Aventura Mall Venture v. Web Development Group, Ltd.
Claim Number: FA0704000964645
Complainant is Aventura Mall Venture (“Complainant”), represented by David
A. Gast, of Malloy & Malloy, P.A.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <aventuramall.com>, registered with Tucows, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 19, 2007; the National Arbitration Forum received a hard copy of the Complaint on April 19, 2007.
On April 19, 2007, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <aventuramall.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 April 25, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 15, 2007 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@aventuramall.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <aventuramall.com> domain name is identical to Complainant’s AVENTURA MALL mark.
2. Respondent does not have any rights or legitimate interests in the <aventuramall.com> domain name.
3. Respondent registered and used the <aventuramall.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Aventura Mall Venture, operates a well-known
retail shopping center in
Respondent registered the <aventuramall.com> domain name on December 4, 2002. Respondent’s domain name resolves to a website displaying a list of third-party links, including Complainant, competing retail sites, and other unrelated links. Additionally, Respondent has participated in several other UDRP decisions in which disputed domain names held by Respondent were transferred to the respective complainants at the close of the proceedings. See Norm Thompson Outfitters Inc. v. Web Dev. Group Ltd., FA 645461 (Nat. Arb. Forum Apr. 4, 2006); Iowa Sports Found. v. Web Dev. Group Ltd., FA 600886 (Nat. Arb. Forum Jan. 4, 2006); Weld Racing, Inc. v. Web Dev. Group Ltd., D2005-0357 (WIPO June 6, 2005).
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.
A registered trademark is not required for Complainant to establish rights in the AVENTURA MARK pursuant to Policy ¶ 4(a)(i). See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established common law rights in the AVENTURA MALL mark through continuous and extensive use of the mark since approximately May 1980, when Complainant began soliciting tenants for the shopping center and advertising mall services. It is estimated that over 450 million people have visited Complainant’s shopping center since its opening in 1983. Complainant has also cumulatively spent approximately $450,000,000.00 in promoting its retail center and services. Additionally, Complainant doubled the size of its retail space in 1997 and is presently engaged in a multimillion dollar expansion to add additional space. Complainant also filed a trademark registration application with the USPTO for the AVENTURA MALL mark on December 13, 2006. Based on the foregoing, the Panel finds Complainant’s AVENTURA MALL mark has acquired secondary meaning sufficient to establish common law rights in the mark. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”); see also Fishtech, Inc. v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark FISHTECH that it has used since 1982).
Respondent’s <aventuramall.com>
domain name incorporates Complainant’s AVENUTRA MALL mark in its entirety. Neither the omission of the space between
“aventura” and “mall” nor the addition of the generic top-level domain “.com” are
sufficient to distinguish the disputed domain name from Complainant’s AVENTURA
MALL mark. See
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges Respondent lacks any rights or legitimate interests in the <aventuramall.com> domain name. The initial burden of establishing Respondent’s lack of rights or legitimate interests in the disputed domain name falls on Complainant. After Complainant sets forth a prima facie case, the burden shifts to Respondent to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The present record lacks any evidence demonstrating Respondent is connected with or authorized by Complainant to use Complainant’s AVENTURA MALL mark. Further, Respondent’s WHOIS information does not lend itself to a finding that Respondent is commonly known by the <aventuramall.com> domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”); 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). Accordingly, the Panel concludes Respondent is not commonly known by the <aventuramall.com> domain name pursuant to Policy ¶ 4(c)(ii).
Moreover, the record lacks any evidence demonstrating
Respondent’s registration and use of the disputed domain name is in conjunction
with a bona fide offering of goods or
services or a legitimate noncommercial or fair use. Respondent’s <aventuramall.com> domain name resolves to a website
featuring a collection of third-party links both related to the retail industry,
including Complainant and parties who compete alongside of Complainant in the
industry, and links unrelated to Complainant, i.e. travel, real estate, and
employment links. Such use by Respondent
does not comport with Policy ¶¶ 4(c)(i) or (iii) in demonstrating
a bona fide offering of good or
services or a legitimate noncommercial or fair use. See
Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent
to divert Internet users seeking Complainant's website to a website of
Respondent and for Respondent's benefit is not a bona fide offering of goods or
services under Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am.
Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s registration and use of the <aventuramall.com> domain name to divert Internet users from Complainant’s business to Respondent’s third-party links page, which includes links to retail competitors of Complainant, constitute bad faith use and registration under Policy ¶ 4(b)(iii) as Respondent’s primary purpose is to disrupt Complainant’s business. See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Additionally, the Panel may infer use of the disputed domain name bearing an exact likeness to Complainant’s AVENTURA MALL mark to link Internet users to third-party products and services constitutes an intentional diversion by Respondent in order to generate click-through fees, conferring commercial gain on Respondent. Respondent’s use of Complainant’s AVENTURA MALL mark for commercial gain constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
The Panel also finds bad faith registration and use on behalf of Respondent pursuant to Policy ¶ 4(b)(ii) based on Respondent’s previous involvement in other UDRP decisions ending in transfer of the disputed domain names to the respective complainants in those cases. See Norm Thompson Outfitters Inc. v. Web Dev. Group Ltd., FA 645461 (Nat. Arb. Forum Apr. 4, 2006); Iowa Sports Found. v. Web Dev. Group Ltd., FA 600886 (Nat. Arb. Forum Jan. 4, 2006); Weld Racing, Inc. v. Web Dev. Group Ltd., D2005-0357 (WIPO June 6, 2005). Such evidence permits the Panel to find Respondent has engaged in a pattern of registering infringing domain names, demonstrating an exercise of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 16, 2000) (finding a bad faith pattern of conduct where the respondent registered many domain names unrelated to its business which infringe on famous marks and websites).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <aventuramall.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 31, 2007
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