Atlantic Station, LLC v.
Dargan Burns III
Claim Number: FA0903001250592
PARTIES
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”).
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.
Kendall C. Reed as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
On
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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Atlantic Station is known
throughout the
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.
B. Respondent
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
becoming a
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.
FINDINGS
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.
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.
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").
Complainant’s Standing
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.
Entm’t Commentaries,
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.
DECISION
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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