DECISION

Empire Industrial Park LLC v. License DIamond / IT Services

Claim Number: FA2506002160517

 

PARTIES

Complainant is Empire Industrial Park LLC ("Complainant"), represented by Sonia V. Junfin, Texas, USA. Respondent is License DIamond / IT Services ("Respondent"), represented by Alan Bornstein of Jameson Pepple Cantu PLLC, Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <empireindustrialpark.com>, registered with Amazon Registrar, Inc.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Bart Van Besien as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on June 12, 2025; Forum received payment on June 12, 2025.

 

On June 13, 2025, Amazon Registrar, Inc. confirmed by e-mail to Forum that the <empireindustrialpark.com> domain name is registered with Amazon Registrar, Inc. and that Respondent is the current registrant of the name. Amazon Registrar, Inc. has verified that Respondent is bound by the Amazon Registrar, Inc. 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 June 13, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2025, 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@empireindustrialpark.com.

 

Also on June 13, 2025, 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 July 1, 2025.

 

On July 2, 2025, pursuant to the Parties' requests to have the dispute decided by a single-member Panel, Forum appointed Bart Van Besien as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

The Complainant asserts that the disputed domain name is identical or confusingly similar to its brand name "Empire Industrial Park", in which it asserts common law trademark rights through long-standing and prominent use in connection with the operation and promotion of an industrial real estate development located in Eagle Pass, Texas. The Complainant claims it has conducted business under this name through various channels, including signage, digital advertising, and the website <theempireindustrialpark.com>.

 

The Complainant further asserts that the Respondent has no rights or legitimate interests in the domain name, for the following reasons:

§       The Respondent has never been commonly known by the name "Empire Industrial Park";

§       There is no evidence that the Respondent owns any trademark or service mark corresponding to the disputed domain name;

§       The domain name does not resolve to an active website providing a bona fide offering of goods or services. Rather, it appears to be parked or inactive, offering no legitimate business purpose or informational content;

§       The Complainant made efforts to acquire the domain name through domain name brokers, but the Respondent did not respond to these attempts; and

§       The Complainant has invested significantly in the brand "Empire Industrial Park", including through its operation of the domain name <theempireindustrialpark.com>.

 

Finally, the Complainant contends that the domain name was registered and is being used in bad faith, specifically for the purpose of selling it to the Complainant or a competitor for valuable consideration in excess of out-of-pocket costs, or to prevent the Complainant from reflecting its brand in a corresponding domain name. The Complainant supports its claim of bad faith on the following arguments:

§       The domain name is identical to the Complainant's brand name, "Empire Industrial Park", which has been used intensively in relation to the industrial real estate development in Eagle Pass, Texas. The Complainant has developed substantial goodwill under this name, which is not a generic phrase that would likely have been chosen by the Respondent without prior knowledge of the Complainant's brand;

§       The Respondent used a privacy protection service to conceal its identity and failed to respond to outreach efforts made through professional domain brokerage services; and

§       The domain name is inactive or parked, with no content or service offered. Such passive holding of a domain associated with a third-party brand, when combined with the use of a privacy service and lack of response, constitutes bad faith use under applicable standards.

 

B. Respondent

The Respondent owns and operates the "Empire Industrial Park", located at 12310 to 12432 Highway 99 in Everett, Washington 98204, within the Seattle metropolitan area. This industrial park currently consists of six warehouse buildings that are nearly fully leased. The Respondent, through the Empire Industrial Park general partnership, has owned and managed the property since 1974. Over the past fifty years, the Respondent has developed substantial common law service mark rights in the name "Empire Industrial Park" in connection with its warehousing operations in the Seattle-Tacoma-Bellevue metropolitan region. By contrast, the Complainant was only formed as a Texas limited liability company on March 1, 2023.

 

There is no likelihood of confusion among customers (i.e., warehouse users) as the Respondent serves the Seattle-Tacoma-Bellevue metropolitan area, which is located more than 2,000 miles by road and approximately 1,800 miles by air from the Piedras Negras metropolitan area where the Complainant operates. The Complainant is not a competitor of the Respondent.

 

The Respondent disregarded the unsolicited emails sent on behalf of the Complainant, classifying them as spam. The Respondent is not interested in selling its domain name, which is closely tied to its five-decade-long successful operation of its Empire Industrial Park.

 

The Respondent registered the domain name on September 14, 2020, and has continuously used it since then for communications with property managers, asset managers, and third parties seeking to contact the Empire Industrial Park in Everett.

 

The Respondent asserts that the Complainant has failed to demonstrate that the disputed domain name is confusingly similar to a trademark in which it holds rights. The Complainant does not own a registered trademark and has not established common-law trademark rights. The Complainant's alleged mark is a combination of three generic terms, and the Complainant has not presented evidence of secondary meaning. Notably, the Complainant was formed only two years and three months ago. The Complainant has failed to provide adequate proof of business activity, such as sales, leases, or third-party recognition, to support any claim of acquired distinctiveness.

