reasonable opportunity to

respond (see, e.g., paragraph 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary

to notify the Respondent of the filing of the complaint and initiation of these

proceedings. Respondent has filed a response to the complaint indicating that

it received notice and was afforded an adequate opportunity to respond.

As a preliminary matter, the Panel notes that Complainant transmitted a supplemental

request to file a reply brief, accompanied by its reply (and affidavit), and

Respondent filed a rebuttal to Complainant’s reply. The Panel has decided to

accept and consider these submissions, principally because they provide additional

factual information not present in the initial submissions (including with respect

to the status of the Nevada corporation).

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a complainant to warrant

relief.

A straightforward comparison of the mark registered by Complainant and the

domain name registered by Respondent indicates that the disputed domain name

is, on its face, identical or confusingly similar to the mark (comparing "LANDAMERICA"

and <landamerica.com>). This is a proposition that Respondent concedes.

It is important to note, however, that Respondent appears to have adopted the

term "Landamerica" as the name of its corporation and business, and

to have used that mark in connection with at least one real property transaction,

prior to Complainant’s first use of the mark in February 1998. While recognizing

that Complainant’s applications for registration on July 22, 1997,

may provide it with certain benefits of constructive use dating back to the

application date[1], it is an interesting

question whether and to what extent Respondent enjoys rights as a senior user

of the mark[2]. Because the Panel is able

to decide this matter on other grounds, it assumes without deciding that Complainant

has rights in the "LANDAMERICA" mark, and that the disputed domain

name is identical or confusingly similar to the mark.

The second element of a claim of abusive domain name registration and use is

that the respondent has no rights or legitimate interests in respect of the

domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several

ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation,

if found by the Panel to be proved based on its evaluation of all evidence presented,

shall demonstrate your rights or legitimate interests to the domain name for

purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your use of, or demonstrable preparations

to use, the domain name or a name corresponding to the domain name in connection

with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly

known by the domain name, even if you have acquired no trademark or service

mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish

the trademark or service mark at issue." (Policy, paragraph 4(c))".

Respondent registered the disputed domain name <landamerica.com> in June 1996,

and established "Landamerica" as a Nevada corporation on June 24, 1997.

In late 1997, Respondent acquired a parcel of real property in the name

of the corporation. Respondent asserts that it registered the disputed domain

name in connection with a plan to offer property and related services on the

Internet. Its actions are consistent with the plan it asserts

Complainant filed initial applications for service and trademark registration

on July 22, 1997, after Respondent registered the disputed domain

name and formed the Nevada corporation. Complainant did not use the "LANDAMERICA"

mark in commerce until February 1998.

Respondent did not have notice of a dispute when it registered the disputed

domain name, and it has established to the Panel’s satisfaction that it did

so in preparation for a bona fide offering of goods or services. The establishment

of rights or legitimate interests in a domain name is not dependent on the successful

implementation of a business plan. Paragraph 4(c)(i) provides for the establishment

of rights on the basis of preparations to use, and Respondent prepared to use

the disputed domain name prior to notice of a dispute.

Complainant has argued that renewal of the registration of the disputed domain

name is the legal equivalent of initial registration and that for each act of

renewal a new set of factual circumstances arises. Paragraph 2 of the Policy,

and by incorporation the service agreement to which each registrant agrees,

expressly indicates that when a registrant asks the registrar to "register"

or to "maintain or renew" a domain name, the registrant makes representations

and warranties to the registrar, including that it is not knowingly infringing

third party rights. Paragraph 4 of the Policy, however, does not base a finding

of abusive domain name registration and use on breach of the representations

and warranties set out in Paragraph 2. It establishes a separate set of legal

criteria for establishing abuse. Paragraph 4 of the Policy speaks only in terms

of the "registration" of the domain name by the responding party,

and not in terms of "maintaining" or "renewing" the domain

name registration.

