Archstone Communities LLC v. Dan Blais
Claim Number: FA1107001399604
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Dan Blais (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archstoneme.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 21, 2011.
On July 20, 2011, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <archstoneme.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne IT, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne IT, Ltd. d/b/a Internet Names Worldwide registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 15, 2011 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 postmaster@archstoneme.com. Also on July 25, 2011, 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.
On August 17, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <archstoneme.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark.
2. Respondent does not have any rights or legitimate interests in the <archstoneme.com> domain name.
3. Respondent registered and used the <archstoneme.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 which it uses in connection with a variety of services including real estate acquisition, brokerage, and leasing services. Complainant has multiple registrations of its mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,517,934 registered December 11, 2001).
Respondent, Dan Blais, registered the disputed domain name on March 23, 2011. The <archstoneme.com> domain name resolves to a website which purports to be intended for the offering of apartments, but for which there is no demonstrable preparation of use.
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 contends that it has rights in its ARCHSTONE mark. Registration of a mark with a federal trademark authority, according to Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) and Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), adequately establishes the complainant’s rights in the mark. Complainant has provided evidence of the registrations for the ARCHSTONE mark with the USPTO (e.g., Reg. No. 2,517,934 registered December 11, 2001). Therefore, the Panel finds that Complainant has established rights in the ARCHSTONE mark pursuant to Policy ¶ 4(a)(i).
Complainant contends that the <archstoneme.com> domain name is confusingly similar to its mark. The addition of a geographic identifier to a mark within a domain name is not sufficient to distinguish the domain name from the complainant’s mark. See Laboratoires De Biologie Vegetale Yves Rocher v. Choi, FA 104201 (Nat. Arb. Forum Mar. 22, 2002) (holding that the <yveskorea.com> domain name was confusingly similar to the complainant’s YVES ROCHER mark even though the domain name was only similar in part); see also Skype Ltd. v. Sacramento, FA 747948 (Nat. Arb. Forum Aug. 30, 2006) (“The addition of the geographic term [“Brasil”] does not avoid confusing similarity pursuant to Policy ¶ 4(a)(i).”). Furthermore, the addition of a generic top-level domain (“gTLD”) is insufficient to distinguish a domain name from a registered mark. See 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.”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark). The disputed domain name fully incorporates Complainant’s ARCHSTONE mark. It attaches the geographic qualifier “me,” the Maine abbreviation code, to the mark, as well as the gTLD “.com.” The Panel finds from this that the <archstoneme.com> domain name is confusingly similar to Complainant’s ARCHSTONE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
When a complainant makes an assertion, it must first make a prima facie case before the burden shifts to the respondent to prove the falsity of its claims. See F. Hoffmann-La Roche AG v. Di Salvatore, D2006-1417 (WIPO Feb. 1, 2007) (“Proper analysis of paragraph 4(a)(ii) of the Policy shows that the burden of proof shifts from the Complainant to the Respondent once the Complainant has made out a prima facie case that the Respondent has no rights or interests in the domain names.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). The failure of a respondent to respond allows the panel to infer that the respondent has nothing to refute. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). Complainant, the Panel finds, has made a prima facie case in support of its assertion that Respondent does not have rights or legitimate interests in the <archstoneme.com> domain name. The Panel, absent the benefit of a response from Respondent, will review the record for information suggesting otherwise under Policy ¶ 4(c).
Respondents who are commonly known by a domain name may establish rights or legitimate interests in that domain name. The determination of whether a respondent is commonly known by a disputed domain name is often done by looking to the WHOIS listing as well as other pertinent information available in the record. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name). Complainant argues that Respondent’s use of its ARCHSTONE mark is inappropriate. Furthermore, the WHOIS listing for the <archstoneme.com> domain name lists “Dan Blais” as the domain name registrant. As such, the available evidence does not suggest that Respondent has any connection to the disputed domain name other than the registration of it. The Panel finds that Respondent is, therefore, not commonly known by the <archstoneme.com> domain name pursuant to Policy ¶ 4(c)(ii).
The <archstoneme.com> domain name resolves to a website which states that it intends to, at some point in the future, offer apartments. However, there is nothing currently suggesting that this will ever actually happen or that there has been any been any preparation to actually actively use the <archstoneme.com> domain name. Therefore, the Panel finds that Respondent’s failure to make an active use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan); see also Open Sys. Computing AS v. degli Alessandri, D2000-1393 (WIPO Dec. 11, 2000) (finding that the respondent did not establish rights and legitimate interests in the domain name where the respondent mentioned that it had a business plan for the domain name at the time of registration but did not furnish any evidence in support of this claim).
Complainant contends that Respondent’s lack of rights and legitimate interests can be further demonstrated by the likely eventual use of the <archstoneme.com> domain name’s resolving website to display links to competing apartment services because of the statement of intent on the website to offer apartments. However, the Panel may only judge the rights and legitimate interests a respondent has based upon prior and current uses of a disputed domain name. The potential or eventual use of a disputed domain name is unable to establish more than a possibility of a lack of rights and legitimate interests. Therefore, the Panel will judge Respondent’s rights and legitimate interests in the <archstoneme.com> domain name based on the uses for which the Panel has actual evidence of.
The Panel finds that Policy ¶ 4(a)(ii) is met.
In order to satisfy Policy ¶ 4(a)(iii), a complainant must demonstrate that the respondent registered and used the disputed domain name in bad faith. However, while Policy ¶ 4(b) offers a list of factors which may be considered in making this determination, this list of factors is not exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”). Rather, the Panel may consider the totality of the circumstances in order to make a determination as to bad faith registration and use under Policy ¶ 4(a)(iii).
Panels have found in the past that the registration of a website which is put to a passive use for which there is not evidence that the respondent actually has prepared to make an active use of the domain name demonstrates bad faith. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”). The <archstoneme.com> domain name resolves to a website which displays a statement of intent for future use of the website, but there is no evidence available to demonstrate preparation of use. Respondent’s failure to submit a response to the Complaint suggests that there is no evidence in its favor to support in this regard. Therefore, the Panel finds that Respondent’s registration and use of the disputed domain name was done in bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <archstoneme.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: August 30, 2011
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