Boston Properties Limited Partnership v. CLAUDETTE MOUSSA
Claim Number: FA1503001610502
Complainant is Boston Properties Limited Partnership (“Complainant”), represented by Robert M. O’Connell of Fish & Richardson P.C., Massachusetts, USA. Respondent is CLAUDETTE MOUSSA (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bostonpropertiesadvisors.com>, registered with Melbourne IT Ltd.
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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 19, 2015; the Forum received payment on March 19, 2015.
On March 24, 2015, Melbourne IT Ltd confirmed by e-mail to the Forum that the <bostonpropertiesadvisors.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 March 25, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2015 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@bostonpropertiesadvisors.com. Also on March 25, 2015, 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 April 14, 2015.
On April 27, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant has registered the BOSTON PROPERTIES as a word trademark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,527,181, registered January 8, 2002). The trademark is used in connection with real estate investment management, real estate development, real estate leasing and management and other real estate related services. The <bostonpropertiesadvisors.com> domain name is confusingly similar to the BOSTON PROPERTIES trademark because the domain name contains the entire trademark and differs only by the addition of the descriptive term “advisors” and the generic top-level domain (“gTLD”) “.com.”
The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent is not commonly known as the disputed domain name or in possession of licensing rights. Further, the resolving webpage advertises competing services.
The Respondent has engaged in bad faith registration and use. The Respondent registered the disputed domain name with actual and/or constructive knowledge of the Complainant’s rights.
B. Respondent
The Respondent argues that the disputed domain name <bostonpropertiesadvisors.com>, registered seven years ago, is not identical or confusingly similar to the Complainant’s trademark BOSTON PROPERTIES.
The Respondent contends that she has rights or legitimate interests because “Boston Properties Advisors” is the registered name of the Respondent’s business.
The Respondent contends that she has not acted in bad faith. The Respondent claims that she does not disrupt the Complainant’s business because she does not compete with Complainant (selling buildings, compared to the Respondent’s business activities in selling homes and leasing apartments) and because the disputed domain name was chosen to reflect the Respondent’s business purpose as a real estate broker. Respondent further claims that <bostonpropertiesadvisors.com> consists of generic terms, which precludes a finding of bad faith. Lastly, the Respondent claims her rights or legitimate interests under Policy ¶ 4(a)(ii) preclude a finding of bad faith.
The Complainant is the owner of the U.S. trademark registration
No. 2,527,181 BOSTON PROPERTIES (word), registered January 8, 2002.
The Respondent registered the <bostonpropertiesadvisors.com> domain name on August 5, 2010.
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 has registered the BOSTON PROPERTIES trademark with the USPTO (e.g., Reg. No. 2,527,181, registered January 8, 2002). The mark is used on or in connection with real estate investment management, real estate development, real estate leasing and management and other real estate related services. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
The Complainant argues that <bostonpropertiesadvisors.com> is confusingly similar to the BOSTON PROPERTIES trademark because the domain name contains the entire trademark and differs only by the addition of the descriptive term “advisors” and the gTLD “.com.” As a general rule the addition of a gTLD, such as “.com,” cannot distinguish a domain name from the trademark at issue. 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) . The Panel notes that that addition of a generic term in a domain name that describes the goods or services offered under the trademark at issue creates a confusing similarity. 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). In this case, the term “advisors” is generally used for service, and does therefore at least not create a sufficient difference between the disputed domain name and the Complainant’s trademark.
The Respondent contends that <bostonpropertiesadvisors.com> is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant’s trademark. However, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether the Complainant has rights in the trademark and whether the disputed domain name is identical or confusingly similar to Complainant’s trademark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
Accordingly, the Panel finds that the <bostonpropertiesadvisors.com> domain name is confusingly similar to the BOSTON PROPERTIES trademark pursuant to Policy ¶ 4(a)(i), despite the addition of the generic term “advisors”.
