National Arbitration Forum




Weidner Investment Services, Inc. v.  Texas International Property Associates

Claim Number: FA0709001080247



Complainant is Weidner Investment Services, Inc. (“Complainant”), represented by Ian Ballon, of Greenberg Traurig, LLP, 2450 Colorado Avenue, Suite 400 East, Santa Monica, CA 90404.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, PO Box 703431, Dallas, TX 75370.



The domain name at issue is <>, 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 electronically on September 18, 2007; the National Arbitration Forum received a hard copy of the Complaint on September 19, 2007.


On October 3, 2007, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <> 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 by e-mail.


A timely Response was received and determined to be complete on October 23, 2007.


Each of the parties filed Additional Submissions, both of which were considered by the Panel.


On October 31, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.




A. Complainant

1.      The domain name at issue, <>, 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.


B. Respondent

            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 State of Washington and headquartered in Kirkland, Washington with additional offices in Alaska, Colorado, Texas, and Canada.  Weidner owns and manages 124 apartment buildings in the States of Washington, Alaska, Colorado, and Texas and four Canadian provinces.  Weidner commenced operations in 1977 and has used the WEIDNER Marks (WEIDNER, WEIDNER INVESTMENT SERVICES and WEIDNER APARTMENT HOMES) continuously since opening in 1977.  Complainant alleges that the WEIDNER Marks are among the most recognized in the property management and leasing industry and claims that it has spent substantial sums of money advertising and promoting its property management services in various physical media and on the Internet through its website, accessible throughout the United States and around the world at <> and <>.  Further, Complainant claims that its continuous use of the WEIDNER Marks and its continuous promotion of the WEIDNER Marks have clearly established its rights to use of those marks in connection with property management, leasing, and real estate services.  The marks are not registered trademarks and Complainant asserts that they are common law trademarks.


Complainant says that Respondent has no rights or legitimate interests in the <> 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 February 10, 2005.  Further, there is no evidence that Respondent had actual knowledge of Complainant’s use of the WEIDNER Marks at the time that <> was registered.


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 apartments” in Texas, where Respondent is situated, or elsewhere.  On the contrary, it appears from a sample of the signage for a Weidner apartment complex (The Park at Caldera), proffered by Complainant, that the public is not shown any of the WEIDNER Marks.  The Panel finds that the affidavit of Mr. Weidner is insufficient to prove the existence common law trademark rights in any of the WEIDNER Marks on the date of registration of the domain name at issue.  Accordingly, Complainant has not proven that Respondent registered the domain name at issue in bad faith. 



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 May 19,       2003) (“Although Complainant asserts common law rights in the WELLSERV mark, it failed to submit any evidence indicating extensive use or that its claimed mark has achieved secondary source identity . . . [Complainant’s claim that it is well known] is a finding that must be supported by evidence and not self-serving assertions.”).  See also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii)); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith). 


            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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