North Shore Towers Apartments, Inc. v.
Erik Kroll
Claim Number: FA0204000109030
PARTIES
The
Complainant is North Shore Towers
Apartments Inc., Floral Park, NY (“Complainant”) represented by Jay Hollander, of Hollander and Company LLC.
The Respondent is Erik Kroll,
Great Neck, NY (“Respondent”) Jenifer de
Wolf Paine, of Proskauer Rose LLP.
REGISTRARS AND DISPUTED DOMAIN NAMES
The
domain names at issue are <northshoretowers.com>,
<northshoretowers.net>, <northshoretowers.biz>, and <northshoretowersinfo.com>,
registered with Network Solutions and Domain Bank.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge have no known conflict in serving as Panelists in
this proceeding.
Hon.
Ralph Yachnin; Ms. Sally Abel, Esq.; and Hon James A. Crary (Chair) as
Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (“the Forum”)
electronically on April 2, 2002; the Forum received a hard copy of the
Complaint on April 4, 2002.
On
April 4 and April 5, 2002, Network Solutions and Domain Bank confirmed by
e-mail to the Forum that the domain names <northshoretowers.com>, <northshoretowers.net>, <northshoretowers.biz>, and <northshoretowersinfo.com> are registered with Network
Solutions and Domain Bank and that the Respondent is the current registrant of
the names. Network Solutions and Domain
Bank have verified that Respondent is bound by the Network Solutions and Domain
Bank registration agreements 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
April 8, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of April 29,
2002 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 postmaster@northshoretowers.com,
postmaster@northshoretowers.net, postmaster@northshoretowers.biz, and
postmaster@northshoretowersinfo.com by e-mail.
A
timely Response was received and determined to be complete on April 29, 2002.
The
Response was submitted by Annette Kroll, the named Respondent’s wife. It was clear to the Panel from the Response
and other submissions that Annette Kroll is the beneficial owner of the
disputed domain names. A Registration
Name Change Agreement was completed by Erik and Annette Kroll. This Agreement was submitted to VeriSign,
Inc. on March 29, 2002, but the name change could not be completed because of
the commencement of proceedings herein.
Given these circumstances, the Panel concluded it was appropriate to
treat Annette Kroll as Respondent’s authorized representative, as provided for
by URDP Rule 5(ii).
On May 16, 2002, pursuant to Respondent’s request to
have the dispute decided by a three-member
Panel, the Forum appointed Hon.
Ralph Yachnin; Ms. Sally Abel, Esq.; and Hon James A. Crary (Chair) as Panelists.
On May 28, 2002, the Panel issued an Order extending the
deadline for rendering a decision. On
June 6, 2002, the Panel issued a second Order extending the deadline for
rendering a decision.
RELIEF SOUGHT
Complainant
requested that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
asserts it is the owner of a common law trademark, NORTH SHORE TOWERS, which
identifies cooperative living and building maintenance services it provides in
connection with a cooperatively owned apartment complex known by that
name. The Complainant, incorporated
since 1984, became a cooperative apartment complex owned by the Complainant in
1987.
North
Shore Towers is a well-known landmark in the North Shore of Long Island, New
York and its environs. It is known as a
unique apartment complex with distinctive amenities and services for its
residents. At the time of its
construction it was considered an innovative concept providing amenities and
unique services which generated considerable attention. In the ensuing years it has enjoyed a
considerable reputation and goodwill as a high-class cooperatively owned
apartment complex providing a distinctive lifestyle. Its name has acquired secondary meaning and common law mark
status.
The
mark has always been used in all of Complainant’s official communications and
promotional materials, and has been known to the public under the name North
Shore Towers since its inception. North
Shore Towers is known not only as a landmark but through newspaper and magazine
stories and as a backdrop for announcements and community events.
The
Complainant asserted on information and belief that Erik Kroll and Annette
Kroll, Respondent’s wife, were associate real estate brokers at Magic Realty of
Great Neck, NY.