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent 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.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant asserts that the Respondent is not commonly known as the disputed domain name, nor is Respondent in possession of licensing rights that would allow her to use the BOSTON PROPERTIES trademark in domain names. The Respondent, on the other hand, claims to have rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii) because she uses “Boston Properties Advisors” to refer to her business of providing real estate broker services. The Respondent has provided evidence of this use, as well as a copy of a business certificate issued by the city of Boston, MA, certifying her real estate business under the “Boston Properties Advisors” name.
Prior panels have granted rights or legitimate interests when the respondent has shown that they are commonly known as the disputed domain name for business purposes. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name).
In this case, the Panel notes that “Claudette Moussa” (the Respondent) is listed as the registrant of record for <bostonpropertiesadvisors.com>, but also that the Respondent has in fact a registered and active business named “Boston Properties Advisors”.
The Panel therefore finds that the Respondent is commonly known as the disputed domain name for business purposes, thereby granting rights or legitimate interests under Policy ¶ 4(c)(ii).
The Complainant argues that the Respondent’s use of <bostonpropertiesadvisors.com> fails to consist of either a bona fide offering of goods or services or a legitimate noncommercial or fair use. To support this claim, Complainant asserts that the resolving webpage advertise competing services. The Panel notes that it is indeed correctly concluded by the Complainant that the disputed domain name points to a web site with – at least – closely similar services as the Complainant’s. It is however rather obvious that this is done because of the fact that the disputed domain name is identical to the Respondent’s business name that has been in use on the market for nearly five years.
Where a respondent uses a domain name to reflect the goods or services it offers under that domain name, panels have granted rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Scholastic Inc. v. Master Games Int’l, Inc., D2001-1208 (WIPO Jan. 3, 2002) (finding that the respondent’s use of the disputed domain name for a website regarding chess tournaments, particularly because the domain name appropriately described both the target users of the respondent’s services and the nature of the respondent’s services, was a bona fide use of the domain name).
Thus, the Panel concludes that the Respondent is at least making a fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue (Policy ¶ 4(c)(iii)).
The Complainant asserts that the Respondent was on notice of Complainant’s rights in its BOSTON PROPERTIES trademark prior to the domain name registration for the following reasons: Respondent included the entire mark in the domain name, and the domain name was registered after the trademark was registered with the USPTO, and because Respondent’s principal place of business is a block away from the Complainant’s headquarters. The Complainant states that Respondent ought to be held to a constructive notice standard.
The Panel is not convinced by these arguments. Generally, constructive notice is not sufficient to prove bad faith registration / use. In this case, the Panel accepts the Complainant’s notes that the Complainant and the Respondent are in the same kind of business (although reaching out to different kind of customers) and having their offices in the same city within walking distance.
Having said that, the Panel also note that even if the Complainant does have a registered word trademark for BOSTON PROPERTIES, the distinctiveness of this trademark is rather vague: BOSTON being the official name of the city, free to use for everyone that want to point out such geographical information; and PROPERTIES being another way of saying real property, real estate or land – a descriptive word showing the business nature of both the Complainant and the Respondent. As shown in Exhibit 4 of the Complaint, the Complainant’s US trademark registration includes a disclaimer, stating that “no claim is made to the exclusive right to use PROPERTIES, apart from the mark as shown”. This is a further indication that PROPERTIES as such is of no distinctive.
The term “Boston Properties Advisors” – the name of the Respondent’s business as well as the content of the disputed domain name – is fully describing the geographical place and the nature of the service of the Respondent’s activities. The Panel finds that the Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”); see also Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
The Panel further finds that Respondent has not registered or used the <bostonpropertiesadvisors.com> domain name in bad faith, as the Panel cannot see that the Respondent has violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith).
Thus the Panel concludes that the Complainant failed to prove that the disputed domain name was registered and is being used in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <bostonpropertiesadvisors.com> domain name REMAIN WITH the Respondent.
Petter Rindforth, Panelist
Dated: May 11, 2015
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