smart USA Distributor LLC v.
JDS Real Estate Inc.
Claim Number: FA0908001280139
PARTIES
Complainant is smart
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <smartcenteroxnard.com>, <smartcenteragoura.com>,
<smartcenteralisoviejo.com>, <smartcenterarroyogrande.com>, <smartcenterbrentwood.com>, <smartcentercallabasas.com>, <smartcentercamarillo.com>, <smartcentercanogapark.com>, <smartcentercupertino.com>, <smartcenterfilmore.com>, <smartcentergoleta.com>, <smartcenterlaquinta.com>, <smartcentermalibu.com>, <smartcentermoorpark.com>, <smartcenternipomo.com>, <smartcenterpalmdale.com>, <smartcentercambria.com>, <smartcenterpasorobles.com>, <smartcenterranchomirage.com>, <smartcenterranchopalosverdes.com>, <smartcenterredondobeach.com>, <smartcenterredwoodcity.com>, <smartcentersanfernandovalley.com>,
<smartcentersanmateo.com>, <smartcentersantamaria.com>, <smartcentersantarosavalley.com>,
<smartcentersimivalley.com>, <smartcenterwesthollywood.com>, <smartcenterwestlake.com>, and <smartcenterwoodlandhills.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.
Luiz Edgard Montaury Pimenta, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 18, 2009; the
National Arbitration Forum received a hard copy of the Complaint on August 19, 2009.
On August 18, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <smartcenteroxnard.com>, <smartcenteragoura.com>,
<smartcenteralisoviejo.com>, <smartcenterarroyogrande.com>, <smartcenterbrentwood.com>, <smartcentercallabasas.com>, <smartcentercamarillo.com>, <smartcentercanogapark.com>, <smartcentercupertino.com>, <smartcenterfilmore.com>, <smartcentergoleta.com>, <smartcenterlaquinta.com>, <smartcentermalibu.com>, <smartcentermoorpark.com>, <smartcenternipomo.com>, <smartcenterpalmdale.com>, <smartcentercambria.com>, <smartcenterpasorobles.com>, <smartcenterranchomirage.com>, <smartcenterranchopalosverdes.com>, <smartcenterredondobeach.com>, <smartcenterredwoodcity.com>, <smartcentersanfernandovalley.com>,
<smartcentersanmateo.com>, <smartcentersantamaria.com>, <smartcentersantarosavalley.com>,
<smartcentersimivalley.com>, <smartcenterwesthollywood.com>, <smartcenterwestlake.com>, and <smartcenterwoodlandhills.com>
domain names are registered with Godaddy.com,
Inc. and that the Respondent is the current registrant of the
names. 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 August 25, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 14, 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@smartcenteroxnard.com, postmaster@smartcenteragoura.com, postmaster@smartcenteralisoviejo.com, postmaster@smartcenterarroyogrande.com, postmaster@smartcenterbrentwood.com, postmaster@smartcentercallabasas.com, postmaster@smartcentercamarillo.com, postmaster@smartcentercanogapark.com, postmaster@smartcentercupertino.com, postmaster@smartcenterfilmore.com, postmaster@smartcentergoleta.com, postmaster@smartcenterlaquinta.com, postmaster@smartcentermalibu.com, postmaster@smartcentermoorpark.com, postmaster@smartcenternipomo.com, postmaster@smartcenterpalmdale.com, postmaster@smartcentercambria.com, postmaster@smartcenterpasorobles.com, postmaster@smartcenterranchomirage.com, postmaster@smartcenterranchopalosverdes.com, postmaster@smartcenterredondobeach.com, postmaster@smartcenterredwoodcity.com, postmaster@smartcentersanfernandovalley.com, postmaster@smartcentersanmateo.com, postmaster@smartcentersantamaria.com, postmaster@smartcentersantarosavalley.com, postmaster@smartcentersimivalley.com, postmaster@smartcenterwesthollywood.com, postmaster@smartcenterwestlake.com, and postmaster@smartcenterwoodlandhills.com by e-mail.
A timely Response was received and determined to be complete on September 14, 2009.
An Additional Submission was received on September 21, 2009.
On September 16, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Luiz Edgard Montaury Pimenta as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant informs that it is the exclusive distributor in the
Complainant states that the trademark “smart” has been used
continuously in the
Complainant informs that Daimler AH owns over 140 trademark
applications and registrations throughout the world for the word mark “smart”
alone or in combination with other terms and that, in addition to pending
applications and registered trademarks, Complainant has established common law
rights in the “smart center” mark for vehicle dealership services, repair services,
vehicle financing services, and customer support services among others by
extensive and continuous use of the mark since at least as early as September
2006.
Complainant informs that it owns over 550 domain name registrations, of
which approximately 460 incorporate “smartcenter.” Complainant informs that it
registers such domains for use by its dealers and that the domain name is used
as the address of the dealer website and follows the pattern
<www.smartcenter(insertdelar/cityname).com>. Complainant informs that
implemented such protocol for uniformity and to allow consumers to easily
locate smart vehicle dealers. Complainant informs that the first “smartcenter”
domain name was registered in September 2006 and first used in January 11,
2008.
Complainant claims valuable rights, reputation and goodwill in the
smart Marks and “smartcenter” domain names as they are used in connection with
the goods and services that are offered for sale, distributed and provided
throughout the
Complainant informs that Respondent applied for and secured the
Disputed Domain Names on June 21, 2008. Complainant alleges that after
Respondent registered each of the Disputed Domain Names, the domains were
posted on the site <www.805domainnames.com> and offered for sale.
Complainant informs that contacted Respondent in February
Complainant alleges that Respondent is not related to smart
Complainant contends that the disputed domain names are confusingly
similar to the smart Marks and “smartcenter” domain names, in that the Disputed
Domain Names fully incorporate the registered and unregistered smart Marks and
“smartcenter” domain names.
Complainant further alleges that the addition of a geographic location
fails to create a distinguishing characteristic for any of the Disputed Domain
Names registered by Respondent and that such minor changes are not enough to
overcome a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent is nothing more than a blatant
cybersquatter and scam artist with no legitimate rights, whatsoever, in the
Disputed Domain Names and has made no legitimate use of the Disputed Domain
Names.
Complainant contends that Respondent has not used or taken any
demonstrable preparations to use the Disputed Domain Names in connection with a
bona fide offering of goods and services. Complainant informs that Respondent
is not using any of the Disputed Domain Names for any purpose and that the
Disputed Domain Names do not resolve to websites containing any content. In
fact, the Disputed Domain Names resolve to the website
<www.805domainnaems.com> which offers the Disputed Domain Names along
with a number of other domains for sale. Complainant alleges that Respondent is
passively holding the Disputed Domain Names and offering them for sale.
Complainant alleges that respondent has never been commonly known by
the names “smart” or “smartcenter”, and that Respondent is listed in the WHOIS
information as JDS Real State Inc. and is not authorized to use the smart
Marks.
Complainant alleges that Respondent has not used the Disputed Domain
Names in connection with any bona fide offering of goods and services prior to
the time of the dispute for any legitimate noncommercial or fair use, and is
unauthorized to use the smart Marks.
Complainant alleges that Respondent has registered the Disputed Domain
Names primarily for the purpose of selling the Disputed Domain Names for valuable
consideration in excess of out-of-pocket costs and, therefore, it is clear that
Respondent acted in bad faith.
Complainant contends that Respondent registers domain names in bulk as
illustrated at <www.805domainnames.com>. More specifically, Respondent
registered 30 “smartcenter” domain names. Complainant alleges that Respondent’s
pattern of registering “smartcenter” domain names demonstrate a pattern of bad
faith registration.
Complainant asserts that Respondent’s passive holding of the Disputed
Domain Names is evidence of bad faith.
Complainant request the panel to issue a decision that the Disputed
Domain Names be transferred form Respondent to Complainant.
B. Respondent
Respondent argued that it is not a “cybersquatter”, but a legitimate
real state entrepreneur who has been in the commercial real estate business for
over 20 years.
Respondent states that it has developed an idea for supplementary
tutoring and educational centers for children. Respondent’s idea is to only
lease space for these centers, or open new centers, in places connected to a
specific domain name and that this would be the reason why Respondent has
registered the various domain names at issue, and why Respondent wishes to
retain these domains.
Respondent argues that it is not competing, and will never compete with
Claimant’s car business.
Also, Respondent contends that the terms “smart”, “center” and even
“smartcenter” are generic. Respondent further contends that a cursory review of
the USPTO register of trademarks reveals thousands of trademarks that claim
rights in the word “smart” alone or in combination with other words and logos.
Further, there are numerous “smartcenters” or “smart center” trademark
registration with the USPTO that have nothing to do with Claimant’s business.
Respondent argues that it is not offering confusingly similar products
services, is not “trafficking” in Claimant’s name and is not trying to
re-direct potential car buyers to Respondent’s business. Instead, Respondent is
holding the domain names for potential development in combination with real
estate and business opportunities.
Respondent argues that Complainant has offered no evidence of initial
interest confusion, no actual confusion in the marketplace and no evidence of
strong secondary meaning. Respondent contends that Complainant’s service marks
are not “famous” and the terms smart and smart center are generic.
Respondent alleges that Complainant simply wants Respondent’s domain
names and is bootstrapping the
Respondent asserts that users who come across Respondent’s domain names
will know instantly that they are unconnected with Complainant’s business, and
indeed are re-redirected to a website that offers a number of domain names for
sale. Respondent sustains that is not “trafficking” the disputed domain names. Respondent
argues that, while listed on Respondent’s www.805domainnames.com website, they
are simply listed as placeholders until Respondent is able to implement his
business plan.
Further, Respondent argues that his discussions with Complainant about
transferring the domains do not change the analysis of the case and that Respondent
was willing to transfer the domains at issue if Complainant and Respondent
could come to terms.
Respondent contends that is not simply a passive holder of the
smartcenter domain names it has registered, but intends to use them in a
business.
Respondent requests that Complainant’s request for transfer of the disputed
domain names be denied, since Complainant cannot establish the requisite bad
faith, because Complainant’s marks are generic and because Respondent has
registered the disputed domain names in good faith based upon a legitimate
business interest unconnected to Complainant.
C. Additional Submissions
Complainant has submitted a timely Additional Submission, with his
response to Respondent’s response.
Complainant contends that Respondent has failed to produce any
“concrete evidence” of its rights or legitimate interests to as to the Disputed
Domain Names pursuant to Paragraph 4(c) of the
Complainant contends, specifically, that Respondent did not provide:
(i)
use of,
or demonstrable preparations to use of the domain name or a name corresponding
to the domain name in connection with a bona fide offering of goods and
services; or
(ii)
evidence
that Respondent has been commonly known by the domain name; or
(iii)
that
Respondent is making a legitimate noncommercial or fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.
Complainant asserts that at no time during the period of time from
February 2009 until July 2009 did the Respondent ever mention that the Disputed
Domain Names were registered for supplementary tutoring and educational centers
for children nor did respondent ever mention a business purpose for the names.
Complainant contends that its marks “smart” and “smart center” are not
generic as alleged by Respondent and that third party trademarks or cases are
not relevant in this matter. Complainant alleges that it has clearly established
Complainant’s rights in the “smart” and “smart center” marks by virtue of its
federal registrations and common law use of the smart Marks.
Complainant asserts that the Response fails to specify why the Disputed
Domain Names should not be considered as having been registered and being used
in bad faith. Despite Respondent’s allegations that “[w]hile listed on Respondent’s www.805domainnames.com website, they
are simply place holders until the Respondent is able to implement his business
plan,” Respondent registered domain names primarily for the purpose of
selling domain names as evidenced by Respondent’s website
www.805domainnames.com. Respondent’s www.805domainnames.com website is clearly
offering domain names for sale including the Disputed Domain Names.
In summary, Complainant argues that the Response fails to present
evidence that Respondent is not a cybersquatter who registered domain names
that are confusingly similar to registered and unregistered trademarks and is
offering the Disputed Domain Names for sale listed in the caption.
Complainant requests that the Panel issue a decision that the domain
name registrations be transferred to smart USA Distributor LLC.
FINDINGS
The Panel finds that Complainant has
established Trademark rights over the “smart Marks” and common law rights over
the “smart center” mark. The Panel finds that Complainant has presented a protocol
of registering the “smart center” domain names, combined with the geographical
location of its dealers.
On the other hand, Respondent registered the
Disputed Domain Names a few months after Complainant started its business in
the
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.
