North Shore Towers Apartments, Inc. v. Erik Kroll
Claim Number: FA0204000109030
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.
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.
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 email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org 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.
Complainant requested that the domain names be transferred from Respondent to 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.
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 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 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.
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.
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.”
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
Dated: July 2, 2002
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