Macerich Oaks LLC v. Scott Lombard and
Handy Online Services
Claim
Number: FA0509000555566
Complainant is Macerich Oaks LLC (“Complainant”), represented
by Christine L. Lofgren, of Jeffer, Mangels, Butler & Marmaro, LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA 90067. Respondent is Scott Lombard and Handy Online Services (“Respondent”),
92 N. Lucas Ct., Newbury Park, CA 91320.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <the-oaks-mall.com>, registered with Go
Daddy Software, 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.
James
A.Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on September
8, 2005; the National Arbitration Forum received a hard copy of the Complaint
on September 12, 2005.
On
September 9, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National
Arbitration Forum that the <the-oaks-mall.com> domain name is
registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy
Software, Inc. has verified that Respondent is bound by the Go Daddy Software,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
September 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 16, 2005 by which Respondent could file a response to the
Complaint, was transmitted to Respondent via e-mail, post and fax, to all
entities and persons listed on Respondent's registration as technical,
administrative and billing contacts, and to postmaster@the-oaks-mall.com by
e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
October 10, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed James A.
Crary 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." 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 <the-oaks-mall.com>
domain name is confusingly similar to Complainant’s THE OAKS SHOPPING CENTER
mark.
2. Respondent does not have any rights or
legitimate interests in the <the-oaks-mall.com> domain name.
3. Respondent registered and used the <the-oaks-mall.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Macerich Oaks LLC, has been using the THE OAKS SHOPPING CENTER mark in
connection with shopping center services, namely leasing and operating of
shopping malls since April 1978.
Complainant holds a trademark registration with the United States Patent
and Trademark Office (“USPTO”) for the THE OAKS SHOPPING CENTER mark (Reg. No.
2,073,692 issued June 24, 1997).
Respondent
registered the <the-oaks-mall.com> domain name on January 24,
2001. Respondent is using the disputed
domain name to redirect Internet users to its commercial website featuring
links to third-party businesses not associated with Complainant’s shopping
center business.
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 has
established rights in the THE OAKS SHOPPING CENTER mark through registration of
the mark with the USPTO and through continuous use of the mark in
commerce. See Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the USPTO creates a
presumption of rights in a mark); see also Innomed
Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004)
(“Registration of the NASAL-AIRE mark with the USPTO
establishes Complainant's rights in the mark.”).
Respondent’s <the-oaks-mall.com> domain name is confusingly similar to Complainant’s THE
OAKS SHOPPING CENTER mark
because Respondent’s domain name incorporates the dominant features of
Complainant’s mark, omits the term “shopping center” and adds the term “mall,”
hyphens, and the generic top-level domain “.com” to the mark. Furthermore, the term “mall” describes
Complainant’s business. The Panel finds
that such minor alterations to Complainant’s registered mark do not negate the
confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶
4(a)(i). See Asprey
& Garrard Ltd v. Canlan Computing,
D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to the complainant’s ASPREY &
GARRARD and MISS ASPREY marks); see also WestJet Air Ctr., Inc. v. W. Jets
LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the
<westjets.com> domain name is confusingly similar to the complainant’s
mark, where the complainant holds the WEST JET AIR CENTER mark); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Marriott Int’l, Inc. v. Café au lait,
FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent’s domain
name <marriott-hotel.com> is confusingly similar to the complainant’s
MARRIOTT mark); see also Health Devices Corp. v. Aspen S T C, FA 158254
(Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as
hyphens is irrelevant in the determination of confusing similarity pursuant to
Policy ¶ 4(a)(i).”); see also Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) (finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent does not have rights or legitimate interests in the <the-oaks-mall.com>
domain name. Once Complainant makes a prima facie
case in support of its allegations, the burden shifts to Respondent to prove
that it does have rights or legitimate interests pursuant to Policy ¶
4(a)(ii). Due to Respondent’s failure
to respond to the Complaint, the Panel assumes that Respondent does not have
rights or legitimate interests in the disputed domain name. See
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002)
(holding that, where the complainant has asserted that respondent does not have
rights or legitimate interests with respect to the domain name, it is incumbent
on respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Clerical Med. Inv.
Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding
that, under certain circumstances, the mere assertion by the complainant that
the respondent does not have rights or legitimate interests is sufficient to
shift the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Additionally,
the <the-oaks-mall.com> domain name is confusingly similar to
Complainant’s THE OAKS SHOPPING CENTER mark and is used to redirect Internet
users to a website featuring links for a wide variety of third-party services
and products unrelated to Complainant’s business. The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to divert Internet users to a website
that links to third-party websites and for which Complainant presumably
receives click-through fees is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i); nor is it a legitimate noncommercial or
fair use pursuant to Policy ¶ 4(c)(iii).
See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb.
Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the
complainant’s mark to attract Internet users to its own website, which
contained a series of hyperlinks to unrelated websites, was neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
disputed domain names); see also Black & Decker Corp. v. Clinical
Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the
respondent’s use of the disputed domain name to redirect Internet users to
commercial websites, unrelated to the complainant and presumably with the
purpose of earning a commission or pay-per-click referral fee did not evidence
rights or legitimate interests in the domain name).
Moreover,
Respondent has offered no evidence and there is no evidence in the record
suggesting that Respondent is commonly known by the <the-oaks-mall.com>
domain name. Thus, Respondent has not established rights
or legitimate interests in the <the-oaks-mall.com> domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interests where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the
respondent does not have rights in a domain name when the respondent is not
known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent was not
commonly known by the disputed domain name nor was the respondent using the
domain name in connection with a legitimate or fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name that incorporates Complainant’s THE OAKS
SHOPPING CENTER mark for Respondent’s commercial gain. Respondent registered and used the <the-oaks-mall.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
intentionally attempted to attract Complainant’s potential customers to
Respondent’s website by taking advantage of Internet users who are searching under
Complainant’s THE OAKS SHOPPING CENTER mark and diverting them to Respondent’s
commercial website. See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with the complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that the respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with the complainant’s mark and offering the same services as the
complainant via his website); see also Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000) (finding bad faith where the respondent attracted users to a website
sponsored by the respondent and created confusion with the complainant’s mark
as to the source, sponsorship, or affiliation of that website).
Moreover,
Respondent registered the <the-oaks-mall.com> domain name with
constructive knowledge of Complainant’s rights in the THE OAKS SHOPPING CENTER
mark due to Complainant’s registration of the mark with the United States
Patent and Trademark Office.
Registration of a domain name that is confusingly similar to a mark,
despite actual or constructive knowledge of another’s rights in the mark, is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr.
17, 2000) (finding that evidence of bad faith includes actual or constructive
knowledge of a commonly known mark at the time of registration); see also
Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
(“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO,
a status that confers constructive notice on those seeking to register or use
the mark or any confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having established
all three elements required under the ICANN Policy, the Panel concludes that
relief shall be GRANTED.
Accordingly, it
is Ordered that the <the-oaks-mall.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
October 21, 2005
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