Archstone Communities LLC v. James Winter
Claim Number: FA1004001318450
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan
L. Long, of Barnes & Thornburg LLP,
The domain name at issue is <archstonecorp.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On April 12, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <archstonecorp.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 April 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 3, 2010 by which Respondent could file a response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to email@example.com. Also on April 13, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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" through submission of a Written Notice, as defined in Rule 1. 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 <archstonecorp.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <archstonecorp.com> domain name.
3. Respondent registered and used the <archstonecorp.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Archstone Communities LLC, uses the ARCHSTONE marks in connection with promotional and marketing services in real estate and construction services. Complainant owns federal trademark registrations for the ARCHSTONE marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,527,794 issued Jan. 8, 2002).
Respondent, James Winter, registered the <archstonecorp.com> domain name on March 30, 2010. Respondent’s disputed domain name resolves to a website that passes itself off as the website of 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.
Complainant owns federal trademark registrations with the
USPTO for the ARCHSTONE marks (e.g.,
Reg. No. 2,527,794 issued Jan. 8, 2002).
The Panel finds that federal USPTO trademark registrations conclusively
establish Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has
established rights in the MICROSOFT mark through registration of the mark with
the USPTO.”); see also
Complainant contends that Respondent’s <archstonecorp.com> disputed domain
name is confusingly similar to Complainant’s ARCHSTONE mark. Respondent’s disputed domain name
incorporates Complainant’s mark in its entirety, modifying it only with the addition
of the generic abbreviation “corp” and the generic top-level domain (“gTLD”)
“.com.” The Panel finds that adding a
generic word to Complainant’s mark fails to prevent confusing similarity
between the disputed domain name and Complainant’s mark. See 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 American Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Policy ¶ 4(a)(ii) requires that
Complainant put forth a prima facie
case of its allegation that Respondent lacks rights and legitimate interests in
the disputed domain name. After Complainant has presented such a case, the burden shifts to
Respondent to demonstrate that it does have rights and legitimate interests in
the disputed domain name. In the
instant proceedings, the Panel concludes that Complainant has adequately put
forth a prima facie case. Respondent’s failure to respond allows the
Panel to take Complainant’s assertions as true and conclude that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
See America Online, Inc. v.
The WHOIS information for the disputed domain name lists the registrant as “James Winter” and does not reflect that Respondent is commonly known by the disputed domain name. The Panel finds that the lack of any nominal association between Respondent and the disputed domain name is evidence that Respondent does not possess any rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant alleges that Respondent’s disputed domain name
resolves to a website that attempts to pass itself off as Complainant, as
Respondent’s resolving website copies images and other information from
Complainant’s website. Complainant
further alleges that Respondent uses this resolving website to collect personal
information from Internet users who visit the website and believe it to be
Complainant’s actual website. The Panel
finds that Respondent’s efforts to mislead Internet users by attempting to pass
off Respondent’s resolving website as Complainant’s authentic website
demonstrate that Respondent does not use the disputed domain name in connection
with a bona fide offering of goods or
services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii) and therefore has no rights and legitimate
interests. See American
Int’l Group, Inc. v. Busby, FA 156251
(Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass
itself off as the complainant online, which is blatant unauthorized use of the
complainant’s mark and is evidence that the respondent has no rights or
legitimate interests in the disputed domain name); see also Kmart of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s use of the disputed
domain name disrupts Complainant’s business because Internet users may be
misled, thinking that Respondent’s website is actually Complainant’s website,
due to the common appearance. The Panel
finds that Respondent’s attempts to disrupt Complainant’s business and divert
Complainant’s intending customers to Respondent’s website are evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (given
the competitive relationship between the complainant and the respondent, the
respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum
Complainant contends that Respondent has incorporated Complainant’s mark into its disputed domain name in order to attract Complainant’s customers to Respondent’s website for Respondent’s commercial gain. Complainant alleges that Respondent set up its resolving website to mimic Complainant’s in order to collect personal information from Internet users seeking jobs or housing from Complainant. Complainant argues that Respondent profits by collecting and subsequently using this personal information. The Panel finds that Respondent’s activities in connection with the disputed domain name reveal Respondent’s bad faith registration and use according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Complainant alleges that Respondent has attempted to pass its resolving website off as Complainant’s authentic website. The Panel finds such efforts to mislead and deceive Internet users constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Capital One Fin. Corp. & Capital One Bank v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (“The <capitalonebank.biz> domain name is confusingly similar to Complainant’s mark, it is being used to redirect Internet users to a website that imitates Complainant’s credit application website, and it is being used to fraudently [sic] acquire personal information from Complainant’s clients. Respondent’s use of the domain name supports findings of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <archstonecorp.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum