ICAFS, Inc. v. The Apartment People
Claim Number: FA0512000613503
PARTIES
Complainant is ICAFS, Inc. (“Complainant”), represented by Steven Jeffries, of Holland & Knight LLP, 2099
Pennsylvania Ave., NW, Suite 100, Washington, DC 20006-6801. Respondent is The Apartment People (“Respondent”), represented by Richard F. Friedman, of Neal & Leroy, LLC, 203 N. LaSalle Street, Suite 2300,
Chicago, IL 60601-1243.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <theapartmentpeople.com>,
registered with Network Solutions, Inc.
PANEL
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.
Michael Albert as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on December 21, 2005; the National Arbitration Forum received a
hard copy of the Complaint on December 27, 2005.
On December 23, 2005, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <theapartmentpeople.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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 December 28, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 17, 2006 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@theapartmentpeople.com by e-mail.
A timely Response was received and determined to be complete on February
6, 2006.
A timely Additional Submission was received from the Complainant on
February 13, 2006.
On February 15, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Michael Albert as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that:
• Complainant is the owner of the service mark THE APARTMENT PEOPLE for apartment management services, including apartment locator and apartment rental services. Complainant has used this mark in connection with apartment management services in the United States since 1973.
• Complainant holds a valid United States trademark registration for THE APARTMENT PEOPLE, registered on June 24, 1986. Complainant has appended to its Complaint evidence of this registration.
• The domain name <theapartmentpeople.com> is identical to Complainant’s federally registered service mark.
• Respondent had constructive notice of Complainant’s rights because it registered the domain name on September 23, 1996, more than ten years after Complainant received its trademark registration. The Respondent also had actual notice, as it filed an application to register the service mark THE APARTMENT PEOPLE LTD. for apartment rental service on September 12, 1990. The United States Patent and Trademark Office (“USPTO”) refused to register the mark, and the mark was abandoned on January 27, 1992. It can be inferred that the USPTO refused to register the mark because of the likelihood of confusion with Complainant’s previously registered mark. This notice shows that Respondent has no rights or legitimate interests in the domain name.
• Respondent also has no rights or legitimate interests because of its failure to make use of the domain name prior to being informed of the current dispute. Complainant has appended evidence indicating that no web page existed at the domain name prior to Respondent being sent a letter informing it of the dispute on June 17, 2005. Only after being informed of this dispute did Respondent redirect visitors to the domain name to a web page offering apartment locator and apartment rental services.
• Respondent registered and used
the domain name in bad faith. By
diverting visitors who are looking for Complainant’s website at <theapartmentpeople.net>, Respondent
profits from commissions paid by property owners for apartment rentals made to
customers siphoned from Complainant.
This activity disrupts Complainant’s competing business.
B. Respondent
Respondent contends that:
• Respondent was incorporated in Illinois on April 23, 1984, as The Apartment People, Ltd. Respondent has conducted an apartment finding service and brokerage in the Chicago metropolitan area since that date. Respondent thereby gained a common law service mark in the name “The Apartment People” in the market where it has been used.
• Respondent provides services only in the Chicago metropolitan area. Complainant only uses its registered service mark in the states of Nevada, North Carolina, Georgia, and Virginia.
• Respondent registered the domain name <theapartmentpeople.com> on September 23, 1996. The domain name has been used as a site director to Respondent’s <apartmentpeople.com> web site, where it conducts its business and offers its services, since 2000 if not earlier. Respondent believes the domain name <theapartmentpeople.com> was used for this purpose earlier, but cannot find confirmatory records. Such redirection constitutes a bona fide offering of goods or services, and Respondent has been commonly known by the domain name. Respondent’s use of the <apartmentpeople.com> domain name is not disputed by the Complainant.
• Respondent did not appropriate Complainant’s federally registered service mark in registering the domain name, but rather was using its own common law service mark.
• There is no consumer confusion in Respondent’s use of the domain name. Respondent provides apartment location services, while Complainant’s registered mark is for apartment complex management services. Additionally, Respondent and Complainant provide services in non-overlapping geographical areas.
