No new home for disputed ‘TahoeLuxuryProperties’ domain names

In Tahoe Luxury Properties v Chase, World Intellectual Property Organization (WIPO) panellist Jonathan Hudis has refused to order the transfer of ‘tahoeluxuryproperties.com’ and ‘TahoeLuxuryProperties.info’ to the complainant on the grounds that it did not have trademark rights in the term ‘Tahoe Luxury Properties’.

Tahoe Luxury Properties Inc (TLP) filed a complaint with WIPO following the registration of the disputed domain names by Chase International and its chief executive, Shari Chase (the respondents). According to the complaint, TLP has been using the name Tahoe Luxury Properties in connection with the rental, sale and purchase of real estate in Lake Tahoe and Truckee, California since 2000. However, TLP does not own any trademark registrations for the mark TAHOE LUXURY PROPERTIES.

In the complaint, TLP alleged that the respondents, who are competitors of TLP, registered the domain names with the intention of disrupting TLP’s business. It stated that there had been numerous instances where TLP’s customers had attempted to reach TLP through the contested domain names, but were unable to do so. In addition, TLP attached to the complaint a large amount of email correspondence indicating that the respondents expected to be paid an amount in excess of their out-of-pocket expenses in exchange for transferring the contested domain names to TLP.

Since the respondents filed their response to the complaint one month late without explanation, the response was not considered by Hudis pursuant to Rule 5(e) of the Uniform Domain Name Dispute Resolution Policy (UDRP) and Rule 7 of WIPO’s Supplemental Rules for the UDRP. Thus, his decision was based solely on the complaint.

Hudis found that TLP had not met the first requirement for transfer under the UDRP as it had failed to show that it had trademark rights in the term ‘Tahoe Luxury Properties’. As TLP did not own a trademark registration for TAHOE LUXURY PROPERTIES, Hudis analyzed whether it had common law rights in the mark and concluded that it did not. He held that the term ‘Tahoe Luxury Properties’ was generic or, at best, descriptive of the services provided by TLP. Even assuming that the mark was descriptive and not generic, Hudis stated that TLP would need to show secondary meaning or acquired distinctiveness in order to demonstrate that it had trademark rights in the term. However, Hudis pointed out that TLP had not provided any proof of acquired distinctiveness, such as evidence showing:

• the period and extent of exclusive use of the mark;
  
  
• the level of sales made under the claimed trademark;
  
  
• the extent of advertising expenditure relating to the mark; or
  
  
• any unsolicited media attention connecting the mark with TLP’s services.

Accordingly, Hudis dismissed the complaint.

Susan M Natland, Knobbe Martens Olson & Bear LLP, Newport Beach