 

The Respondent further contends that the Complainant has not met its burden of proving that the Respondent lacks rights or legitimate interests in the domain name. The Respondent has used the domain name in connection with a bona fide offering of goods and services for nearly five years, specifically in relation to the leasing of warehouse space at the Empire Industrial Park, which it has owned for over fifty years. The Respondent is commonly known by the domain name and has developed common law rights in the name "Empire Industrial Park." 

 

Additionally, the Respondent denies that the domain name was registered or used in bad faith. At the time of registration, the Complainant did not exist. The Respondent did not register the domain name with the intent to sell it to the Complainant or a competitor, nor to prevent the Complainant from using its (then-nonexistent) trademark in a domain name. There is no pattern of abusive conduct, no competitive relationship between the parties, and no attempt to disrupt the Complainant's business. The Respondent did not register the domain name to attract internet users for commercial gain by creating confusion with the Complainant's identity or brand.

 

Finally, the Respondent requests a finding of Reverse Domain Name Hijacking. The Respondent emphasizes that it registered the domain name more than two years before the Complainant was even formed; that the Complainant has no enforceable rights in a descriptive or generic mark; and that a basic internet search would have revealed the longstanding operation of the Empire Industrial Park in the greater Seattle area and the domain name's prior registration date.

 

FINDINGS

None of the parties in this dispute owns a registered trademark for "Empire Industrial Park." However, both claim common law rights in the term - Complainant for an industrial real estate development located in Eagle Pass, Texas, and Respondent for one located in Everett, Washington.

 

Complainant's use of the name "Empire Industrial Park" appears to be relatively recent. While Complainant does not specify when it began using the name, it was only formed as a Texas limited liability company on March 1, 2023. Based on Complainant's exhibits, it seems that its industrial park is still under construction.

 

Respondent claims to have owned and operated its "Empire Industrial Park" since 1974. According to Respondent's exhibits, the name has been used for an industrial park in Snohomish County, Washington, since the 1970s (a deed of 1974 mentions "Empire Industrial Park", a general partnership, as a grantee, but does not mention the exact location of the real estate and does not confirm the involvement of the Respondent or a predecessor at that time).

 

The disputed domain name was registered on September 14, 2020.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

The Complainant claims to own common-law trademarks in the sign "Empire Industrial Park", in connection with the operation and promotion of an industrial real estate development in Eagle Pass, Texas.

 

The Panel notes that Policy 4(a)(i) does not require a complainant to own a registered trademark prior to a respondent's registration of a domain name if the complainant can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding that "The Policy does not require a complainant to own a registered trademark prior to a respondent's registration if it can demonstrate established common law rights in the mark."). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the mark through evidence of "long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark's having acquired secondary meaning.").

 

The Complainant failed to provide evidence of its alleged common law trademark. The Complainant failed to provide evidence regarding the duration and nature of use of the mark, the number of sales under the mark, the nature and extent of advertising using the mark, the degree of public recognition (e.g., website traffic), consumer surveys, etc.

 

The burden of proof is on the Complainant. The Panel finds that the Complainant has not established sufficient secondary meaning in the mark "Empire Industrial Park" to create common law or unregistered trademark rights.

 

The Panel concludes that the Complainant has not satisfied Paragraph 4(a)(i) of the Policy because it has failed to establish rights in the marks.

 

Rights or Legitimate Interests

In light of the Panel's finding that the Complainant failed to establish the first element of Paragraph 4(a) of the Policy, it is not necessary to consider the Complainant's assertions regarding the Respondent's lack of rights or legitimate interests in the domain name. Nevertheless, the Panel will address the second element of Paragraph 4(a) for the record.

First, the Panel finds that the Respondent has demonstrated use of the disputed domain name for recent email communications, including through the email address 'customerservice@empireindustrialpark.com' on January 28, 2025 - prior to the commencement of these proceedings. This constitutes a legitimate use of the domain name.

Second, the Respondent has provided evidence of the existence of an industrial park in Everett, Snohomish County, Washington, named "Empire Industrial Park." The Respondent has shown that, as early as 1974, a general partnership named "Empire Industrial Park" owned real estate in Snohomish County (though the 1974 deed did not state an address or the involvement of the Respondent or a known predecessor).

The Respondent further asserts - and has provided supporting documentation - that a legal entity currently exists under the name "Empire Industrial Park," which owns multiple parcels along Highway 99 in Everett, corresponding to the location of a warehouse complex visibly branded as "Empire Industrial Park."

It remains unclear to the Panel whether the Respondent - or any predecessor in interest - was part of the original 1974 general partnership named "Empire Industrial Park." The Panel also notes with regret that the Respondent has not provided documentary evidence of its link to the current partnership bearing that name. Although the Respondent asserts that it is a member of the partnership, such a connection is not established in the submitted exhibits.

However, upon closer review of the Respondent's evidence, the Panel observes that the entity currently named "Empire Industrial Park," which owns several parcels at the relevant Everett location, shares the same address - 605 1st Avenue, Suite 600, Seattle, WA 98104 - as the Respondent. This overlap supports an inference of association.

