Atlantic Station, LLC v. Dargan Burns III
Claim Number: FA0903001250592
Complainant is Atlantic Station, LLC (“Complainant”), represented by Ryan
C. Compton, of DLA Piper LLP (US), Washington, DC, USA. Respondent is Dargan Burns III (“Respondent”), Georgia,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <atlanticstation-condo.com>, registered with 1 & 1 Internet Ag (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On April 2, 2009, a timely Response was received and determined to be complete.
Complainant submitted an Additional Submission on
On April 13, 2009, Respondent submitted and a timely Additional Submission.
On April 13, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Kendall C. Reed as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Atlantic Station is known
Complainant is the owner of four
1) ATLANTIC STATION and design, registration number 2,762,757, registered on September 9, 2003 for: real estate services, namely real estate syndication, time-sharing, trustee services, investment, listing, management, insurance claims processing, leasing, management, agencies, equity sharing, co-ownership, escrow services, financial investment in the field of real estate, financial valuation of real estate, brokerage services, in class 35;
2) ATLANTIC STATION, registration number 2, 765, 509, registered on September 16, 2003, for: real estate services, namely real estate syndication, time-sharing, trustee services, investment, listing, management, insurance claims processing, leasing, management, agencies, equity sharing, namely managing and arranging for co-ownership, escrow services, financial investment in the field of real estate, financial valuation of real estate, brokerage services, in class 36;
3) ATLANTIC STATION, registration number 2,832,348, registered on April 13, 2004, for: organizing committee festivals featuring a variety of activities namely sporting events, art exhibitions, flea markets, ethnic dances and the like, in class 41; and
4) ATLANTIC STATION and design, registration 2,840,616, registered on May 11, 2004, for: organizing community festivals featuring a variety of activities namely sporting events, art exhibitions, flea markets, ethnic dances and the like, in class 41.
(collectively and singly, the "Complainant's Trademarks" or “Complainant’s Trademark” as the case may be).
Complainant has established nationwide rights Complainant's Trademarks, which are well-known marks.
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Disputed Domain Name is confusingly similar and wholly incorporates Complainant's Trademarks. The addition of the top-level domain identifier ".com" and the descriptive term "condo" do not serve to distinguish the Disputed Domain Name from Complainant's Trademarks, particularly as condo-related services are afforded by Complainant.
Respondent has no rights or legitimate interests with respect to the Disputed Domain Name. Complainant has no relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use Complainant’s Trademarks. Moreover, because Complainant owns the nationwide exclusive rights in Complainant's Trademarks, Respondent cannot establish legitimate rights in the Disputed Domain Name.
Respondent registered and is using the Disputed Domain Name in bad faith. Respondent is using the Disputed Domain Name to disrupt Complainant's business. Complainant is a well-known provider of real estate, investment and community-related services, for which Complainant's trademarks, and therefore the Disputed Domain Name, serve as source identifiers. By creating confusion through its registration and use of the Disputed Domain Name incorporating Complainant's trademarks, Respondent is "attempting to disrupt the business of a competitor…[which] is evidence of bad faith registration and use pursuant to the Policy.”
Respondent has used the Disputed Domain Name to attract Internet users for commercial gain. The evidence detailed above establishes that Respondent registered and used the Disputed Domain Name, which consists entirely of a modification of Complainant's Trademarks, for the sole purpose of misdirecting consumers who are attempting to locate the website for the ATLANTIC STATION brand real estate, investment, and community-related services and "to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with complainant as to the source, sponsorship, affiliation or endorsement of its website pursuant to the Policy.”
Specifically, the Disputed Domain name is confusingly similar to Complainant’s domain name, <atlanticstation.com>, and Complainant’s Trademarks. As a result, the Disputed Domain Name attracts Internet users who are looking for the website associated with the services provided by Complainant under Complaint’s Trademarks.
Once an Internet user entered the Disputed Domain Name into their browser, as late as March 4, 2009, they were directed to a website offering the real estate services of a competitor. Specifically, Respondent uses the Disputed Domain Name to misdirect consumers to Respondent’s infringing website where Respondent is offering confusingly similar real estate services, namely condominium listings.
Further, the facts show the Respondent knew of Complainant and Complainant’s Trademarks at the time Respondent registered the Disputed Domain Name, and that Respondent intended to use the Disputed Domain Name to trade off this fame and associated goodwill. This is true for the following three reasons. Firstly, the Disputed Domain Name is nearly identical to Complainants Trademarks. Secondly, the Disputed Domain Name links to a website with real estate services that are competitive with Complainants business. Thirdly, the website hosted by the Disputed Domain Name incorporates Complainant’s tagline LIVE WORK PLAY, demonstrating that Respondent is aware of and intends to trade off Complainants name and associated goodwill.