All
four names in dispute are identical to or confusingly similar to Complainant’s
mark as they all incorporate Complainant’s NORTH SHORE TOWERS mark in its
entirety. The use of this mark by
anyone other than the rightful trademark owner creates a likelihood of
confusion for the Internet user as to Complainant’s association with
Respondent.
The
<northshoretowers.com> and <northshoretowersinfo.com>
currently resolve to Web sites which replicate the content of
<annettekroll.com> in its totality and contain no original content. The <northshoretowers.net>
and <northshoretowers.biz> are
inactive and do not link or provide content.
The use of the domain names is and has caused confusion on the part of
Internet users as to the origin, sponsorship, affiliation or association of the
services offered on any of the Web sites utilizing the domain names in
question.
Three
of the domain names, <northshoretowers.com>,
<northshoretowers.net>, and <northshoretowers.biz>
incorporate Complainant’s mark in its entirety, adding the top-level domain
name identifiers .com, .net, and .biz to the mark. <northshoretowersinfo.com>
incorporates the mark in its entirety, adding the generic term “info” to the
end of the mark. These variations were
insufficient to reduce the confusion and were insufficient to avoid a finding
of identical or confusing similarity.
The name NORTH SHORE TOWERS is so
obviously connected with the well-known building complex that its use by
someone with no connection to it represents opportunistic bad faith.
Respondent
had no right or legitimate interest in Complainant’s mark. Respondent was not
affiliated with the Complainant nor was Respondent licensed or otherwise
authorized to utilize Complainant’s mark in any way. Working as an unaffiliated realtor, even a realtor who
concentrated on selling apartments in a particular complex for many years, did
not grant rights or legitimate interests to use or trade off the goodwill in
Complainant’s mark.
On
information and belief it was asserted that the Respondent had never done
business under any of the disputed domain names.
There
could be no fair use or non-commercial use of the domain names because the <northshoretowers.com> and the <northshoretowersinfo.com> Web
sites promoted the commercial business activities of Annette Kroll and Glen
Kroll, who is believed to be the son of Respondent.
<northshoretowers.biz>,
being a .biz domain
name, could not be used for anything but business purposes by definition, so
there could be no fair use claim of non-commercial activity in connection with
that domain name.
Complainant
asserted bad faith registration and use.
Respondent has used the domain name with full knowledge of Complainant’s
prior and long-standing use of the NORTH SHORE TOWERS name and mark. The Respondent was on notice since 1998 due
to Complainant’s warning against deceptive practices wrongfully suggesting
affiliation or endorsement by the Complainant.
In
response to Complainant’s letter demanding transfer of the domain names,
Respondent’s counsel responded, indicating that Ms. Kroll might transfer three
of the domain names, not including <northshoretowers.com>,
providing Complainant would remove all references to its own managing
agent/broker Charles H. Greenthall from Complainant’s Web site, thus granting a
competitive advantage to Respondent’s business over Complainant’s chosen
management agent. This suggested that
the motive in acquiring the domain names in dispute was to profit by compelling
a financially advantageous association within Complainant, which Complainant
would not have freely volunteered.
In
the past, Respondent had attempted to divert prospective customers by causing them to think Kroll was the
primary or official broker for buying and selling apartments in the
complex. Despite Complainant’s protest,
Respondent had used Complainant’s logo in a mailing to apartment owners in the
complex in the fall of 1987. The mailing,
misleadingly titled “Report to Shareholders” used a slightly altered version of
Complainant’s logo in the letterhead and failed to identify herself as
affiliated with her real estate business.
In the body of the letter it was suggested that potential customers
would be better off dealing with her business as opposed to the sales office of
Charles H. Greenthall, Complainant’s official managing agent.
It
was four months after this that Respondent registered the domain names which
incorporated Complainant’s mark in its entirety. Ms. Kroll then linked <northshoretowers.com> and <northshoretowersinfo.com>
to her web site at <annettekroll.com>.