Accordingly, the Panel concludes that the Respondent has established rights or legitimate interests in the disputed domain name, based on its use for email correspondence and based on its connection to the ownership and/or operation of an industrial park named "Empire Industrial Park" - a name that has been used in Washington long before the Complainant began using the same name for a newly formed industrial park in Texas.

The Panel therefore finds that the Complainant did not prove that the Respondent lacks rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

In light of the Panel's finding that the Complainant failed to establish the first and second elements of Paragraph 4(a) of the Policy, it is not necessary to consider the Complainant's allegations that the Respondent registered and is using the disputed domain name in bad faith. Nevertheless, the Panel will set forth its conclusions regarding the third element of Paragraph 4(a) for the record.

First, the Complainant alleges that the domain name was registered and is being used for the purpose of selling it to the Complainant or a competitor for valuable consideration in excess of out-of-pocket costs. These allegations are unsupported by any evidence. Furthermore, the claim that the Respondent intended to sell the domain name is inconsistent with the Complainant's own assertion that the Respondent refused to sell the domain name despite repeated outreach by the Complainant's brokers. Additionally, there is no evidence at all that the domain name was intended to be sold to a competitor of the Complainant.

Second, the Complainant's arguments conflict with the basic chronology of the case. The Panel emphasizes that the disputed domain name was registered on September 14, 2020, years before the Complainant was formed as a Texas limited liability company on March 1, 2023, and years before the Complainant registered its own domain name, <theempireindustrialpark.com>, on May 1, 2024. The Complainant's allegations of bad faith are particularly unconvincing in light of this timeline.

Third, contrary to the Complainant's position, the term "Empire Industrial Park" is, at least to a certain extent, generic or descriptive. It is entirely plausible that another party - such as the Respondent - might independently adopt this name without any awareness of the Complainant or its brand, and without any bad-faith intent. The Panel regrets that the Complainant did not acknowledge, let alone address, this reasonable possibility in its Complaint.

Fourth, there is no evidence whatsoever that the Respondent has targeted the Complainant or attempted to unfairly benefit from any association with the Complainant. There is no likelihood of confusion among the parties' customers, especially given the substantial geographic distance between their respective industrial properties.

Fifth, the use of a privacy protection service, by itself, is not indicative of bad faith. The same holds true for the Respondent's failure to respond to unsolicited emails from the Complainant's brokers. Similarly, the alleged non-use of the domain name is not persuasive, as the Respondent has demonstrated that it uses the domain for email communications. In the context of this case, none of these factors support a finding of bad faith.

REVERSE DOMAIN NAME HIJACKING

The Respondent requested a finding of Reverse Domain Name Hijacking (RDNH) under Rules 15(e).

 

The Panel finds that the Complaint was indeed brought in bad faith - in an attempt at Reverse Domain Name Hijacking – and constitutes an abuse of the administrative proceeding. The Panel refers to the following elements for its decision on Reverse Domain Name Hijacking:

 

First, the Complainant claims common law trademark rights based on its so-called "long-standing and prominent use" of the name "Empire Industrial Park". However, the Complainant fails to disclose that its claimed rights to the name are of very recent origin. In fact, the Complainant was only formed as a company on March 1, 2023, and registered its domain name, <theempireindustrialpark.com>, on May 1, 2024. The Respondent registered the disputed domain name years before the Complainant was incorporated, making it impossible for the Respondent to have known of the Complainant or to have been motivated by bad faith towards a non-existent company or its non-existent trademarks, when it registered the disputed domain name. The Complainant does not specify when it first began using the name itself. Moreover, it asserts common law trademark rights without submitting any supporting evidence of its purported "long-standing and prominent use." The Complainant should have recognized that it lacked the necessary trademark rights to initiate this domain name proceeding, especially since the disputed domain name was registered well before its own adoption of the name.

 

Second, the Complainant does not address the fact that the disputed domain name consists of terms that, taken together, are to some extent generic or descriptive.

 

Third, a simple Google search for "Empire Industrial Park" (conducted using incognito mode to eliminate personalization, in accordance with the Panel's general authority under Paragraphs 10 and 11 of the Rules) reveals that the Respondent's commercial complex in Everett, Washington, appears prominently in the top search results. With minimal effort, the Complainant would have discovered the Respondent's existence and its prior use of the name "Empire Industrial Park." In short, the Complainant appears to have failed to conduct a reasonable investigation and has advanced broad and unsupported claims - some of which are contradicted by publicly available evidence or even by its own argumentation.

 

The Panel concludes that the Complainant brought a claim that it knew - or should have known upon reasonable inquiry - was without merit and had no reasonable prospect of success. The Panel notes that the UDRP is designed to resolve legitimate disputes, and that purpose is not served by declining to find Reverse Domain Name Hijacking in appropriate circumstances, such as the present case.

 

DECISION

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 <empireindustrialpark.com> domain name REMAIN WITH Respondent.

 

__________________________________________________________________

 

 

 

Bart Van Besien, Panelist

Dated: July 15, 2025