Archstone Communities LLC v. Michael Davis / Prime Realty
Claim Number: FA1207001454293
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Michael Davis / Prime Realty (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archstonekendall.com>, registered with 1 & 1 INTERNET AG.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on July 19, 2012; the National Arbitration Forum received payment on July 20, 2012.
On July 23, 2012, 1 & 1 INTERNET AG confirmed by e-mail to the National Arbitration Forum that the <archstonekendall.com> domain name is registered with 1 & 1 INTERNET AG and that Respondent is the current registrant of the name. 1 & 1 INTERNET AG has verified that Respondent is bound by the 1 & 1 INTERNET AG registration agreement and has thereby agreed to resolve do-main disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 23, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 13, 2012 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 bil-ling contacts, and to postmaster@archstonekendall.com. Also on July 23, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail address-es 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 14, 2012, pursuant to Complainant's request to have the dispute de-cided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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
Complainant has used the ARCHSTONE name and mark to market its real es-tate related services for multi-family communities since 1998.
Complainant owns a registration, on file with the United States Patent and Trade-mark Office (“USPTO”) for the ARCHSTONE service mark, Reg. No. 2,527,794, registered January 8, 2002.
Respondent registered the disputed <archstonekendall.com> domain name on May 22, 2012.
The “Kendall” portion of the disputed domain name refers to a specific residential community property of Complainant.
Respondent’s domain name is confusingly similar to Complainant’s ARCH-STONE service mark.
Respondent is using the disputed domain name, and its resolving website, to promote competing apartment services in the geographic area where the Kendall property is located.
Respondent has no rights to or legitimate interest in the <archstonekendall.com> domain name.
Respondent attempts to benefit commercially from using the contested domain name to mislead Internet users seeking Complainant’s services.
Respondent receives referral fees from third-party real estate entities which are advertised on Respondent’s website.
Respondent both registered and uses the <archstonekendall.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 Vert-ical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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.”
Complainant has rights in its ARCHSTONE service mark Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”). See, for example, Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006):
Complainant has established rights in the … mark through regis-tration of the mark with the USPTO.
See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights in a mark pursuant to Policy ¶ 4(a)(i)).
Turning to the central question under Policy ¶ 4(a)(i), we are persuaded from our review of the record that Respondent’s <archstonekendall.com> domain name is confusingly similar to Complainant’s ARCHSTONE service mark. The domain name incorporates Complainant’s ARCHSTONE mark in full, with the addition of the term “Kendall,” which relates to a specific realty property of Complainant, and the further addition of the (“gTLD”) “.com.” Under the standards of the Policy, these alterations of the mark, made in creating the disputed domain name, are insufficient to distinguish the domain name from the mark from which it was de-rived. 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 Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the addition of the term “batteries,” which described a complainant’s products, was insufficient to distinguish a respondent’s <duracellbatteries.com> from a complainant’s DURACELL mark); further see Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to a complainant’s VANCE mark, which described that complainant’s business, a respondent “very significantly increased” the likelihood of confusion with a complainant’s mark).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commen-taries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that the record reveals no indication either that Respondent is affiliated with Complainant in any way or that Respondent has received Com-plainant’s consent to employ its ARCHSTONE service mark in the disputed do-main name. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Michael Davis,” which does not resemble the do-main name. On this record, we conclude that Respondent has not been com-monly known by the disputed domain name so as to have demonstrated that it has rights to or legitimate interests in that domain name within the contemplation of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names, and so had no rights to or legitimate intersts in those domain names under Policy ¶ 4(c)(ii), where the relevant WHOIS information, as well as all other evidence in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its mark); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate inter-ests in that domain name under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that re-spondent was commonly known by the disputed domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent has no rights to or legitimate interests in the contested domain name in that Respondent does not make a bona fide offering of goods or ser-vices or a legitimate noncommercial fair use of the domain name. Specifically, Complainant contends that Respondent uses the domain name to offer links to the websites of commercial competitors of Complainant, and that Respondent receives referral fees from third-party real estate entities which are advertised on its website. This use of the domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ex-pedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of a domain name which was confusingly similar to the mark of a complainant to redirect Internet users to a website featuring links to services that competed with the business of that complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commer-cial web directory displaying links to third-party websites was not a use in con-nection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), where a respondent presumably earned “click-through” fees for each consumer it directed to other websites).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
It is plain from the evidence that Respondent registered and uses the disputed <archstonekendall.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). The website resolving from the domain name, which is confusingly similar to Complainant’s ARCHSTONE service mark, diverts consumers away from Com-plainant’s site and thus benefits Respondent commercially from the receipt of referral fees from third-party real estate entities and the related confusion among Internet users caused by Respondent’s website. See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that a respondent’s use of a disputed domain name to advertise car dealerships that competed with a complainant’s business would likely lead to confusion among Internet users, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) where that re-spondent gained commercially from the likelihood of confusion between a com-plainant’s mark and the competing products and services advertised on that respondent’s website resolving from the disputed domain name).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <archstonekendall.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 24, 2012
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