National Arbitration Forum

 

DECISION

 

smart USA Distributor LLC v. JDS Real Estate Inc.

Claim Number: FA0908001280139

 

PARTIES

Complainant is smart USA Distributor LLC (“Complainant”), represented by Jennifer S. Anderson, of Honigman Miller Schwartz and Cohn LLP, Michigan, USA.  Respondent is JDS Real Estate Inc. (“Respondent”), represented by Brook J. Carroll, of Nordman Cormany Hair & Compton, LLP, California, USA.

 

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 United States and a licensee of Daimler AG by a Distributorship Agreement dated October 31, 2006 between Daimler AG (formerly smart gmbh) and smart USA.

 

Complainant states that the trademark “smart” has been used continuously in the U.S.A. at least as early as 1999 and worldwide since as early as 1996. Complainant alleges that the smart Marks have become well-known and famous in the United States as a result of the extensive media coverage and use of the smart Marks.

 

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 U.S.A. by Complainant and its dealers and throughout the world by Daimler AG.

 

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 2009, in an attempt to secure the domain name <smartcenteroxnard.com>. In response, Respondent offered to sell the referred domain name to Complainant for US$45,350.00 or the “Season Travel Costs” for the Thousand Oaks Bruins 10U and 12U inline skating teams. Complainant informs that, in response to Respondent’s offer to sell the referred domain name, Complainant first offered Respondent US$500.00, which was declined by Respondent because “$500 wont get one kid to Canada”. In one last attempt to acquire the domain name, Complainant made an offer of US$3,900.00 on July 8, 2009 to Respondent for the domain name <smartcenteroxnard.com>. In response to the offer, Respondent declined the offer and made a counter offer to transfer the referred domain name for “One Cabriolet Limited 3 Edition with comfort package, daytime running lamps, anti theft alarm and additional instrument package. All fees, licenses and cost of any kind to be paid by your company (smart USA) to deliver the vehicle to me in Thousand Oaks, CA.” among other comments.

 

Complainant alleges that Respondent is not related to smart USA or Daimler AG and is not an authorized dealer or licensee, and does not have the permission or authorization of smart USA or Daimler AG to register the disputed domain names. Nor does Respondent have the permission or authorization to use any of the smart Marks.

 

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 UDRP procedure to obtain Respondent’s legitimate domain names without paying for them.

 

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 UDRP.

 

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 U.S.A., more specifically on June 21, 2008, repeating Complainant’s protocol of registering the “smartcenter” domain names combined with geographical locations.

 

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.

 

Identical and/or Confusingly Similar

 

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 SMART CENTER mark in connection with vehicle dealership services since September 2006.  Complainant has submitted numerous news articles covering its products and services.  The Panel finds this evidence as sufficient showing of secondary meaning.  Therefore, the Panel finds that Complainant has made a satisfactory showing of secondary meaning, having adequately established common law rights in the SMART CENTER mark under Policy ¶ 4(a)(i).  See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the complainant could establish common law rights in its GW BAKERIES mark through consistent and continuous use of the mark, which helped the mark become distinctive and generate “significant goodwill”).

 

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. Texas International Property Associates - NA NA, FA 1238822 (Nat. Arb. Forum Feb. 2, 2009) (“Respondent alleges that the <easternmetalsupply.com> domain name is comprised of generic terms.  This point has merit.  However, this argument is not directly applicable to Policy ¶ 4(a)(i), but will be discussed in greater detail in the analyses of Policy 4(a)(ii) and (iii).”). 

 

Rights or Legitimate Interests

 

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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

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)).

 

Registration and Use in Bad Faith

 

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

 

 

 

 

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