• Respondent was unaware of the Complainant or its registered service mark until June 7, 2005.
C. Additional Submissions
In its additional submission, Complainant contends that Respondent does
not have rights or legitimate interests in the domain name. Complainant argues that, while Respondent is
incorporated as “The Apartment People, Ltd.,” the submitted evidence and
Respondent’s <apartmentpeople.com>
web site suggest that Respondent conducts business under the service mark
“Apartment People,” not “The Apartment People.” Complainant also takes issue with the sufficiency of Respondent’s
evidence that the domain name was used in connection with the offering of
services prior to notice of the dispute.
In addition, Complainant argues that Respondent registered and used the
domain name in bad faith because it is seeking to redirect users looking for
Complainant’s web site, and because Complainant also offers apartment locator
and rental services.
FINDINGS
The Panel finds that Complainant has
established that it owns protectable rights in THE APARTMENT PEOPLE mark. The Panel also finds that the domain name is
identical to that mark.
The Panel finds that Respondent was
incorporated as “The Apartment People, Ltd.” on April 23, 1984. The Panel finds that the Respondent has
conducted an apartment-finding service and brokerage in the Chicago metropolitan area since that
date under the names “The Apartment People” or “Apartment People.” As discussed below, the presence of the
definite article “the” in front of the name is immaterial to a determination of
whether the Respondent has rights or legitimate interests in the domain
name. Based on the limited evidence
before the Panel, it appears possible that Respondent established a common law
service mark in its name in the period following its incorporation, two years
prior to Complainant’s federal registration of its mark.
The Panel finds that Respondent registered
the domain name on September 23, 1996.
While the evidence is unclear as to what Respondent did with the domain name
between that date and the fall of 2000, Respondent has established that the
domain name has been used as a redirect to its <apartmentpeople.com> web site since 2000. Respondent’s apartment listing and brokerage
service is offered through this web site.
The Panel finds that Complainant only offers its services in the states of Nevada, North Carolina, Georgia, and Virginia, while Respondent only provides listings for the greater Chicago area. The Panel notes that the state of Illinois does not border any of the states in which Complainant provides its services.
The Panel makes no finding as to whether
Respondent in fact established a common law mark prior to Complainant’s
registration, or whether Complainant’s federally registered mark would take
priority over a common law mark owned by Respondent. These are matters appropriately resolved by a court in an
action for service mark infringement rather than by a panel charged with
implementing the Policy. The sole issue
before us is whether Complainant has established all three elements of its
claim for a transfer of the Domain Name under the terms of the Policy. It has not.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 domain name
incorporates the entirety of Complainant’s THE APARTMENT PEOPLE service mark,
with the only addition being the “.com” top-level domain name. Such top level domains are irrelevant to a
finding that a domain name and service mark are identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (the addition
of a generic top-level domain is “not relevant” to a determination of
similarity, as it is required, necessary, and functional).
Respondent does not contest Complainant’s rights in the THE APARTMENT PEOPLE mark or the fact that Respondent’s <theapartmentpeople.com> domain name is identical to Complainant’s THE APARTMENT PEOPLE mark. Complainant has thus established the first element.
As to the second element of paragraph 4(a) of the Policy, Complainant fails to persuade this Panel that it has met its burden to show that Respondent lacks any rights or legitimate interests in the Domain Name.
Paragraph 4(c) of the Policy describes three nonexclusive circumstances which, if found, would demonstrate a respondent’s rights or legitimate interests in a domain name. Two of these circumstances are applicable here: First, if the respondent, prior to notice of the dispute, has made “use of, or demonstrable preparations to use, the domain name . . . in connection with a bona fide offering of goods or services.” The second is if the respondent “has been commonly known by the domain name,” even without owning any trademark rights under it.
In this case, Respondent has met both of these criteria for “rights or legitimate interests” in the Domain Name. The evidence indicates that, at least since 2000, Respondent has used the domain name as a redirect to its <apartmentpeople.com> web site, which contains listings for Chicago area apartments. Complainant argues that the affidavit provided by Respondent indicating that this redirection occurred before Respondent received notice of this dispute is inadequate, because it is not based on the personal knowledge of the affiant. Complainant is correct insofar as the affidavit deals with the use of the domain name prior to 2000. However, the affidavit is based on personal knowledge to the extent it deals with the use of the domain name subsequent to the fall of 2000.
