Weidner Investment Services,
Claim Number: FA0709001080247
Complainant is Weidner Investment Services, Inc. (“Complainant”), represented by Ian
Ballon, of Greenberg Traurig, LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <weidnerapartments.com>, registered with Compana, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On October 3, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <weidnerapartments.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 October 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 23, 2007 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on
Each of the parties filed Additional Submissions, both of which were considered by the Panel.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. The domain name at issue, <weidnerapartments.com>, is confusingly similar to Complainant’ WEIDNER, WEIDNER INVESTMENT SERVICES and WEIDNER APARTMENT HOMES marks.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
1. Complainant had no protectable interests in its marks at the time Respondent registered the domain name at issue.
2. Respondent is using the domain name at issue and has rights or legitimate interests in it.
3. Respondent did not register and has not used the domain name at issue in bad faith.
C. Additional Submissions
Each of the parties filed an Additional Submission which essentially restated the arguments initially made.
Complainant Weidner Investment Services, Inc. is a
company incorporated in the
Complainant says that Respondent has no rights or legitimate interests in the <weidnerapartments.com> domain name and is using it as a pay-per-click site which features services competitive with Complainant. Further there appears no evidence that Respondent is commonly known by the domain name at issue or that it has been licensed to use the WEIDNER Marks. To support its positions, the Complainant has attached a short affidavit of its owner and manager.
Respondent points out that the Complainant holds no federal trademark
registrations for the WEIDNER Marks and that none of Complainant’s evidence is
sufficient to support a claim that it had established common law rights in
those marks at the time Respondent registered the domain name at issue on
While it does strain credulity to think that Respondent pulled the
domain name at issue out of the sky to use for click through revenues on a
website, partially involving advertising apartment availability in various
parts of the world, the burden of proof to establish a common law trademark or
actual knowledge of Respondent is on Complainant. A careful reading of Complainant’s materials,
including the affidavit of Dean Weidner, reveals that there is no assertion
that Complainant’s apartments were widely known to the public as “weidner
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.
From the record before the Panel,
it is obvious that Respondent registered the domain name at issue in 2005, and
there is no proof that Respondent had actual notice of Complainant’s claimed
use WEIDNER Marks at that time or that Complainant had established common law
trademark rights as of that date. Respondent denies any such knowledge. See Weatherford
Int’l, Inc. v. Wells, FA 153626 (Nat. Arb. Forum
The Panel finds that Complainant has not satisfied either Policy ¶ 4(a)(i) or (iii).
Because that conclusion is dispositive of the present matter, the Panel need not address the remaining element of the Policy.
Complainant has failed to establish all three elements required under the ICANN Policy. Accordingly, the Panel concludes that relief shall be DENIED
James A. Carmody, Esq., Panelist
Dated: November 14, 2007
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