The Atlantic Station project was begun in the late 1990s through the
coordinated efforts of AIG Global Real Estate Investment Corp. and a local
Respondent, Dargan Burns, III, is the incorporator, managing member and
registered agent of Corporate Housing in Atlantic Station, LLC. Prior to
Respondent and his wife own a condominium that is the corporate office for Corporate Housing of Atlantic Station, LLC, and this condominium is within the geographical area, neighborhood, and destination known as Atlantic Station.
Respondent regularly receives mail addressed to “Atlantic Station” as the city location.
Complaint’s Trademarks are composed of the generic word “Atlantic” and the generic word “Station.” These two words are descriptive in generic terms and used within thousands of other domain names not owned by Complainant. Complainant does not have exclusive rights to the phrase “Atlantic Station,” which is not a “coined” or unique phrase, but rather is a common merely descriptive term widely used by numerous parties.
Atlantic Station is a descriptive geographical term with its own zip code that describes a place. Descriptive geographical terms are in the “public domain” in the sense that every seller should have the right to inform customers of the geographic origin of his goods and services. The fact that the condominiums that Respondent markets and manages are physically located within Atlantic Station renders it unable to divorce its geographic location and destination point from Atlantic Station.
Respondent has not acted in bad faith and is entitled to “Fair Use” of Atlantic Station in that Respondent is the incorporator of Corporate Housing of Atlantic Station, LLC, and both Respondent and Corporate Housing of Atlantic Station, LLC are commonly known as such. Respondent has rights and legitimate interests in the Disputed Domain Name because it incorporates both its name and a physical location. Respondent did not register the disputed domain name with Complainant’s mark in mind and had no knowledge of the mark when it registered it. Prior to the notice of dispute, Respondent had prominently displayed disclaimer that Corporate Housing at Atlantic Station, LLC, its business and its domain address were different and distinct from that of Atlantic Station, LLC and its business and website.
Respondent’s website is not similar to Complainant’s service mark
because the inclusion of the word “condo” to two generic words (“
Respondent is a “Reseller” that has benefited the Complainant by bringing patrons to the neighborhood that otherwise would not have come.
Complainant has failed to prove a single instance that the Respondent “is attempting to disrupt the business of a competitor.”
Complainant has failed to show Respondent has acted in bad faith. Respondent has not attempted to sell the Disputed Domain Name for profit, has not been engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the Complainant seeking to disrupt the Complainant’s business, and is not using the Disputed Domain Name to divert Internet users for commercial gain.
Complainant has failed to prove that respondent is using the disputed domain name to divert consumers away from Complainant’s website.
Complainant has contradicted itself in claiming that Respondent has no rights or legitimate interests in Atlantic Station, and at the same time, demanding that the corporate name, Corporate Housing of Atlantic Station, LLC, be changed.
Complainant has failed to prove that Respondent’s website is competitive with Complainant’s business.
Respondent has asked for and been granted permission to use Complainant’s Trademarks. This permission was granted by Lisa Shepherd, marketing manager for Atlantic Station, LLC.
Complainant has provided no evidence showing that consumers are likely to be confused by the concurrent use of the Disputed Domain Name and Complainant’s Trademarks, or the Respondent’s use of the Disputed Domain Name creates any disruption to Complainant’s business.
Respondent contends that he has not made any attempt to pass himself off as the Complainant, and has no interest in selling the Disputed Domain Name to Complainant or any other party
Complainant’s mark is descriptive only and has not acquired
distinctiveness or secondary meaning. Complainant
has abused the policy when on July 21, 2008 and again on October 16, 2008, its
attorney sent Respondent a cease-and-desist letter demanding that Corporate
Housing of Atlantic Station, LLC change its name, and if Respondent did not,
Complainant would seek recourse through the Policy. Corporate housing of
Atlantic Station, LLC is a chartered entity of the state of
Complainant has abused the policy by refusing to vigorously enforce and police any and all infringements upon Complainant’s trademarks. Complainant has selectively pursued the Respondent while ignoring other registrants using Atlantic Station in either their domain names or company names.
Complainant is harassing Respondent and attempting to reverse hijacked the Disputed Domain Name. Prior to the time Complainant filed its complaint, Respondent provided Complainant’s attorney with a reasonable explanation about why Respondent registered the Disputed Domain Name.