The Panel finds that Complainant has
sufficiently established rights in the SMART mark under Policy ¶ 4(a)(i)
through its numerous registrations of the mark held with various governmental
authorities throughout the world, including the United States Patent and
Trademark Office (“USPTO”) (e.g., Reg. No. 2,837,584 issued May 4, 2004). See Google, Inc. v. DktBot.org, FA
286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had
established rights in the GOOGLE mark through its holding of numerous trademark
registrations around the world); see also
Morgan Stanley v. Fitz-James,
FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the
evidence that the complainant had registered its mark with national trademark
authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights
in the mark for purposes of Policy ¶ 4(a)(i).”).
The Panel finds
that Complainant does not need to hold a registration of the SMART CENTER mark
in order to establish rights in the mark under Policy ¶ 4(a)(i) provided that it
has established common law rights in the mark through a sufficient showing of
secondary meaning. See 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); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006)
(finding that the complainant need not own a valid trademark registration
for the ZEE CINEMA mark in order to demonstrate its rights in the mark under
Policy ¶ 4(a)(i)).
Complainant
contends that it has continuously used its
All of the Disputed Domain Names contain Complainant’s SMART mark in its entirety, add
the term “center,” add various geographic terms, i.e., the names of various
cities in California, and add the generic top-level domain “.com.” The Panel finds that these additions to
Complainant’s mark do not sufficiently distinguish the disputed domain names
from Complainant’s SMART mark, therefore the Panel finds that the disputed
domain names are confusingly similar to Complainant’s SMART mark under Policy ¶
4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6,
2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s
registered mark is sufficient to establish identity [sic] or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Arthur Guinness
Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001)
(finding confusing similarity where the domain name in dispute contains the
identical mark of the complainant combined with a generic word or term); see also Skype Ltd. & Gannett Co. v.
Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a
domain name consisting of a well-known mark, combined with a geographically
descriptive term or phrase, is confusingly similar to the mark.”); see also Jerry Damson, Inc. v. Tex. Int’l
Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere
addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.”).
Moreover, the Panel
finds that Respondent has added such geographic terms, not to imprint
sufficient distinctiveness to the domain names, but only to repeat Complaint’s
protocol of registering domain names formed by it “smartcenter” mark and the
location of its dealers, in an deliberate attempt to cause confusion and
association with Complainant’s marks and domain names.
While Respondent contends that the disputed domain names are comprised of common,
descriptive terms and as such cannot be found to be confusingly similar to
Complainant’s marks, the Panel finds that such a determination is not necessary
under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether
Complainant has rights in the mark and whether the disputed domain names are
confusingly similar to Complainant’s mark. See Tammy Upwall and Michael Upwall d/b/a Got
Beauty v. Kam Yaghobian d/b/a Got beauty products, FA 1122960 (Nat. Arb.
Forum Feb. 21, 2008) (“Respondent contends that the
<gotbeautyproducts.com> domain name is comprised of generic terms, and
that Complainant is not exclusively associated with the GOT BEAUTY mark. Therefore, Respondent alleges that the
<gotbeautyproducts.com> domain name is not confusingly similar to
Complainant’s mark. However, the Panel
finds that such a determination is not necessary under Policy ¶ 4(a)(i) since
this portion of the Policy considers only whether Complainant has rights in the
mark and whether the disputed domain name is identical or confusingly similar
to Complainant’s mark.”); see also
Eastern Metal Supply, Inc. v.
Complainant must first make a prima facie case
that Respondent lacks rights and legitimate interests in the disputed domain
names 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 Aug. 18, 2006) (holding that the complainant must first make a
prima facie case that the respondent lacks rights and legitimate
interests in the disputed domain name under
The Panel finds that Respondent is not commonly known by the disputed domain names
under Policy ¶ 4(c)(ii). Respondent
is listed in the WHOIS information as “JDS Real Estate Inc.” for all of the
disputed domain names. Complainant
asserts that Respondent is not commonly known by the disputed domains. Respondent
does not evidence otherwise in its response. See Braun Corp. v. Loney, FA 699652
(Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3,
2006) (finding that the respondent was not commonly known by the
<cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the
WHOIS information and other evidence in the record).
