Archstone Communities LLC v. Veneziano Global Solutions
Claim Number: FA1110001411435
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Veneziano Global Solutions (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archstoneavenirrentals.com>, registered with GoDaddy.com, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 13, 2011; the National Arbitration Forum received payment on October 14, 2011.
On October 14, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <archstoneavenirrentals.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 October 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 7, 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@archstoneavenirrentals.com. Also on October 18, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on November 7, 2011.
On 10 November, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard Hill as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant alleges that it owns a registered trademark for the term ARCHSTONE for various classes, including real estate brokerage and real estate management.
According to the Complainant, the disputed domain name is confusingly similar to its mark because it incorporates the mark coupled with the name of the Complainant’s specific property Avenir and the descriptive term “rentals”.
The Complainant asserts that the Respondent does not have rights or legitimate interests in the disputed domain name.
Further, says the Complainant, the Respondent uses the disputed domain name to offer links to competitors of the Complainant.
The Complainant alleges that Respondent apparently adopted Complaint's service mark ARCHSTONE deliberately, coupled it with the name of the Complainant’s specific property Avenir and registered the disputed domain name in a bad faith effort to divert consumers seeking Complaint's properties to its site and whatever use it has planned for the site or to hold the site hostage from the Complainant. What is clear, is that the disputed domain name does not link viewers to the Complainant's webpage or its properties. The Respondent presumably commercially benefits from the misleading domain name use by receiving referral fees from the third party real estate entities that may be advertised on the Respondent's website.
B. Respondent
The Respondent alleges that, as a licensed Real Estate salesperson, he is authorized to show potential clients any and all of the Complainant’s portfolio in Massachusetts. The standard practice is to set up a mutually agreeable appointment with the property manager, client and agent to facilitate a showing. The incentive in showing these properties, including the new Avenir building in Boston, to both the client and the real estate agent, are that a fee equal to one month’s rent is paid either in part or in full by the landlord (the Complainant).
Further, says the Respondent, currently the Complainant offers variable fees depending on occupancy and demand metrics on its properties. At present, it is not paying a real estate fee for the Avenir building, so use of the disputed domain name results in no commercial gain to himself, his agency, or any other entity, except for the Complainant itself. This satisfies (iii) of Paragraph 4(a)(ii), that in purchasing the domain name, “you are 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”.
According to the Respondent, the contested domain name pertains to a property whose availability was most recently provided by the Complainant to him and other real estate agents in the Greater Boston Area. This satisfies (i) of Paragraph 4(a)(ii), “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services”. Since no cease and desist was ever sent by the Complainant and the listings are sent via mass email to real estate agencies without discretion, the Respondent believes that his current and prior use runs parallel with the Complainant’s agent’s intention of renting apartments during the slowest part of the rental season. These listing sheets are often used by independent licensed agents, like the Respondent, to post ads of the property, and the Complainant is well aware of the fact.
Further, says the Respondent, the registration of the disputed domain name was not done in bad faith, or with the knowledge that a registered mark existed on the Avenir property. The web site at the disputed domain name contained no content provided by the Respondent. The registration of said website was done as a novel way to add potential growth and tenants to the newly constructed property. The Respondent had explored the potential for a relationship, but had not acted in such a way, due to his full-time status as a student, and supported by the lack of content he provided on the website [sic].
According to the Respondent, he offered to transfer the disputed domain name for out-of-pocket costs, but the Complainant’s attorney became very agitated and refused the offer.
The Respondent alleges that the disputed domain name is not confusingly similar to the Complainant’s mark because the term AVENIR has several meanings not related to the Complainant’s property, for example as a typeface.
Further, the Respondent alleges that he has a legitimate interest in the disputed domain name because, as a licensed real estate agent he has shown the Complainant’s properties to numerous clients and has received listing sheets from the Complainant to reference in his advertising material. To say that real estate agents specializing in rentals have no interest or right to use the Archstone, Avenir, or other property name is contrary to the actions of the Complainant’s agents, who encourage such associations, and in fact rely on them to meet vacancy quotas.
The Respondent states that, as a real estate agent, he commonly use websites to promote websites [sic] in good faith and for the benefit of the property owner. In this case, he did not have the opportunity to insert or purchase hosting materials that would bring traffic to the Complainant’s website. The actual content was not created by the Respondent, and the registrar is responsible for any content. To infer bad faith from this is an overly broad and frivolous claim.
According to the Respondent, it was not his intention to use the disputed domain in bad faith, given the common interest real estate agents and property owners have, nor did he escalate the registration to any commercial use of the website for pecuniary gain. Even if he wanted to, he is not privileged with the resources to set up a commercially viable use of the site between the time he registered and the time the Complaint was filed.
The Respondent alleges that the Complainant is engaging in Reverse Domain Name Hijacking.
The Complainant has rights in the registered trademark ARCHSTONE and one of its properties is called AVENIR. The Complainant is in the real estate business and offers properties for rent.
The web site at the disputed domain name contains click-through advertising links to competitors of the Complainant.
The Respondent is in the real estate business and is well aware of the Complainant’s properties.
The Respondent has not provided any evidence to show that he had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or service, such as advertising the Complainant’s AVENIR property.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Complainant alleges rights in its ARCHSTONE mark and provides evidence of its trademark registrations with the United States Patent and Trademark Office. The Panel holds that this evidence is sufficient for Complainant to establish Policy ¶ 4(a)(i) rights in the ARCHSTONE mark. 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s ARCHSTONE mark. The Panel notes that the disputed domain name combines the Complainant’s ARCHSTONE mark with the name of one of the Complainant’s properties (AVENIR), the descriptive term “rentals,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that these alterations fail to adequately distinguish the disputed domain name and holds that the disputed domain name is confusingly similar to Complainant’s ARCHSTONE mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); 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.”).
The Complainant alleges that dispute domain name resolves to a website that contains hyperlinks to the Complainant’s competitors and the Respondent admits this. For sure the Respondent claims that the content of the resolving website was not controlled by him, but the Panel holds that the Respondent, as the owner of the disputed domain name, is ultimately responsible for the content of the resolving website. See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
The Respondent admits that he did not have the resources rapidly to set up a commercially viable use of the disputed domain name (he states at present his status is that of a full-time student) and he does not present any evidence to show that he had plans to set up a web site that would be related to his purported intent, namely to use the disputed domain name to attract potential rental customers of the Complainant’s AVENIR property.
It is possible that such a use of the disputed domain name could create legitimate interests, but the Respondent has not demonstrated any such use, nor concrete plans for such use. On the contrary, the Respondent admits that he merely parked the disputed domain name and allowed the registrar to place click-through advertisements on the web site at the disputed domain name.
The Respondent states that, at present, the Complainant is not offering real estate fees for its Avenir building. So it is difficult to understand why the Respondent registered the disputed domain name, except to realize revenue from the click-through advertising.
Thus the Panel holds that the Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”).
Since the Panel finds that the Respondent chose the confusingly similar disputed domain name for the purpose of profiting from click-through advertising, the Panel holds that the Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”).
As noted above, the Respondent is ultimately responsible for the content found on the website resolving from the disputed domain name despite the Respondent’s claimed lack of responsibility or knowledge. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where the disputed domain name had been parked, the panel found the “the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.”); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent.”).
Since the Panel finds that Complainant has proven the elements of the Policy, it finds that the Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
The request for a finding of Reverse Domain Name Hijacking is denied.
Accordingly, it is Ordered that the <archstoneavenirrentals.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: 15 November, 2011
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