Archstone Communities LLC v. Arash Missaghi
Claim Number: FA1210001468902
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois, USA. Respondent is Arash Missaghi (“Respondent”), Ontario, Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archstoneproperty.com>, registered with Godaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 24, 2012; the National Arbitration Forum received payment on October 25, 2012.
On October 26, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <archstoneproperty.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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 billing contacts, and to postmaster@archstoneproperty.com. Also on October 26, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant owns trademark certificates for several United States Patent and Trademark Office (“USPTO”) registrations of the ARCHSTONE including Reg. No. 2,517,934 registered with Dec. 11, 2001; Reg. No. 2,527,794 registered with Jan. 8, 2002; and Reg. No. 3,625,637registered May 26, 2009.
The addition of the domain indication, such as “.com,” should not be considered in this analysis. Respondent’s disputed domain name is merely coupling the ARCHSTONE name with the descriptive term “property,” which makes the disputed domain name confusingly similar to Complainant's mark.
Respondent has neither rights nor legitimate interests in the <archstoneproperty.com> domain name. Respondent will likely attempt to offer links to competitors of Complainant or consumers will believe the site is owned or associated with Complainant.
Respondent apparently adopted the ARCHSTONE mark deliberately and registered the disputed domain name in a bad faith plan to divert consumers seeking Complainant’s properties to Respondent’s resolving website.
Respondent presumably commercially benefits from the disputed domain name due to the potential of selling it to Complainant or Complainant’s competitor or receiving referral fees from third-party real estate entities that may be advertised on the disputed domain name’s resolving website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO trademark registrations for its ARCHSTONE trademark.
Respondent registered the at-issue domain name subsequent to Complainant’s acquisition of rights in the ARCHSTONE mark.
Respondent is not authorized to use Complainant’s trademark.
The website addressed by the at-issue domain name is merely a generic holding page and contains no links external content.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant demonstrates its rights in the ARCHSTONE mark under Policy ¶ 4(a)(i) through registration of such mark with the USPTO. It is insignificant that Respondent may be located in outside of the USPTO’s jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Respondent’s at-issue domain is confusingly similar to the ARCHSTONE mark. Respondent formed the second level domain name by simply concatenating the descriptive word “property,” a term which relates to Complainant’s business of providing property related services; to Complainant’s ARCHSTONE trademark. Rather than distinguish the <archstoneproperty.com> domain name from Complainant’s mark, adding the term “property” serves to increase confusion between the domain name and Complainant’s trademark. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). It is well settled that the addition of the generic top-level domain, such as “.com,” should not be considered in Policy ¶4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is impliedly not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstance from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, absent evidence of Policy ¶4(c) circumstances Complainant’s prima facie showing acts conclusively.
WHOIS information for the disputed domain name lists “Arash Missaghi” as the domain name’s registrant. Furthermore, there is no evidence before the Panel which otherwise suggests that Respondent is known by the at-issue domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <archstoneproperty.com> domain name pursuant to Policy ¶ 4(c)(ii).
The Panel witnesses upon browsing to the at-issue domain name that one is presented with a generic webpage containing no links and indicating only that “[t]his site is not currently available.” Therefore, it appears that Respondent is not making an active use of the confusingly similar domain name. Although the domain name is not identical to Complainant’s mark, the addition of the term “property” to form the second level domain name increases the likelihood of misapprehensions that Complainant sponsors the domain name and further shows that Respondent intended such a consequence. Using the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii). Moreover, there is nothing in the record that affirmatively suggests that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the at-issue domain name pursuant to Policy ¶ 4(c)(iii) in connection with the at-issue domain name, and further by failing to respond to the Complaint Respondent admits by its silence that Complainant’s allegation that Respondent has no rights or interest in respect of the at-issue domain name, is true. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”).
Given the forgoing, Complainant satisfies its initial burden and demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below although no Policy ¶4(b) bad faith circumstances are present, there is non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith under Policy ¶4(a)(iii).
Complainant’s suggestion that Respondent may act in a particular manner in the future is speculative and does not evidence bad faith under Policy ¶4(b) et seq. However, when conducting a Policy ¶ 4(a)(iii) analysis, the Panel may consider the totality of the circumstances without being limited to the enumerated bad faith circumstance set out in Policy ¶ 4(b). 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 Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
While Complainant makes no specific allegations concerning Respondent’s current use of the at-issue domain name, the fact that the at-issue domain name contains Complainant’s unique suggestive registered trademark and the term, “property,” which describes Complainant’s business, urges that Respondent’s reason for registering the at-issue domain name was precisely to in some way capitalize on the goodwill in the Complainant’s mark. Respondent’s silence in failing to respond admits as much. Indeed, the Panel must strain to imagine a use of the <archstoneproperty.com> domain name which does not suggest bad faith under the Policy. Therefore the Panel finds that Respondent’s <archstoneproperty.com> domain name was registered and used in bad faith under to 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <archstoneproperty.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 2, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page