Archstone Communities LLC v. Jet Stream Enterprises Limited
Claim Number: FA0906001270459
Complainant is Archstone
Communities LLC (“Complainant”), represented by Joan L. Long, of Mayer Brown LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <archstoneproperties.com>, registered with Tucows Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 26, 2009.
On June 25, 2009, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <archstoneproperties.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 June 29, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 20, 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@archstoneproperties.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <archstoneproperties.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <archstoneproperties.com> domain name.
3. Respondent registered and used the <archstoneproperties.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Archstone Communities LLC, is the owner of the ARCHSTONE mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,517,934 issued December 11, 2001). Complainant uses its ARCHSTONE mark in connection with its real estate services.
Respondent registered the <archstoneproperties.com> domain name on December 17, 2002. The disputed domain name resolves to a website featuring click-through links that further resolve to the websites of various real estate entities that are in direct competition with Complainant.
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.
The Panel finds that Complainant’s trademark registration
with the USPTO for the ARCHSTONE mark sufficiently conveys rights in the mark
to Complainant for the purposes of Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <archstoneproperties.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark under Policy ¶ 4(a)(i). The disputed domain name contains Complainant’s mark in its entirety with the addition of the descriptive term “properties,” which describes Complainant’s real estate business, and the affixation of the generic top-level domain “.com.” The Panel finds that these alterations fail to sufficiently distinguish Respondent’s <archstoneproperties.com> domain name from Complainant’s mark. Thus, the Panel concludes that Respondent’s <archstoneproperties.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has asserted that Respondent lacks rights and
legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Because Complainant has successfully asserted
a prima facie case supporting its
allegations, Respondent receives the burden of demonstrating its rights or
legitimate interests in the disputed domain name. Due to Respondent’s failure to respond to
these proceedings, the Panel may assume that Respondent does not possess rights
or legitimate interests in the disputed domain name. The Panel will, however, examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c).
See Intel Corp. v. Macare,
FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first
make a prima facie case that [the] respondent lacks rights and
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and
then the burden shifts to [the] respondent to show it does have rights or
legitimate interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”).
The disputed domain name resolves to a website displaying click-through links that further resolve to the websites of Complainant’s competitors in the real estate business. Complainant contends that Respondent’s use of a confusingly similar domain name to redirect Internet users to the websites of Complainant’s competitors does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii), respectively. The Panel presumes that Respondent is profiting through the generation of click-through fees and finds that Respondent has failed to use the disputed domain name in connection with 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). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)); see also Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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)).
Furthermore,
Complainant contends that Respondent is not commonly known by the <archstoneproperties.com>
domain name pursuant to Policy ¶ 4(c)(ii).
The WHOIS information lists the registrant as “Jet Stream Enterprises
Limited.” This information suggests that
Respondent is not commonly known by the <archstoneproperties.com>
domain name. There is no evidence in the
record to suggest otherwise and thus, the Panel finds that Respondent is not
commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See
Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent
has registered the domain name under the name ‘Ilyoup Paik a/k/a David
Sanders.’ Given the WHOIS domain name
registration information, Respondent is not commonly known by the
[<awvacations.com>] domain name.”); see
also 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.”).
Complainant has satisfied Policy ¶
4(a)(ii).
Respondent is using the disputed domain name to resolve to a website displaying click-through links promoting businesses that are in direct competition with Complainant in the real estate industry. The Panel finds that this diversion of Internet users to Respondent’s disputed domain name likely disrupts Complainant’s business and thus, constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Furthermore, Respondent is using the disputed domain name to
presumably collect click-through fees.
The Panel finds that Respondent’s use of a confusingly similar domain
name creates a likelihood of confusion as to Complainant’s affiliation with the
disputed domain name. Respondent is
likely profiting from that confusion through the presumed receipt of fees. Therefore, the Panel finds that Respondent’s
actions constitute bad faith registration and use of the disputed domain name under
Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum
July 18, 2006) (finding that the respondent engaged in bad faith registration
and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum
June 7, 2006) (holding that the registration and use of a domain name
confusingly similar to a complainant’s mark to direct Internet traffic to a
commercial “links page” in order to profit from click-through fees or other
revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <archstoneproperties.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: August 6, 2009
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