NAF Rules in Favor of PrivateCommunities.com: Himalaya Rankings, LLC & John Sweeney Ordered to Transfer Domains

VERO BEACH, Fla. – North Carolina-based Himalaya Rankings, LLC and John Sweeney have been ordered to transfer five domains to Private Communities Registry, Inc., doing business as PrivateCommunities.com, by the National Arbitration Forum (NAF), a provider of the Uniform Dispute Resolution Policy by the Internet Corporation of Assigned Names and Numbers (ICANN).
On August 13, 2008, PrivateCommunities.com filed a complaint for rights to five infringing domains, including Private-Communities.org, against domain owner John Sweeney and Himalaya Rankings from Wilmington, North Carolina.
The NAF issued an 18-page decision ruling that Himalaya Rankings, LLC and John Sweeney had registered nearly identical domains in bad faith for the purpose of disrupting the Complainant’s business, creating a likelihood of confusion, and intentionally attracting Internet users to their Web sites for commercial gain.
Trademarks for Private Communities Registry and PrivateCommunities.com were issued in 2002, with marks in use since 1996 and 1998, respectively. Himalaya Rankings and John Sweeney began using variations of the PrivateCommunities.com name in 2003.
“We filed this complaint to keep the good name of our first-to-market company and to avoid confusion by imitation companies whose marketing strategy is to hitch on our established good will, good name, and hard-earned reputation,” said PrivateCommunities.com co-founder Marie Roberts. “We have been operating for more than 12 years.”
Intellectual property and trademark attorneys Amber Neilson and Robert Wolter of Beussse Wolter Sanks Mora & Maire, PA of Orlando, Fla. filed the complaint on behalf of PrivateCommunites.com.
Rebecca Crandall of Williams Mullen, Research Triangle Park, North Carolina, represented Himalaya Rankings, LLC and John Sweeney.
PrivateCommunities.com was founded in 1996 by Marie Roberts and Elisabeth Miller-Fox as an Internet-based company that generates real estate leads and website traffic for master-planned communities. According to HitWise, an Experian company, PrivateCommunities.com dominates the Destination Amenity Community custom category with a 45 percent market share.