The site was devoted to resale of units in North Shore Towers, and
contained content implying an affiliation with North Shore Towers (e.g.
“Welcome to North Shore Towers”, “We encourage you to fully explore our website
to find out more about our wonderful community” and “Our Doormen-Always There”
as a caption to a photograph on the site).
The
site contained a small disclaimer of affiliation with “North Shore Towers
management Co. or Board of Directors” not immediately visible to visitors to
the site.
The
disclaimer was misleading. It purported
to distinguish the Kroll site, asserting that Respondent’s wife was not
affiliated with North Shore Management Company, the complex’s prior corporate managing agent, or any of
the complex’s individual directors, but not mentioning North Shore Towers
Apartments, Inc., the corporation that owns North Shore Towers. Nor was there a disclaimer of affiliation
with Charles H. Greenthall, a corporate managing agent.
B.
Respondent
Annette
Kroll, the wife of the named Respondent, is the beneficial owner of the
disputed domain names which were registered by her husband on her behalf. Due to the pendency of proceedings, a
Registration Name Change Agreement completed by Erik and Annette Kroll could
not be finalized because of the commencement of proceedings herein.
The
domain names were registered in an attempt to rescue Annette Kroll’s business
from increasingly hostile attempts to ruin it.
She is an independent real estate broker who has specialized in resale
of apartments at North Shore Towers over an approximate 16-year period. She has operated a Web site under the name <northshoretowers.com> since 1999
in an effort to remain
competitive. In July of 1998,
Complainant hired a managing real estate agent and allowed it to open an
on-site real estate office at North Shore Towers.
Ms.
Kroll asserted that she had a legitimate interest in the domain names based on
16 years of selling apartments at North Shore Towers and because she had
expended time, energy and resources developing a business which focused on
North Shore Towers real estate sales, a business which was not in competition
with the Complainant. Complainant had
never engaged in real estate sales.
Complainant was not engaged in the real estate sales business but had
merely authorized another broker to conduct such sales.
There
was another apartment complex by the name North Shore Towers in Binghamton,
NY. Complainant had not submitted
evidence sufficient to establish trademark rights in North Shore Towers. The only trademark materials submitted by
the Complainant were produced 20 months after the registration of the domain
names.
It
was not disputed that <northshoretowers.com>
was substantially identical to North Shore Towers but the public would not
expect that domain names and Web addresses incorporating North Shore Towers
would be owned by the Complainant.
Complainant had not established exclusive use of the name North Shore
Towers. In addition, consumers do not
have any expectation that a domain name is owned by a particular entity. Complainant had failed to establish that
confusion existed on the part of consumers.
Annette
Kroll used the domain name accurately to describe a legitimate business that
she had been conducting for 16 years.
Complainant, by expending large sums of money to brand the complex,
admitted that the North Shore Towers name was not well known.
It
is true that Ms. Kroll was not making a non-commercial use of the site. Having specialized in selling property at
North Shore Towers, she was allowed to use the name provided she did so in a
non-confusing way.
It
was a common practice for brokers to place real estate classified ads which
prominently featured a banner headline with the name of a business. The time, money, and energy she had poured
into her business over the years were not only to promote herself, but North
Shore Towers as a place to live.
It
was asserted there had been no bad faith registration or bad faith use.
The
Complainant owned numerous variations of the North Shore Towers Apartments
name, all of which link to its Web site at
<northshoretowersapts.com>.
There
is no evidence to show that Respondent had engaged in a pattern of abusive
domain name registration. Registration of the domain names to begin with was
not for the purpose of “warehousing,” but because Complainant’s conduct had
placed her business in an unfair situation with the installation of a competing
broker at North Shore Towers. Ms. Kroll
had offered to transfer three of the disputed domain names to Complainant. It was improper for Complainant to attempt
to turn settlement negotiations into evidence of bad faith and there had been
no attempt to “extract a business deal” from Complainant.
Ms.
