national
arbitration forum
DECISION
Westcor Santan Village LLC v. David Letro
Claim
Number: FA0902001248888
PARTIES
Complainant is Westcor Santan Village LLC (“Complainant”), represented by Rod
S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP,
California, USA. Respondent is David Letro (“Respondent”), Idaho, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <santanvillage.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or
she has acted independently and impartially and to the best of his or her
knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as
Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to
the National Arbitration Forum electronically on February 20, 2009;
the National Arbitration Forum received a hard copy of the Complaint on February 24, 2009.
On February 23, 2009,
Godaddy.com, Inc. confirmed by e-mail to
the National Arbitration Forum that the <santanvillage.com> domain name is
registered with Godaddy.com, Inc. and
that Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 February 25, 2009,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of March 17, 2009
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@santanvillage.com by
e-mail.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On March 24, 2009, pursuant to
Complainant's request to have the dispute decided by a single-member Panel, the
National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications
records, the Administrative Panel (the "Panel") finds that the
National Arbitration Forum has discharged its responsibility under Paragraph
2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the
"Rules") "to employ reasonably available means calculated to
achieve actual notice to Respondent."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the National
Arbitration Forum's Supplemental Rules and any rules and principles of law that
the Panel deems applicable, without the benefit of any response from
Respondent.
RELIEF SOUGHT
Complainant requests that the domain
name be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
A.
Complainant makes the following assertions:
1. Respondent’s
<santanvillage.com> domain
name is identical to Complainant’s SANTAN
VILLAGE mark.
2. Respondent
does not have any rights or legitimate interests in the <santanvillage.com> domain name.
3. Respondent
registered and used the <santanvillage.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Westcor Santan
Village LLC, has used the SANTAN
VILLAGE mark in
connection with its shopping center since plans for the center began in
1998. Complainant registered the trade
name SANTAN VILLAGE (File No. 203,527) with the
Arizona Secretary of State on December 21, 1998. In January 2004, Complainant began recruiting
tenants for the shopping center. From
April-July 2004, the East Valley Tribune published three articles about
Complainant’s planned shopping center including the name SANTAN VILLAGE. In September 2004, Complainant began
advertising the shopping center to the general public. In 2007, the shopping center opened to the
public.
Respondent registered the <santanvillage.com>
domain name on August
1, 2004. Prior to August
2008, the disputed domain name resolved to a website listing links to
third-party websites unrelated to Complainant.
As of August 2008, the resolving website changed to a blog about
Complainant’s shopping center including advertisements in competition with
Complainant and lists of events and promotions at Complainant’s shopping
center. On October 29, 2008, Respondent offered
to sell the disputed domain name to Complainant for $4,800.
DISCUSSION
Paragraph 15(a) of 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."
In view of Respondent's failure to submit a response, the
Panel shall decide this administrative proceeding on the basis of Complainant's
undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the
Rules and draw such inferences it considers appropriate pursuant to paragraph
14(b) of the Rules. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
(2) 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
Complainant must first establish that is has rights in the SANTAN VILLAGE
mark under Policy ¶ 4(a)(i). The Panel
finds that registration of the mark is not necessary to establish rights in the
mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood,
D2000-0131 (WIPO Apr.
13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see also Artistic Pursuit LLC
v. calcuttawebdevelopers.com, FA 894477
(Nat. Arb. Forum Mar.
8, 2007) (finding that Policy ¶ 4(a)(i) does not require a
trademark registration if a complainant can establish common law rights in its
mark).
Complainant
registered the SANTAN VILLAGE mark as a trade name with the Arizona
Secretary of State in 1998 (File No. 203,527 Dec. 21, 1998). In April-July 2004, the East Valley Tribune
published three articles about the planned shopping center. The Panel finds that Complainant has
established common law rights in the SANTAN
VILLAGE mark through its
continuous use of the mark and pursuant to Policy ¶ 4(a)(i) prior to
Respondent’s registration of the disputed domain name. See
Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding
common law rights in a mark where its use was continuous and ongoing, and
secondary meaning was established); see
also Kahn Dev. Co. v.
RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that
the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among
local consumers sufficient to establish common law rights where the complainant
had been continuously and extensively promoting a real estate development under
the mark for several years).
