Weingarten Realty Investors v. CrochetDoilies
Claim Number: FA0604000686079
PARTIES
Complainant is Weingarten Realty Investors (“Complainant”), represented by Debra E. Deardourff, of Holland & Knight LLP, 100 N. Tampa Street, Suite 4100, Tampa, FL 33602. Respondent is CrochetDoilies (“Respondent”), 34 7th Ave. SE, Largo, FL 33771.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <largomall.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
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.
Sandra J. Franklin as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 21, 2006; the National Arbitration Forum received a
hard copy of the Complaint on April 25, 2006.
On April 21, 2006, Intercosmos Media Group, Inc. d/b/a Directnic.com
confirmed by e-mail to the National Arbitration Forum that the <largomall.com> domain name is
registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that the
Respondent is the current registrant of the name. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified
that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a
Directnic.com 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 27, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of May 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@largomall.com by e-mail.
A timely Response was received and determined to be complete on May 12,
2006.
On May 18, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Sandra J. Franklin as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <largomall.com> domain name is confusingly similar to Complainant’s LARGO MALL mark.
2. Respondent does not have any rights or legitimate interests in the <largomall.com> domain name.
3. Respondent registered and used the <largomall.com> domain name in bad faith.
B. Respondent states the following:
1.
Complainant
does not have trademark rights in LARGO MALL.
2. Respondent does have legitimate rights and interests in the <largomall.com> domain name.
3.
Respondent did not register the <largomall.com>
domain name in bad faith.
FINDINGS
Complainant is the developer of all, and
owner of most, of the property comprising Largo Mall in Largo, Florida, and has
commercially used the LARGO MALL mark continuously since 1988.
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 Panel finds that Complainant has established common law rights through consistent and substantial use of the LARGO MALL mark since 1988. 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.”)
The Panel finds that the <largomall.com> domain name is
identical to Complainant’s LARGO MALL mark, because the disputed domain name
incorporates Complainant’s mark in its entirety, omitting a space between the
two words that comprise the mark, and adding the generic top-level domain
“.com.” It is well settled that such
alterations to a mark render the domain name identical to the mark. In Snow Fun, Inc. v. O'Connor,
FA 96578 (Nat. Arb. Forum Mar. 8, 2001), the panel determined that the addition
of the generic top-level domain name “.com” to the TERMQUOTE mark did not
preclude a finding that the <termquote.com> domain name and the TERMQUOTE
mark were identical. Moreover, in Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the
panel similarly held that the omission of spaces between words in a mark and
the addition of a generic top-level domain name did not avoid a finding that
the <hannoverre.com> domain name
was identical to the HANNOVER RE mark.
Therefore, in the present case, the Panel finds that the alterations to Complainant’s LARGO
MALL mark inherent in the disputed domain name render the <largomall.com> domain name
identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
Contrary to Respondent’s assertions,
Complainant is not required to register domain names, nor is it required to
negotiate with Respondent, to protect its mark.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant must initially establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Once Complainant demonstrates a prima facie case, the burden of proof shifts to Respondent to show that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent.”)
Complainant contends that Respondent has not used the <largomall.com> domain name in connection with either a bona fide offering of goods or services in accord with Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), because the disputed domain name resolves to a website offering for sale the <largomall.com> domain name registration, a fact confirmed by the Respondent. This Panel finds that the attempted sale of a disputed domain name registration by a respondent is evidence that the Respondent lacks rights or legitimate interests in the domain name. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the respondent’s offer to sell the disputed domain name on the Internet indicated that the respondent had no rights or legitimate interests with respect to the domain name).
This Panel further notes that the evidence on record, including Respondent’s WHOIS information, shows that Respondent is not commonly known by the <largomall.com> domain name. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest 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).
Respondent states that he had hoped to use the <largomall.com> domain name to
provide directory services to small businesses in the area, but in the at least
6 years that he has held the domain name, he has not done so, nor was any
evidence submitted to show preparations to do so. Even if Respondent had succeeded with his plan, many of the
businesses listed would likely be in direct competition with the Largo Mall,
and Respondent would be illegitimately redirecting traffic intended for
Complainant to Respondent’s website.
Therefore the Panel finds that Respondent has not met its burden of
proof and has no rights or legitimate interests in the <largomall.com> domain name.
The Panel finds that
Policy ¶ 4(a)(ii) has been satisfied.
Respondent certainly knew of the existence of the commercial establishment Largo Mall in its own town, Largo, Florida. Respondent’s website lists or listed an out-of-date address and phone number for the LARGO MALL. The Panel finds that Respondent’s website purposely creates a likelihood of confusion as to the relationship between Respondent’s <largomall.com> domain name and Complainant’s LARGO MALL mark, indicating bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”)
The Panel finds that Respondent’s
offer to sell the domain name registration for the <largomall.com> domain name to
Complainant is further evidence of bad faith pursuant to Policy ¶ 4(b)(i). Respondent posted a “for sale” statement on
the website located at the <largomall.com> domain name, and
indicated in its Response that it would have accepted an offer “for less than
half the cost of filing this Complaint,” an amount well in excess of
Respondent’s out-of-pocket costs to hold the domain name registration. Such conduct evidences bad faith
registration and use under Policy ¶ 4(b)(i).
See Bank of Am. Corp. v. Nw.
Free Cmty. Access, FA 180704 (Nat. Arb.
Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name
registration for sale establishes that the domain name was registered in bad
faith under Policy ¶ 4(b)(i).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <largomall.com>
domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 1, 2006
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