Kroll denied that a telephone listing and sending a letter to North Shore
Towers shareholders had anything to do with the dispute. Complainant’s characterization of those
incidents was false. She had not
attempted to confuse anyone into believing she was the “official” broker of
North Shore Towers or otherwise associated with North Shore Towers Apartments.
It
was denied that changes made to Ms. Kroll’s Web site were in response to a
cease and desist letter. The relatively
minor alterations were made to the site before receiving the letter. In any case, the “before” site was not in
any way calculated to mislead.
Her
use of meta tags to attract Internet users looking for information on North
Shore Towers was entirely within her right and certainly not illegal. Complainant was free to use the same
technique to attract visits to its own site.
Respondent denied arrangements with other Web sites to link her site.
Contrary
to Complainant’s statements concerning Ms. Kroll’s disclaimer, it is maintained
that the disclaimer was in fact larger than most and placed where it was
appropriate to find a disclaimer. Even
absent a disclaimer, her site was so clearly that of an independent broker that
there could be no confusion.
C.
Additional Submissions
There
were timely submissions in conformity with Rule 7 of the Forum Supplemental
Rules by both Complainant and Respondent.
Complainant
Complainant
did not dispute Annette Kroll’s right to operate a business or as a broker who
identified herself as specializing in resale of apartments in North Shore
Towers or her right to the domain name <annettekroll.com>. While it was true brokers would advertise
their specialty in selling apartments in a particular building, selling
apartments in a building as a third party broker did not create rights in a
building’s trademark. The fact that
Complainant did not resell apartments as its primary business did not change
the fact that the two businesses were so closely related conceptually that
confusion was inevitable.
Complainant
sought that either Respondent be considered to be in default or, alternatively,
that Annette Kroll be named a co-Respondent.
It
was illogical for Respondent to claim ignorance of the well known status of
Complainant’s mark on the one hand while simultaneously claiming to have spent
years advertising and promoting North Shore Towers as a unique and distinctive
cooperative complex. Complainant had
met the relatively low standard required to establish rights in a mark under
Paragraph 4(a)(i) of the Policy. The
mark had achieved secondary meaning to be established in a number of ways,
including promotion by Complainant.
Secondary meaning was supported by the various newspaper clippings,
magazine articles, and announcements in evidence.
Complainant
is a corporation, not a particular Board of Directors as was erroneously
claimed by Respondent. The party doing
the promoting was not the determinative factor in ascertaining the existence of
common law trademark rights. It was the
effect of the promotion on the ultimate issue of secondary meaning which was
the determining factor.
There
could be no distinction between the sponsor’s efforts at promotion and those of
Complainant. The sponsor was the sole
shareholder and controlled Complainant corporation until after the cooperative
conversion when shares in the corporation changed hands and came into the
possession of both resident and non-resident individuals. Complainant remained the same corporate
entity. The sponsor continued to be a
shareholder in the corporation with representation on the Board of Directors.
It
was not necessary for Complainant to prove international fame to hold common
law rights in a particular geographic area of Long Island, New York and its
environs.
The
other building in Binghamton, New York, which Respondent claimed was called
North Shore Towers, was part of a public housing complex. There was no listing for such a building in
the local phone book. The only listing
pursuant to a 411 inquiry was to North Shore Towers Senior Center which was
located in one of the buildings run by the Broome County Office of the
Aging. Even were there a business use
in Binghamton, NY, some 200 miles away from Floral Park, NY, that did not
preclude common law trademark rights locally in the Long Island/New York City
area.
Complainant’s
consistent use of the name for decades, the name’s recognition in the media and
by the community, and the branding that had resulted, established Complainant’s
common law rights.
Contrary
to the assertions of Respondent, the North Shore Towers 25th
Anniversary Journal supports a conclusion that North Shore Towers is very well
known in that area. The journal
included ads from a local political official, as well as numerous ads from
businesses in no way related or associated with North Shore Towers.
