Generic Top Level Domain Name (gTLD) Decisions

Complainant is Dayton Mall Venture, LLC, Columbus, OH, USA ("Complainant") represented by Randolph W. Alden, of Alden, Taylor & Durkin, LLC. Respondent is Sherif Hedayat, Centerville, OH, USA ("Respondent").

The domain name at issue is "daytonmall.com" registered with Network Solutions, Inc.

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 11, 2001.

On April 11, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "daytonmall.com" is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 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@daytonmall.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 the Respondent to the Complainant.

A. Complainant

Complainant argues that it has rights in the mark THE DAYTON MALL; that the domain name is confusingly similar to its THE DAYTON MALL mark; that Respondent has no right to or legitimate interests in the domain name noting that its rights in the THE DAYTON MALL mark predate the registration of the domain name; that Respondent has not been commonly known as or done business as "daytonmall.com"; that Respondent is not authorized by Complainant to use the THE DAYTON MALL mark; 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 fact that the Respondent is not making any use of the domain name in question.

B. Respondent

The Dayton Mall was first used by Complainant in commerce on or about July 1, 1997. The words "The Dayton Mall" comprise a registered trade name of Complainant, (Ohio Certificate #RN237512). The nature of the business conducted by Complainant under this trade name is a retail shopping mall.

According to Network Solutions’ WHOIS, Respondent registered the domain name on November 10, 1998. Respondent has made no use of the website connection to the "daytonmall.com" domain name.

Complainant’s Dayton Mall is located within 6 miles of the address listed on Respondent’s domain name registration information.

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.

Complainant has common law rights in the THE DAYTON MALL mark given the use and registration of its tradename "The Dayton Mall." See Keppel TatLee Bank v. Lars Taylor, D2001-0168 (WIPO Mar. 28, 2001) ("[O]n account of long and substantial use of the said name [‘keppelbank.com’] in connection with its banking business, it has acquired rights under the common law").

The domain name differs from Complainant’s tradename and common law mark only by means of deleting the word "the." This is not enough of a distinction to establish a distinct domain name or mark. See Original Mattress Company, Inc., and The Original Mattress Factory, Inc. v. Dilworth Mattress and Ivenue.com, Inc., D2001-0176 (WIPO Apr. 3, 2001) (finding disputed domain name, originalmattressco.com, is confusingly similar to Complainants’ corporate name and registered trademarks). Thus, the domain name is confusingly similar to Complainant’s "The Dayton Mall" tradename and common law mark, and the elements of Policy ¶ 4(a)(i) have been established by Complainant.

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

Respondent has made no use of the domain name in question. Thus, he cannot claim to be making a commercial or noncommercial use of the domain name under Policy ¶ 4(c)(i) or (iii). See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name).

Also, 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 one and a half years after Complainant commenced use of the marks contained therein, reveals that Respondent is not commonly known by the "daytonmall.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 Dayton Mall is located within six 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.

Here, Respondent has made no use of the domain name. In similar cases, UDRP panels have found bad faith registration where a respondent has not linked the domain name to an active website and has failed to offer any evidence of a good faith intent to use the domain name for a legitimate purpose. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the Respondent made no use of the domain name in question and there are no other indications that the Respondent could have registered and used the domain name in question for any non-infringing purpose); Schick Technologies, Inc. v. Eagles Nest, FA 95759 (Nat. Arb. Forum Nov. 18, 2000); Sanrio Co., Ltd. and Sanrio, Inc. v. DLI, D2000-0159 (WIPO April 20, 2000). Thus, the Panel concludes that Respondent is making no use of the domain name in question.

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 "daytonmall.com" be transferred from the Respondent to the Complainant.