Complainant contends that Respondent is not
making any active use of the disputed domain names. Complainant further contends that all of the
disputed domain names resolve to the same website that displays a list of
domain names being sold, including all of the disputed domain names. The Panel finds that Respondent has failed to
evidence active use of the disputed domain names is. Passive holding of a
domain name is 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). See Thermo Electron Corp. v. Xu, FA
713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use
of the disputed domain names demonstrates that the respondent is not using the
disputed domain names for 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)); see also Vestel
Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000)
(“Merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”).
Complainant asserts that all of the disputed
domain names resolve to the same website that displays a list of domain names being
offered for sale, including all of the disputed domain names. Moreover, Complainant has submitted
correspondence between Respondent and Complainant, wherein Respondent has
offered to sell the disputed domain names to Complainant initially for over
$45,000. The Panel finds that
Respondent’s use of the disputed domain names to sell the disputed domain names
in excess of Respondent’s out-of-pocket costs of registering the disputed
domain names is further evidence that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See
Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the
respondent’s willingness to sell a contested domain name for more than its
out-of-pocket costs provided additional evidence that Respondent had no rights
or legitimate interests in the contested domain name); see also 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)).
Respondent contends that Respondent is
holding the disputed domain names as placeholders for potential development in
supplementary tutoring and educational centers for children. Respondent, however, limits himself to such
statement, not providing any evidence (for example, a business plan, cost
studies, etc.) of preparations to use the disputed domain names in connection
with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i). See SFX
Entm’t, Inc. v. Cushway, D2000-0356 (WIPO July 10, 2000) (finding
that the respondent had rights and legitimate interests in the domain name
where he began demonstrable preparations to use the domain name in connection
with a bona fide offering of goods or services); see also Jolt Co. v. Digital
Milk, Inc., D2001-0493 (WIPO Aug. 1, 2001) (holding that the
respondent’s submission of an extensive and elaborate business plan
demonstrating the respondent's preparation to use the domain name in connection
with a bona fide offering of goods or services was sufficient to
establish a legitimate interest in the disputed domain name). Therefore, the
Panel finds that Respondent has not proved rights or legitimate interests in
that domain name under Policy ¶ 4(a)(ii)).
Complainant argues that all of the disputed
domain names resolve to the same website, which merely lists the disputed
domain names for sale. Complainant
further argues that Respondent offered to sell the disputed domain names
directly to Complainant for over $45,000.
The Panel finds that Respondent has offered to sell the disputed domain
names for more than Respondent’s out-of-pocket registration costs and that such
offer to sell the disputed domain names represents bad faith registration and
use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (concluding that the respondent registered and was using the
<gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i)
where it offered it for sale for far more than its estimated out-of-pocket
costs it incurred in initially registering the disputed domain name); see also 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)).
Complainant asserts that Respondent is not
making an active use of the disputed domain names by just listing the disputed
domain names for sale. The Panel finds that Respondent’s conduct constitutes
bad faith registration and use under Policy ¶ 4(a)(iii). See DCI
S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding
that the respondent’s [failure to make an active use] of the domain name
satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug.
30, 2000) (finding that the respondent made no use of the domain name or
website that connects with the domain name, and that [failure to make an active
use] of a domain name permits an inference of registration and use in bad
faith).
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 <smartcenteroxnard.com>, <smartcenteragoura.com>,
<smartcenteralisoviejo.com>, <smartcenterarroyogrande.com>, <smartcenterbrentwood.com>, <smartcentercallabasas.com>, <smartcentercamarillo.com>, <smartcentercanogapark.com>, <smartcentercupertino.com>, <smartcenterfilmore.com>, <smartcentergoleta.com>, <smartcenterlaquinta.com>, <smartcentermalibu.com>, <smartcentermoorpark.com>, <smartcenternipomo.com>, <smartcenterpalmdale.com>, <smartcentercambria.com>, <smartcenterpasorobles.com>, <smartcenterranchomirage.com>, <smartcenterranchopalosverdes.com>, <smartcenterredondobeach.com>, <smartcenterredwoodcity.com>, <smartcentersanfernandovalley.com>,
<smartcentersanmateo.com>, <smartcentersantamaria.com>, <smartcentersantarosavalley.com>,
<smartcentersimivalley.com>, <smartcenterwesthollywood.com>, <smartcenterwestlake.com>, and <smartcenterwoodlandhills.com>
domain names be TRANSFERRED from Respondent to Complainant.
Luiz Edgard Montaury Pimenta, Panelist
Dated: October 01, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page