It
is established law that upon proof of the likelihood of confusion, no proof of
actual confusion, is required.
Complainant provided proof of actual confusion in the form of a
declaration from Linda Rappaport and Charles Greenthall which provided examples
of actual confusion.
Assuming
the assertions in Ms. Kroll’s declaration to be true; that she had no
arrangement with any Web sites to list her as a contact person for North Shore
Towers, the Web sites constitute actual confusion since they portray Ms. Kroll
as the contact person for North Shore Towers by essentially designating her as
such by linking directly to her Web site.
Respondent
Respondent
submitted its Reply to Complainant’s additional submission.
Complainant’s
mark was not famous and not automatically entitled to rely on cases concerning
famous marks. Complainant had no fame
to trade on. Even were North Shore
Towers a famous or well-known building, that did not mean Complainant had
acquired trademark rights.
The
entire term NORTH SHORE TOWERS was highly descriptive in nature, particularly
for a complex that consisted of three towers on the North Shore of Long Island.
Contrary
to Complainant’s assertion that the sponsor, Earl Brett, “was for all intents
and purposes, the Complainant corporation,” the two were not one and the
same. The sponsor remained a separate
entity, a separate Board of Directors with a separate purpose. This was acknowledged by the Complainant who
noted that the sponsor currently is a shareholder and had representatives on
the Board of Directors.
The
additional materials submitted by Complainant do not serve to prove abuse of
the trade name by Complainant, but really showed uses by the sponsor, Three
Towers Association, and not Complainant.
Even
assuming that North Shore Towers was a trademark, due to its descriptive nature
it was not entitled to trademark protection without establishing secondary
meaning in the mark. The evidence was
insufficient to establish secondary meaning which required evidence showing
that buyers and potential buyers who have mental recognition that the products
are connected with the mark and associated with the same source. The six newspaper articles provided by
Complainant consisted of very localized publications and were insufficient to
establish secondary meaning.
The
question is not whether the complex itself was well known but the name North
Shore Towers had not acquired secondary meaning as identifying a particular
source.
FINDINGS
1. Complainant in this case is North Shore
Towers Apartments, Inc. and not its Board of Directors.
2. Respondent in this case is Erik Kroll.
3. Annette Kroll, wife of Respondent is the
real party in interest, and beneficial owner of the disputed domain names.
4. Complainant is the owner of a valid
common law trademark, NORTH SHORE TOWERS.
DISCUSSION
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.
Identical and/or Confusingly Similar
The Panel is satisfied by the evidence in this
proceeding that Complainant has established common law trademark rights in NORTH SHORE TOWERS for use in connection
with cooperative living and building maintenance services in a geographic area
at least encompassing the area in which Respondent conducts her real estate
brokerage activities.
Complainant and its predecessors-in-interest have owned
the apartment complex since the mid-1980’s.
On her Web site Ms. Kroll touts the benefits of the complex as an “award
winning luxury residential community” where “amenities abound”, applauding “the
extraordinary lifestyle and amenities that the Towers has to offer.” She continues: “Almost all of your daily
living needs have been thought of.
Imagine living at a fine luxury hotel and you will begin to approximate
what life at North Shore Towers is like.”
The apartment complex has become a
prominent landmark in the Long Island and Southern New York area. The mark has always been in use in
Complainant’s official correspondence, communications and other promotional
materials. The mark has been featured
in newspaper and magazine stores. The
facility has been used as a backdrop for announcements and community events. New York City Mayor Rudolph W. Giuliani
officially proclaimed September 23, 2000 to be “North Shore Towers Day”,
affirming, in relevant part, that “for twenty-five years North Shore Towers has
provided a wide variety of services for its residents…”
Strong evidence of a common law trademark
was found from the real estate classified ads included in Exhibit 5 of Annette
Kroll’s Response. It was noted that the
ads simply refer to the “North Shore Towers” with no other identifiers
indicting that the mark has become well known among the general public.