Respondent was functioning as a reseller of Atlantic Station, LLC goods and services. This arose from Respondent link on its website to Complainant’s website and encouraging people to patronize the retail and eating venues within Atlantic Station.
It is the contention of the Respondent and that a reseller of goods or services can use a similar domain name provided that the reseller adequately discloses the nature of his or her goods or services on the subject website. Respondent did have such a disclosure on its website, but removed this disclosure at Complainant’s request.
In its complaint, Complainant has failed to establish a relationship between itself and the registrant of the domain name <atlanticstation.com>. The Registrant of said domain name is AIG Global Real Estate Investment Corp., which is not a party to this administrative action. In this regard Complainant lacks standing and is not in compliance with Policy Rule 1(d.).
C. Complainant’s Additional Submission
The ATLANTIC STATION marks are distinctive and coined, and Complainant
has proprietary rights therein by virtue of multiple
The identity of the registrant of the domain name <atlatnicstation.com> is irrelevant to this Proceeding. Complainant is basing this proceeding on its rights to Complainant's Trademarks.
Respondent's allegations as to Complainant's enforcement of its trademark rights as against others are irrelevant.
Complainant denies that Respondent has been granted permission to use Complainant's Trademarks. At the time of the note in e-mail from Lisa Shepherd, she was an employee of Jones Lang LeSalle. She was not and is not an agent of Complainant and did not and does not have authority to grant any permission to use Complainant's Trademarks.
Complainant refutes Respondent's assertion that Respondent ever included a disclaimer of an affiliation with Complainant on Respondent website. Regardless, a disclaimer on Respondent website would not been sufficient protection in the first instance.
D. Respondent’s Additional Submission
AIG Global Real Estate Investment Corp. is a Corporation domiciled in
The Complainant and AIG Global Real Estate Investment Corp. are not fairly characterized as being "affiliates," as asserted by Complainant. Rather, the relationship is better characterized as that between a customer and its insurance company and banker.
Jones, Lang and LaSalle is related to Complainant in that Jones Lang and LeSalle is the retail leasing management company that Atlantic Station, LLC has contracted with to lease and promote the retail district portion of Atlantic Station. Lisa Shepherd Is the Marketing Manager. On numerous occasions Respondent met with Lisa Shepherd in her office to jointly discuss and coordinate joint efforts to promote upcoming retail district events and inform attendees that furnished condominiums were being provided by Respondent.
Respondent reiterates that the words "Atlantic Station" are both generic terms and are geographically descriptive.
Respondent further contends that a disclaimer was on its website prior to contact from Complainant.
Complainant is the owner of Complainant’s Trademarks for ATLANTIC STATION for the noted real estate and public entertainment services.
Respondent registered the Disputed Domain Name, <atlanticstation-condo.com>.
Respondent’s name is Dargan Burns, III, and Respondent’s company is named Corporate Housing of Atlantic Stations, LLC.
The business of Corporate Housing of Atlantic Station, LLC, is to provide furnished condominiums and executive homes to business travelers who seek temporary housing accommodations as an alternative to hotels and apartments.
Atlantic Station is a mix-use real estate
development project undertaken by Complainant, among others. This project is located on an approximately
130 acre site in or near the city of
The United States Post Office recognizes this site as a distinct geographic place know as “Atlantic Station.”
Respondent owns at least one condominium within the Atlantic Stations project and local.
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.
Complainant's Late Additional Submission
Complainant's Additional Submission is deficient because it was not timely filed, and this is because the fee for this submission was not submitted until after the deadline for receipt of additional written statements pursuant to the Forum's Supplemental Rule 7. For this reason, the Panel has the discretion whether to give it any weight.
The Panel believes that this deficiency is technical in nature and caused no prejudice to Respondent. The Panel is of the view that it should focus on the real dispute between the parties and will accordingly give the Complainant’s Additional Submission due weight. See, e.g., Bd. of Governors of the Univ. of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider a response which was one day late, and received before a panelist was appointed and any consideration made); see also J.W. Spear & Sons PLC v. Fun League Mgme., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but fail to submit a hard copy of the response on time, "[t]he panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight").
Respondent argues that Complainant lacks standing to bring this administrative action under the Policy. The Panel believes that the Complainant does have standing.
