S.R. Weiner & Associates Inc. and W/S Development Assoc. LLC v. Jeffrey Wood
Claim Number: FA0704000967694
Complainants are S.R. Weiner & Associates Inc. and W/S
Development Assoc. LLC (collectively, “Complainant”), represented by Julie
A. Frohlich, of Goulston & Storrs, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <marketplaceataugusta.com> and <themarketplaceataugusta.com>, registered with Go Daddy Software, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On April 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 17, 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@marketplaceataugusta.com and postmaster@themarketplaceataugusta.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <marketplaceataugusta.com> and <themarketplaceataugusta.com> domain names are identical to Complainant’s THE MARKETPLACE AT AUGUSTA and MARKETPLACE AT AUGUSTA marks.
2. Respondent does not have any rights or legitimate interests in the <marketplaceataugusta.com> and <themarketplaceataugusta.com> domain names.
3. Respondent registered and used the <marketplaceataugusta.com> and <themarketplaceataugusta.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, S.R. Weiner & Associates Inc. and W/S
Development Assoc. LLC, develop and manage the largest open-air shopping center
in the state of
Respondent registered the disputed domain names on September 22, 2005. Respondent’s <marketplaceataugusta.com> domain name resolves to no content, and Respondent’s <themarketplaceataugusta.com> domain name resolves to a website featuring links to competing restaurants not located in Complainant’s shopping center.
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 asserts rights in the THE MARKETPLACE AT AUGUSTA and MARKETPLACE AT AUGUSTA marks through continuous use in commerce, thereby creating a secondary meaning in the marks. Complainant contends that its shopping center has garnered widespread publicity for years. The Panel finds that Complainant’s continuous use of the well-known marks for over ten years establishes secondary meaning as well as the associated common law rights in the marks. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also 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.”).
The disputed domain names are identical to Complainant’s
protected marks, but for the addition of the generic top-level domain (“gTLD”)
“.com.” The Panel finds the addition of
a gTLD to an otherwise identical mark in a domain name fails to distinguish the
disputed domain names from the marks pursuant to Policy ¶ 4(a)(i). See Entrepreneur Media, Inc. v. Smith,
279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching
for a company’s Web site often assume, as a rule of thumb, that the domain name
of a particular company will be the company name or trademark followed by
‘.com.’”); see also Snow Fun, Inc. v. O'Connor, FA
96578 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In instances where Complainant makes a prima facie case in support of its allegations, and this Complainant is found to have established such facts to constitute such prima facie case, the burden shifts to Respondent to set forth concrete, credible evidence showing that it possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s <themarketplaceataugusta.com> domain name resolves to a website featuring links to competitors of Complainant’s shopping center business. The Panel finds that such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Respondent’s <marketplaceataugusta.com>
domain name
resolves to no content. The Panel
finds that Respondent’s non-use of the disputed domain name registration for
over 19 months is neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See
Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum
Complainant contends that no evidence exists on the record to indicate that Respondent, as an individual, is commonly known by the disputed domain names. Respondent’s WHOIS registration information lists “Jeffrey Wood” as the registrant of the disputed domain names. In lieu of countervailing evidence, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See DIMC, Inc. v. Phan, D2000-1519 (WIPO Feb. 20, 2001) (rejecting the claim that the respondent was commonly known by the “Krylon” nickname since there was no evidence indicating when the alleged nickname was adopted and how it was used); see also Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001) (finding that the respondent did not submit any evidence to support its suggestion that its employee was known by the nickname “Gambro”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <themarketplaceataugusta.com>
domain name resolves to a website featuring links to competitors of
Complainant’s shopping center business.
The Panel finds that such use constitutes a disruption of Complainant’s
business, which evinces registration and use in bad faith pursuant to Policy ¶
4(b)(iii). See Disney
Enters., Inc. v. Noel, FA 198805 (Nat.
Arb. Forum
Presumably, Complainant enjoys a financial benefit from the
purposeful misdirection of unsuspecting Internet users to third-party
commercial websites. Further, given that
the disputed domain names are identical to Complainant’s marks, it is likely
that those same unsuspecting Internet users will become confused as to the
source and affiliation of the resulting websites. The Panel finds that such use constitutes an
attraction for commercial gain, which evinces registration and use in bad faith
pursuant to Policy ¶ 4(b)(iv).
Respondent’s <marketplaceataugusta.com> domain name resolves to no content.. The Panel finds that Respondent’s non-use of the disputed domain name suggests registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Mondich v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to develop its website in a two-year period raises the inference of registration in bad faith).
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 <marketplaceataugusta.com> and <themarketplaceataugusta.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: May 31, 2007
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