Generic Top Level Domain Name (gTLD) Decisions

Complainant is Great Plains Metromall, LLC, Columbus, OH, USA ("Complainant") represented by Randolph W. Alden, of Alden, Taylor & Durkin, LLC. Respondent is Gene Creach, Overland Park, KS, USA ("Respondent").

The domain name at issue is "greatplainsmall.com" registered with Register.com.

The undersigned certifies that he or she 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 (the "Forum") electronically on April 9, 2001; the Forum received a hard copy of the Complaint on April 10, 2001.

On April 10, 2001, Register.com confirmed by e-mail to the Forum that the domain name "greatplainsmall.com" is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 2001 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@greatplainsmall.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On May 11, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin, as Panelist.

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

A. Complainant

Complainant argues that it has rights in the marks The Great Mall Of The Great Plains and greatmallgreatplains.com; that the domain name is confusingly similar to its marks; that Respondent has no right to or legitimate interests in the domain name noting that its rights in the marks The Great Mall Of The Great Plains and greatmallgreatplains.com marks predate the registration of the domain name; that Respondent has not been commonly known as or done business as "greatplainsmall.com"; that Respondent is not authorized by Complainant to use the The Great Mall Of The Great Plains and greatmallgreatplains.com marks; and that there has been no use of the domain name in connection with the bona fide offering of goods or services or for noncommercial purposes.

Finally, Complainant contends that the domain name was registered and is being used in bad faith based on the reputation of the The Great Mall Of The Great Plains and greatmallgreatplains.com marks and that the Respondent is causing confusion therewith by redirecting Internet users.

B. Respondent

Complainant is a real estate investment partnership involved in the ownership, management, acquisition and development of the mall known as The Great Mall Of The Great Plains and uses the domain name greatmallgreatplains.com to advertise The Great Mall Of The Great Plains extensively. Complainant has been developing and operating The Great Mall of the Great Plains since 1996. Since that time, Complainant has continuously and extensively used The Great Mall Of The Great Plains and the domain name greatmallgreatplains.com marks to identify, advertise, and promote The Great Mall Of The Great Plains.

The words The Great Mall Of The Great Plains were first used in commerce on or about December 1, 1996. The domain name greatmallgreatplains.com was registered on July 14, 1997.

Respondent registered the domain name in question on January 12, 2000. When entered into an Internet browser, the domain name redirects the user to a page that purports to belong to "InfoTech Inc." The site contains a headline that states "Let us Create your Online Future."

The address of the Great Mall of the Great Plains is within thirteen miles of the address listed on Respondent’s domain name registration.

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

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 Policy requires that a Complainant have rights in a trademark or servicemark that is subject to abuse by Respondent. ICANN Policy ¶ 4(a)(i). The Policy does not require that a trademark be registered by a governmental authority for such rights to exist. Under U.S. law, trademark infringement actions may be brought on the basis of unregistered marks. 15 U.S.C. 1125(a). See, e.g., Brookfield Communications v. West Coast Entertainment, [1999] USCA9 225; 174 F.3d 1036, 1047, n. 8, (9^th Cir. 1999). Similarly, UDRP cases have held that UDRP proceedings can be brought on the basis of unregistered marks, provided that there are common law rights in the mark. See MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks").

In this case, Complainant, through its agent, DigitalVisions, has registered, developed, and used the domain name greatmallgreatplains.com in connection with Complainant’s mall, The Great Mall Of The Great Plains. The words The Great Mall Of The Great Plains were first used in commerce on or about December 1, 1996. The domain name greatmallgreatplains.com was registered on July 14, 1997. Complainant has spent thousands of dollars advertising and promoting The Great Mall Of The Great Plains, the domain name greatmallgreatplains.com and corresponding marks in the United States. In advertising and promotional materials, Complainant’s The Great Mall Of The Great Plains and domain name greatmallgreatplains.com marks are prominently featured.

Thus, the Panel concludes that Complainant has acquired common law trademark rights in The Great Mall Of The Great Plains and greatmallgreatplains.com marks through its extensive use of the marks in connection with its retail mall thereby giving Complainant exclusive rights to use these marks on and in connection with its products and services. See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the Complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify Complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); Passion Group Inc. v. Usearch, Inc., AF-0250 (eResolution Aug. 10, 2000) (finding that Complainant established sufficient rights by virtue of its distribution and advertising to enable it, at common law, to prevent another magazine by the same name from being passed off as that of Complainant. Thus Complainant established that it ‘has rights’ under the ICANN Policy).

The domain name, "greatplainsmall.com", and Complainant’s common law service marks, The Great Mall Of The Great Plains and greatmallgreatplains.com, are confusingly similar. In this case, it is easy for a consumer, attempting to buy things or gather information, to type in "greatplainsmall.com", instead of greatmallgreatplains.com. In such a situation, where many different groupings generally refer to the same place, a consumer would be confused if Respondent’s registration of "greatplainsmall.com" did not lead to Complainant’s web site. See Wellness Int’l Network, Ltd. v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to Complainant’s "Wellness International Network").

Thus, the elements of Policy ¶ 4(a)(i) have been established by Complainant.

The second aspect of the UDRP requires Complainant to reveal that Respondent has no rights or legitimate interests in the domain name.

When entering the domain name into an Internet browser, the user is directed to a site maintained by InfoTech Inc. This site contains a headline that states "Let us Create your Online Future," indicating that Respondent is engaged in a website development business. Thus, Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Policy ¶ 4(c)(iii). Likewise, Respondent cannot claim that such use of a confusingly similar domain name is bona fide. Policy ¶ 4(c)(i). See Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding no rights and legitimate interests where the Respondent diverted Complainant’s customers to his websites).

There is no relation between Respondent and Complainant. Further, Respondent is not a licensee of Complainant, nor has Respondent otherwise obtained an authorization to use Complainant’s common law trademark and name under any circumstance. Considering the above, and given that Respondent registered the domain name three years after Complainant commenced use of the marks contained therein, reveals that Respondent is not commonly known by the "greatplainsmall.com" domain name. Policy ¶ 4(c)(ii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).

Accordingly, pursuant to Paragraph 4(a)(ii) of the Policy, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name at issue.

The third aspect of the Policy requires Complainant to establish that the domain name has been registered and is being used by Respondent in bad faith.

Complainant’s The Great Mall Of The Great Plains is located within thirteen miles of the address listed for Respondent. Given the proximity of Complainant’s retail shopping mall and Respondent’s location, an inference can be drawn that Respondent was aware of Complainant’s marks upon registration and that registration of the domain name would disrupt Complainant’s business. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration). Thus, the Panel concludes that Respondent registered the domain name in bad faith.

Respondent is using the domain name to link to a website offering technology services. Attracting Internet users to a website for commercial gain, by creating a likelihood of confusion with Complainant’s marks is evidence of bad faith. Policy ¶ 4(b)(iv). See America Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the Respondent attracted users to a website sponsored by the Respondent); eBay, Inc v. Progressive Life Awareness Network, D2000-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site). Thus, the Panel concludes that Respondent is using the domain name in bad faith.

In view of the above, the Panel finds that Respondent registered and used the domain name in bad faith, according to paragraph 4(a)(iii) of the ICANN Policy.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "greatplainsmall.com" be transferred from the Respondent to the Complainant.