In the present proceeding, the Panel does not consider it necessary to make

a determination regarding whether and under what conditions an act of renewal

might give rise to a new set of circumstances under which rights or legitimate

interests might be evaluated. The Complainant has not apprised the Panel regarding

when Respondent renewed its registration, and how that date of renewal relates

to its factual claims. The Panel is left to infer a timeline, and the Panel

will not undertake this task on its own initiative. The date of Respondent’s

domain name renewal in relation to the date of trademark registration might

be quite relevant, for example, to the question of notice of a dispute under

Paragraph 4(c)(i). The first of Complainant’s trademark registrations did not

issue until April 2000. The "LANDAMERICA" service mark registration,

which is perhaps more relevant in this proceeding, did not take issue until

November 6, 2001. It is certainly possible that Respondent’s most

recent domain name renewal occurred before the date when the service mark was

registered. In sum, the Panel need not determine the legal implications of a

renewal in this proceeding because it has not been apprized as to when such

a renewal occurred in relation to the trademark and service mark interests of

Complainant.

Respondent has established rights and legitimate interests in the disputed

domain name based on its demonstrable preparations to use the name for a bona

fide offering of goods or services prior to notice of a dispute. At the time

of registration, there clearly was no notice of a dispute, and the evidence

does not establish notice of a dispute at a renewal point.

Complainant also alleges that Respondent registered and has used the disputed

domain name in bad faith. It should be obvious that Respondent could not have

initially registered the domain name in bad faith since Complainant had no interest

in the relevant mark at the time, though Complainant does not concede this obvious

point.

Complainant argues that if the initial registration was not in bad faith, then

renewal was in bad faith.

Paragraph 4(b) of the Policy does not expressly address renewals. It does,

however, require that a respondent both register and use a domain name in bad

faith.

Respondent initially registered the disputed domain name in 1996. Complainant

would have the Panel infer that Respondent, having initially registered the

name in good faith – it could not have intended to sell it and take advantage

of Complainant’s valuable rights because Complainant had none – later on (at

a time of renewal) decided that it could sell it for a substantial profit to

Complainant or a third party. It had thus presumably developed a bad faith intent

over time. Yet it made no approach to Complainant, or anyone else, to offer

the name for sale.

When Complainant and Respondent entered into a dialogue only after this proceeding

was commenced, Respondent (by Complainant’s account) refused to sell the name

at a low price. It offered to sell it (by Complainant’s account) at a high price.

Respondent is the holder of a domain name that may have a substantial commercial

value to Complainant. Respondent is not thereby obligated to give it to Complainant

at Complainant’s offering price. This is not bad faith on Respondent’s part,

it is commercial bargaining.

Respondent has not used the disputed domain name on an active website, and

has not sought to divert Internet users by creating confusion as to sponsorship

of or affiliation with Complainant. It could not have undertaken an initial

registration with this intent, and the Panel will not infer the development

of such an intent at an indeterminate point of renewal.

Complainant has failed to demonstrate that Respondent registered and used the

disputed domain name in bad faith.

Because Complainant has failed to establish that Respondent has no rights or

legitimate interests in the disputed domain name, and has failed to demonstrate

that Respondent registered and used the disputed domain name in bad faith, the

Panel does not find that Respondent engaged in abusive registration and use.

It rejects Complainant’s request to direct the registrar to transfer the disputed

domain name to it.

7. Decision

The Panel determines that Complainant, LandAmerica Financial Group, Inc., has

failed to establish that Respondent, Joseph Virzi, has no rights or legitimate

interests, or has acted in bad faith, in regard to the disputed domain name,

<landamerica.com>, within the meaning of paragraph 4(a) of the Policy.

The Panel therefore rejects Complainant’s request to order the registrar to

transfer the disputed domain name to it.

Frederick M. Abbott

Sole Panelist

Dated: May 16, 2002

1. 15 USC § 1057(c).

2. 15 USC § 1057(c)(1), providing that

the nationwide right of priority does not confer rights as against a person

that has used the mark.