The <apartmentpeople.com> web site provides listings for apartment rentals in the Chicago area. This service is free to the renters, and Respondent employs over seventy licensed real estate agents to aid in renting decisions. A fee is presumably paid to Respondent by landlords for Respondent’s services. This use of the domain name constitutes a bona fide offering of goods or services, which began approximately five years prior to Complainant informing Respondent of the dispute. Such an offering of goods or services constitutes a legitimate right or interest in the domain name. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); see also First Am. Funds, Inc. v. Ult.Search, Inc., D2000-1840 (WIPO Apr. 20, 2001) (finding that, absent bad faith, the operation of a portal website is a legitimate interest).
Furthermore, the Respondent has been commonly
known by the domain name. Respondent is
incorporated as “The Apartment People, Ltd.,” which is identical to the domain
name except for the “Ltd.” ending.
Respondent has provided sufficient evidence that it has conducted its
business under the names “The Apartment People” or “Apartment People” in the
Chicago area from 1984 through the present day. This use began two years prior to Complainant’s federal
registration of its mark. While it is
not within the scope of the Panel’s duties to determine whether this earlier
use granted Respondent a common law mark in the Chicago area, the Panel
concludes that this use shows that Respondent has been commonly known by the
domain name. Thus this fact also
supports the conclusion that Respondent has rights or legitimate interests in
the domain name. See Avnet, Inc. v. Aviation Network, Inc.,
D2000-0046 (WIPO Mar. 24, 2000) (finding that the respondent was commonly known
by the <avnet.net> domain name because the respondent submitted “evidence
that it was known by the name AVNET for at least ten years prior to its domain
name registration”); cf. Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods.,
D2003-0624 (WIPO Oct. 16, 2003) (finding that the respondent was commonly known
by the <lexusmichaels.com> domain name because the respondent’s stage
name was LEXUS MICHAELS).
Complainant argues that Respondent has in
fact conducted business under “Apartment People,” not “The Apartment People,”
and that therefore Respondent has not been commonly known by the domain
name. Even assuming that this assertion
is correct, the presence of the definite article “the” prior to the domain name
does not distinguish the domain name significantly from the name “Apartment
People.” On the facts and circumstances
of this particular case, the addition of the word “the” does not add any
nontrivial meaning to the rest of the name.
In an analogous situation, panels have overwhelmingly held that the
addition of the word “the” to a domain name does not prevent a finding of
confusing similarity to the Complainant’s mark. See,
e.g., Int’l Save the Children
Alliance v. Qureshi,
D2005-1039 (WIPO Nov. 11, 2005) (“[t]he addition or omission of an
article such as ‘the’ in our case has minimal impact on an analysis for
identity or confusing similarity”); see also Belo
Corp. v. Latimer, D2002-0329 (WIPO May 16, 2002)
(“[t]his Panel agrees with the numerous distinguished WIPO panels holding that
mere deletion (or addition) of the article "the" within a mark does
not constitute a substantive change or obviate confusion.”); see also Mandarin Oriental Servs. B.V. v Control Alt Delete, D 2000-1671 (WIPO Feb. 19, 2001) (noting
that it would be a “very rare case” where presence or absence of the article
“the” is important).
Complainant also argues that Respondent did
not make bona fide use of the domain
name because the domain name was simply a redirect to Respondent’s <apartmentpeople.com> web site, and
that the only bona fide offer of
goods and services took place on that web site. Complainant is correct that redirections by a domain name holder
to a site offering goods and services competitive with a complainant’s business
can be illegitimate. See, e.g., Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001).
However, such is not the case here.
While both Complainant and Respondent participate in the apartment
rental field, Respondent is more focused on listings of apartment rentals,
while Complainant primarily manages apartment complexes. Furthermore, the geographic locations where
Complainant and Respondent offer their services are completely separate. Most importantly, the Respondent was
commonly known as “The Apartment People” or “Apartment People.” It is highly plausible that Respondent
registered the domain name <theapartmentpeople.com> not because it
wished to divert internet users who were looking for Complainant’s web site
<thepartmentpeople.net>, but rather in a legitimate effort to
redirect internet users who were looking for Respondent’s web site at <apartmentpeople.com> and who had typed in the disputed domain
name by mistake. The difference between
these two domain names is only the word “the.”
Such a motivation is sufficiently connected to the bona fide offer of services at Respondent’s <apartmentpeople.com> web site.
The Panel concludes that Complainant has
failed to show that Respondent does not have rights or legitimate interests in
the domain name.
Because Complainant has failed to establish the second element of its claim under the Policy, this Panel need not resolve the question of whether any conduct by Respondent in connection with its registration or use of the mark has been shown by Complainant to have been in bad faith. Nevertheless, the Panel notes that it is unpersuaded that Complainant has advanced sufficient evidence of any bad faith conduct.
First, Complainant
argues that Respondent was on constructive notice of Complainant’s rights in
the THE APARTMENT PEOPLE mark by dint of Complainant’s federal trademark
registration prior to Respondent’s registration of the domain name. Complainant also argues that Respondent’s
application to federally register the mark THE APARTMENT PEOPLE LTD. was
rejected due to Complainant’s prior registration, thus placing Respondent on
actual notice. However, Respondent has
submitted an affidavit declaring that it was unaware of the existence of
Complainant or its registered service mark until June 7, 2005, approximately
ten years after the registration of the domain name. Given the geographic separation of Complainant and Respondent and
their businesses, the Panel finds this assertion plausible. The Panel also notes that Complainant’s
argument as to the reason for the rejection of Respondent’s trademark
application is mere speculation.
Respondent’s lack of knowledge of Complainant’s rights at the time of
registration weighs against a finding of bad faith. See It Takes 2 v. C.,J., FA 384923 (Nat. Arb. Forum Feb.
15, 2005) (“[I]n the absence of any evidence of knowledge on the part of
Respondent of Complainant, its mark or its services at the time Respondent
acquired the domain name, the Panel finds Complainant has failed to establish
registration in bad faith.”).
Second, Complainant argues that bad faith can
be found from Respondent’s failure to make use of the domain name for an extended
period, and its redirection to its own web page subsequent to receiving notice
of the dispute, both of which show an attempt to disrupt Complainant’s
business. As discussed above, The Panel
concludes that Respondent put the redirection in place at least as of 2000,
long before being informed of the dispute.
Furthermore, the Panel concludes that Respondent’s actions were not
undertaken to divert visitors looking for Complainant’s site, but rather to
redirect users who were looking for Respondent’s site but used the wrong
address. Such a use does not constitute
bad faith. See Schering AG v. Metagen GmbH, D2000-0728
(WIPO Sept. 11, 2000) (finding that a respondent did not register or use the
domain name <metagen.com> in bad faith where the respondent registered
the domain name in connection with a fair business interest and no likelihood
of confusion was created); see also DJF
Assocs., Inc. v. AIB Commc’ns, FA 95612 (Nat. Arb. Forum Nov. 1, 2000)
(finding a respondent has shown that it has a legitimate interest in the domain
name because the respondent selected the name in good faith for its website,
and was offering services under the domain name prior to the initiation of the
dispute).
It may be that Complainant’s rights to the
mark THE APARTMENT PEOPLE are superior to Respondent’s rights in such a mark,
due to Complainant’s earlier use in commerce and federal registration. However, that determination will need to be
made by an appropriate court. This
Panel’s duty is limited to assessing whether Complainant has satisfied the
three factors in Policy ¶ 4(a). Because
Respondent appears to have rights and legitimate interests in the domain name
and did not register the domain name in bad faith, Complainant has failed to
meet its burden.
DECISION
Complainant having failed to established all three elements required
under the Policy, the Panel concludes that relief shall be DENIED.
Michael Albert, Panelist
Dated: March 2, 2006
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