Pursuant to Rule 1 of the Policy, a complainant is defined as, "... the party initiating a complaint concerning a domain-name registration." Clearly Complainant meets this definition, although this definition is not particularly helpful. More helpful is policy paragraph 4(a)(i), which establishes the requirement that a complainant must have rights to a trademark or service mark. Rights to a trademark or service mark can be established in several ways, one of which is ownership of a national registration.
In this action, Complainant is the owner of Complainant's Trademarks,
and therefore, has rights therein, and for this reason has standing. See
AOL LLC v. Interrante, FA
681239 (Nat. Arb. Forum
Respondent's argument with respect to standing concerns the domain name <atlanticstation.com>, which Respondent asserts is owned by AIG Global Real Estate Investment Corp., which is not a party to this action. This is correct, but it does not change the fact that the Complainant has standing.
Complainant raises the domain name <atlanticstation.com> in its argument that there must be confusion between Complainant's Trademarks and the Disputed Domain Name because customers seeking the domain name <atlanticstation.com> will invariably land on the Disputed Domain Name. This argument is off-point because for purposes of the Policy, the relevant comparison is between a complainant's trademarks and the respondent's domain name and is not between a complainant's domain name and a respondent's domain name.
Identical or Confusing Similarity
For purposes of policy paragraph 4(a)(i), Complainant must have rights in a trademark or service mark. In this action, and as noted above, complainant does have such rights in Complainant's Trademarks.
For purposes of Policy paragraph 4(a)(i), the comparison is at the level of the relevant trademarks and domain names, and in this, the traditional trademark law concepts of marketplace confusion are not the primary focus. Rather, the important confusion relates to the words and symbols of the relevant trademarks and domain names. This is not to say that knowledge on the part of the market about complainant's goods or services are wholly irrelevant. Such knowledge can inform the comparison, as noted below.
In making the comparison, the top level domain name identifiers
(gTLDs), spaces and dashes, and other minor variations are ignored. See
Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
Where a disputed domain name incorporates the entirety of a complainant's trademark, some panels have found this to be sufficient, without regard to the addition of other content. Alternatively, some panels in this situation focus on whether the additional content is generic. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
This Panel believes that in such situations the better focus is on
whether the additional content conceptually leads towards or away from a
complainant and its trademarks, and in this the knowledge of the market informs
the comparison. See
In the present action, the Disputed Domain Name incorporates the whole of Complainant's Trademarks and adds the word "condo." This panel believes that the word “condo” does strongly lead back to Complainant and Complainant's Trademarks. This is because Complainant's business is real estate activities in connection with the Atlantic Station project and locale. For relevant consumers, this knowledge is sufficient to cause a conceptual relation back.
As such, the addition of the word "condo" does not create a meaningful distinction, and as such, the Disputed Domain Name is confusingly similar to Complainant's Trademarks.
As such, Complainant has established the first element of the Policy.
Pursuant to the Policy, a complainant
must first make a prima facie case that a respondent lacks rights and legitimate
interests in a disputed domain name under Policy ¶ 4(a)(ii), and then the
burden shifts to respondent to show it does have rights or legitimate
interests. See Hanna-Barbera Prods., Inc. v.
FA 741828 (Nat. Arb. Forum
This Panel believes that a complainant may maintain its initial burden by demonstrating, without regard to any response from a respondent, that none of the three factors enumerated in Policy Paragraph 4(c) exist. These three factors, as relevant to the present action, are that: 1) before notice of the dispute, a respondent has been using a disputed domain name in connection with a bona fide offering of goods or services; 2) a respondent (“as an individual, business, or other organization) have been commonly known by the domain name, even in the absence of trademark rights; or 3) a respondent is making a legitimate noncommercial or fair use of a disputed domain name, without the intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.
In the present action, Complainant has demonstrated that none of these factors exist. Complainant has demonstrated that Respondent is Dargan Burns, III, who is not known by “atlanticstation-condo.”
Complainant has also demonstrated that Respondent’s activities are commercial in nature such that the third factor does not apply.
Complainant has also demonstrated that
Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or
services. Complainant demonstrates,
again without regard to any response, that Respondent is attempting to divert
customers from Complainant. Complainant does this by demonstrating that the parties
are in similar businesses with respect to the Atlantic Station project and
local. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA
180704 (Nat. Arb. Forum
Additionally, Complainant has demonstrated that it has not granted a license to Respondent to use Complainant’s Trademarks or otherwise does business with Respondent in any way.
As such, Complainant has established its light burden, and consequently the burden shifts to Respondent to establish that it does have rights or legitimate interests in respect to the Disputed Domain Name.