The <santanvillage.com> domain name consists
of Complainant’s SANTAN
VILLAGE mark, omitting
the space and adding the generic top-level domain (gTLD) “.com.” As the omission of a space and addition of a
gTLD are both irrelevant to a Policy ¶ 4(a)(i) analysis, the Panel finds that
the <santanvillage.com>
domain name is identical to Complainant’s SANTAN VILLAGE
mark. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006)
(concluding that the <redhat.org> domain name is identical to the
complainant’s RED HAT mark because the mere addition of gTLD was insufficient
to differentiate the disputed domain name from the mark); see also Fed’n of Gay Games, Inc.
v. Hodgson, D2000-0432 (WIPO June 28, 2000)
(finding that the domain name <gaygames.com> is identical to the
complainant's registered trademark GAY GAMES).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Rights or Legitimate Interests
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. If the Panel finds that
Complainant’s allegations establish such a prima facie case, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights or legitimate
interests in the <santanvillage.com> domain name pursuant
to Policy ¶ 4(a)(ii). Since no response was submitted in this
case, the Panel may presume that Respondent has no rights or legitimate
interests in the disputed domain name.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008)
(“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(“Because Complainant’s Submission constitutes a prima facie case under
the Policy, the burden effectively shifts to Respondent. Respondent’s failure
to respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”).
Under Policy ¶ 4(c)(ii), if Respondent demonstrates it is
commonly known by the disputed domain name, then it will have demonstrated
rights or legitimate interests in said name.
The Panel finds no evidence in the record suggesting that Respondent is
commonly known by the <santanvillage.com> domain name. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the SANTAN VILLAGE
mark, and the WHOIS information identifies Respondent as “David Letro.”
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Wells Fargo & Co. v. Onlyne
Corp. Services11, Inc., FA 198969 (Nat.
Arb. Forum Nov.
17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(concluding that the respondent was not commonly known by the
<lilpunk.com> domain name pursuant to Policy ¶ 4(c)(ii) as there was no
evidence in the record showing that the respondent was commonly known by that
domain name, including the WHOIS information as well as the complainant’s
assertion that it did not authorize or license the respondent’s use of its mark
in a domain name).
Respondent was using the <santanvillage.com>
domain name to resolve to a website displaying links to third-party websites
unrelated to Complainant. The Panel
finds this was not a use in connection with a bona fide offering of goods or services nor a legitimate
noncommercial or fair use. Therefore,
the Panel also finds Respondent has not established any rights or legitimate
interests pursuant to Policy ¶¶ 4(c)(i) or (iii). See Constellation
Wines U.S., Inc. v. Tex. Int’l Prop. Assocs.,
FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or
legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed
domain name to operate a website featuring links to goods and services
unrelated to the complainant); see also Meyerson v. Speedy Web, FA 960409
(Nat. Arb. Forum May
25, 2007) (finding that where a respondent has failed to offer any
goods or services on its website other than links to a variety of third-party
websites, it was not using a domain name in connection with a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Respondent is currently using the <santanvillage.com>
domain name to resolve to a website purporting to be a blog about Complainant’s
shopping center. The resolving website
lists events at the shopping center without Complainant’s approval or
input. The Panel finds that Respondent
is attempting to use a domain name that is identical to Complainant’s mark to
pass itself off as Complainant online.
The Panel finds this is not a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Busby,
FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to
pass itself off as the complainant online, which is blatant unauthorized use of
the complainant’s mark and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name); see also Mortgage Research
Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is
also attempting to pass itself off as [the] complainant, presumably for
financial gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent’s current use of the disputed domain name also
includes advertising for third-parties in direct competition with Complainant. The Panel finds this is not a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA
944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting)
(finding that the respondent’s use of a confusingly similar domain name to
advertise real estate services which competed with the complainant’s business
did not constitute a bona fide
offering of goods or services under Policy ¶ 4(c)(i), or a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii)); see also 24 Hour Fitness USA,
Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003)
(holding that Respondent’s use of the <24hrsfitness.com>,
<24-hourfitness.com> and <24hoursfitness.com> domain names to
redirect Internet users to a website featuring advertisements and links to
Complainant’s competitors could not be considered a bona fide offering
of goods or services or a legitimate noncommercial or fair use).