The fact that there is another portion of a public
housing complex known as North Shore Towers in Binghamton, New York, some 200
miles away, and yet a third facility of the same name in Illinois, does not
preclude Complainant’s North Shore Towers mark from being associated with the
services provided in its limited geographical area, the North Shore of Long
Island and adjacent environs. See, Realmark Cape Harbour L.C. v. Lewis,
D2000-1435 (WIPO Dec. 11, 2000).
The addition of generic top-high level
domain names such as “.net,” “.com,” and “.biz” did not create domain names
distinct from Complainant’s mark capable of overcoming a claim of identical or
confusing similarity. Pomellato S. v. A. Tonetti, D-2000-0490
(WIPO July 7, 2000); Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11,
2002). In that case the court noted,
“Internet users searching for a company’s Web site assume, as a rule, that the
domain name of a particular company will be the company name [or trademark]
followed by “.com.” Nor does addition
of the generic “info” to the mark, in <northshoretowersinfo.com>,
render the domain name not confusingly similar.
Complainant has met its burden of proving
that Respondent has no right or legitimate interest in the domains in
question. Complainant did not authorize
Respondent’s registration of the domains or Ms. Kroll’s use of the domains in
connection with her Web site.
Respondent is not entitled to the safe
harbor of Policy ¶ 4(c). Respondent was
well aware of Complainant’s objection to Ms. Kroll’s use of its mark in
connection with her marketing activities before Respondent obtained the domain
names (4(c)(i)), and Respondent has not
been commonly known by any of the domain names (4(c)(ii)). Respondent has not demonstrated “fair use” of the domains because Respondent
cannot satisfy the requirement that such use be “without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue” (4(c)(iii)). The
unhappy relationship between Complainant and Ms. Kroll predating Respondent’s
registration of the domain names, the misleading content on her Web site
implying a closer affiliation with North Shore Towers than was true, the all
but hidden disclaimer on the site, and the offer to transfer the <northshoretowers.com> domain
only if the official sales agent was removed from the official North Shore
Towers site, combined, demonstrate wrongful intent undermining any claim of
fair use.
Registration and Use in Bad Faith
Annette Kroll, over the period July 1998
when a competing on-site broker was instated at Complainant’s complex to the
present, has engaged in an aggressive campaign to represent herself as
Complainant’s official real estate agent as evidenced by the “Report to
Shareholders” letter she sent prior to the registration of the domain names
here. The registration of the domain
names some four months later, and misleading content on her site, was simply another attempt to direct and
mislead members of the public interested in the Complainant to Respondent’s Web
site for commercial gain. America Online, Inc. v. Tencent Comm. Corp.,
FA-93668 (Nat. Arb. Forum Mar. 21, 2000).
See also, Drs. Foster and Smith,
Inc. v. Lalli, FA-95284 (Nat. Arb. Forum Aug. 21, 2000). The Panel
therefore concluded there was evidence of both bad faith registration and use
(Policy 4 (b) (iv). The Panel further
noted that the offer to transfer the <northshoretowers.com>
domain name to Complainant on the condition that Complainant remove the
official sales agent from the North Shore Towers Web site, strongly suggests
registration of the domain “primarily for the purpose of disrupting the
business of a competitor” and of obtaining the domain to transfer it to the
Complainant for “valuable consideration in excess of [Respondent’s] documented out-of-pocket costs.”
DECISION
The
Panel concluded that the domain names at issue are identical to Complainant’s
NORTH SHORE TOWERS trademark; that neither Respondent nor his wife, Annette
Kroll, have rights or legitimate interests with respect to the domain names at
issue; and that the domain names at issue have been registered and are being
used in bad faith. Accordingly, the
Panel directs, pursuant to paragraph 4(i) of the Policy, that the domain names
be transferred to the Complainant.
Hon. Ralph Yachnin; Ms. Sally Abel, Esq.; and Hon James A. Crary
(Chair), Panelists
Dated: July 2, 2002
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