The Respondent has done so, and this with respect to Policy Paragraph 4(c)(i).
Respondent’s business, through his LLC, is to provide corporate housing accommodations as an alternative to hotels and apartments, and Respondent does this within the project and local known as Atlantic Station. On its face, this is a use in connection with a legitimate business. As such, Respondent’s activities nominally fall within the scope of Policy Paragraph 4(c)(i).
However, and as noted, there is an exception recognized by panels that a respondent cannot claim the benefit of Policy Paragraph 4(c)(i) if it is using a confusingly similar domain name, it is in economic competition with a complainant, and its intent is divert and redirect Internet users away from a complainant.
However, panels also recognize that this exception does not apply where a complainant’s trademark consists of generic words and a respondent is using the generic words as such within a disputed domain name. See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes).
In the present action, Respondent is operating a bona fide and legitimate business, which is to offer corporate accommodations.
Complainant argues that Respondent’s actions fall within the noted exception because Respondent is using a confusingly similar Disputed Domain Name, there is economic completion, and Respondent’s intent is to divert and redirect Internet users away from Complainant. This Panel agrees with the first two of these arguments, and disagrees with the third, but for purposes of this analysis, this is not relevant.
Respondent argues that the words “Atlantic Station” are generic in that they refer to a geographic place. Respondent provides examples of newspaper articles that make reference to this place and Respondent provides examples of envelopes cancelled by the US Post Office exhibiting in the address “Atlantic Station” in the spot reserved for the city identifier.
This Panel agrees that the words “Atlantic Station” are generic insofar as they are used to reference the physical place.
As such, the noted exception does not apply in this instance, and as such, Respondent is using the Disputed Domain Name in respect to a bona fide offering of services.
The noted Chase Manhattan prior administrative action, supra, does not require a different result. That administrative action did not involve generic words. Further, this Panel believes that a literal reading of the Chase Manhattan administrative action would collapse the Policy into a simple trademark analysis, which is not correct. The Policy is designed to handle certain unique problems lying at the interface of trademark rights and domain name rights, and whereas trademark law principles can be relevant, see Policy Rules 15(a), and panels do generally apply them, the analysis is not restricted to them.
The Prior administrative action of Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004), decided that the complaint’s rights in the QWEST mark is limited to its application to the telecommunications industry, where a variety of other business use the mark in unrelated fields. This statement suggests that the complainant in that action did or would have had exclusive rights with respect to the telecommunications industry. Applying that reasoning to the present action, Complainant could argue that with respect to real estate related services, it does have exclusive rights. However, this Qwest case also did not involve generic words. The same is true for the prior administrative action of Barney’s Inc., v. BNY Bulletin Board, WIPO case No. D2000-059, April 2, 2000.
In reaching this conclusion, this Panel is swayed by the absence of a reasonable alternative available to Respondent to accurately reflect in a domain name his connection to the physical place known as “Atlantic Station.” See contra Chase Manhattan, supra, Qwest, and Barney’s, supra.
As such, Respondent has demonstrated that it does have rights or legitimate interests in respect to the Disputed Domain Name, and as such, Complainant has failed to establish the second element of the Policy.
Having failed to establish one of the three required elements of the Policy, this Panel need not analyze the matter further. See Razorbox v. Torvben Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“[B]ecause Complainant must prove all three elements under the Policy, Complaint’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary.”).
Reverse Domain Name Hijacking
Respondent argues that in bringing this administrative action, Complainant is harassing Respondent and is engaging in reverse domain name hijacking. See Deutsche Welle v. DiamondWare Ltd., D2000-1202 (WIPO Jan. 2, 2001) (complaint considered to be brought in bad faith where the complainant must have known that the respondent was not a cyber squatter prior to the filing of the complaint).
Respondent argues that prior to Complainant filing this administrative action, Respondent explained to Complainant the facts that ought to have demonstrated to Complainant that Complainant would not prevail in an administrative action. At the same time, Respondent further pointed out to Complainant that others were also using the words “Atlantic Station” in their domain names, and that Complainant was not taking action against these others; Complainant was therefore focusing on Respondent for the purpose of harassment.
This Panel disagrees on both counts. Trademark owners are entitled to take action to police their marks in the order and in the time they prefer, within certain broad limits, which do not apply in this administrative action.
With respect to whether Complainant ought to have known that its complaint would not succeed, this Panel notes that the outcome of this administrative action was by no means a foredawn conclusion.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Kendall C. Reed, Panelist
Dated: April 26, 2009
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