In addition, Complainant has submitted evidence that
Respondent offered to sell the <santanvillage.com> domain name to
Complainant for $4,800. The offer to
sell the disputed domain name for $4,800 is in excess of any out-of-pocket
costs related to registering or transferring the disputed domain name. The Panel finds that Respondent’s offer to
sell the disputed domain name is further evidence Respondent lacks rights or
legitimate interests in the <santanvillage.com> domain name pursuant
to Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA
937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness
to sell a domain name to the complainant suggests that a respondent has no
rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a
respondent makes a “disproportionate” offer to sell its domain name
registration to the complainant for more than its out-of-pocket registration
costs, there is additional evidence that the respondent lacks rights and
legitimate interests in the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
In October 2008, Respondent offered to sell the <santanvillage.com>
domain name, which is identical to Complainant’s mark, to Complainant for
$4,800. The Panel finds that the timing
of the registration and the offer to sell the disputed domain name for more
than any out-of-pocket expenses is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Pocatello
Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum
Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner").
Respondent is currently using the <santanvillage.com>
domain name to resolve to a website containing links to third-party websites,
some of which directly compete with Complainant. The Panel finds Respondent is using the <santanvillage.com>
domain name to disrupt Complainant’s business by diverting Internet users to
Complainant’s competitors. This is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that
the respondent has diverted business from the complainant to a competitor’s
website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000)
(finding that the respondent registered and used the domain name
<eebay.com> in bad faith where the respondent has used the domain name to
promote competing auction sites).
Prior to August
2008, Respondent used the disputed domain name to list links to third-parties
unrelated to Complainant. The Panel
infers that Respondent received click-through fees for diverting Internet users
to third-party websites. Because
Respondent’s domain name is identical to Complainant’s SANTAN VILLAGE
mark, Internet users accessing
Respondent’s <santanvillage.com> domain name may have become confused as to
Complainant’s affiliation with the resulting website. Thus, Respondent’s use of the disputed domain name constitutes bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See
G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb.
Forum Nov. 21,
2002) (finding that the respondent registered and used the domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was
using the confusingly similar domain name to attract Internet users to its
commercial website); see also AltaVista Co.
v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy
¶ 4(b)(iv) where the respondent’s domain name resolved to a website that
offered links to third-party websites that offered services similar to the
complainant’s services and merely took advantage of Internet user mistakes).
Furthermore, the Panel finds that it may consider the
totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis,
and that it is not limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug.
21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are
intended to be illustrative, rather than exclusive.”).
Respondent
registered the <santanvillage.com> domain name in August
2004, less than a week after the East Valley Tribune wrote about Complainant’s
plans to open the shopping center under the SANTAN VILLAGE
name. After the shopping center opened
in 2007, Respondent changed how it used the disputed domain name to resolve to
a website purporting to be a blog about Complainant’s business. The Panel finds that the timing of
Respondent’s registration of the disputed domain name and change in use is
evidence of opportunistic bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Sota v. Waldron,
D2001-0351 (WIPO June
18, 2001) (finding that the respondent’s registration of the
<seveballesterostrophy.com> domain name at the time of the announcement
of the Seve Ballesteros Trophy golf tournament “strongly indicates an
opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If
there had been any doubt as to bad faith, the fact that registration was on the
same day the news leaked about the merger, which was put in evidence, is a
compelling indication of bad faith that [the] respondent has to refute and
which he has failed to do. The panel
finds a negative inference from this.”)
After August 2008, Respondent began using the <santanvillage.com>
domain name to resolve to a website listing events and promotions at
Complainant’s shopping center without Complainant’s approval or input. The Panel finds Respondent is passing itself
off as Complainant online and could, and possibly has, given out misleading or
false information about Complainant’s business events or promotions. The Panel finds this is further evidence of
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA
101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of
<monsantos.com> to misrepresent itself as the complainant and
to provide misleading information to the public supported a finding
of bad faith); see also DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May
29, 2000) (finding that the respondent’s use of the title
“Dodgeviper.com Official Home Page” gave consumers the impression that the
complainant endorsed and sponsored the respondent’s website).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <santanvillage.com> domain name be TRANSFERRED
from Respondent to Complainant.
Judge
Harold Kalina (Ret.), Panelist
Dated: April 2, 2009
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