DECISION

General Growth Properties, Inc. v. Scott Riddell

Claim Number:  FA0212000137675

PARTIES

Complainant is General Growth Properties, Inc., Chicago, IL (“Complainant”) represented by Lee J. Eulgen, of Neal Gerber & Eisenberg. Respondent is Scott Riddel, Colorado Springs, CO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <chapelhillsmall.com>, registered with All West Communications, Inc. d/b/a Aw Registry.

PANEL

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.

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 20, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.

On December 30, 2002, All West Communications, Inc. d/b/a Aw Registry confirmed by e-mail to the Forum that the domain name <chapelhillsmall.com> is registered with All West Communications, Inc. d/b/a Aw Registry and that Respondent is the current registrant of the name. All West Communications, Inc. d/b/a Aw Registry has verified that Respondent is bound by the All West Communications, Inc. d/b/a Aw Registry 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 December 30, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2003 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@chapelhillsmall.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 January 27, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

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 <chapelhillsmall.com> domain name is identical to Complainant’s CHAPEL HILLS MALL common law mark.

2. Respondent does not have any rights or legitimate interests in the <chapelhillsmall.com> domain name.

3. Respondent registered and used the <chapelhillsmall.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant owns a shopping mall in Colorado Springs, Colorado entitled CHAPEL HILLS MALL.  Complainant has owned the CHAPEL HILLS MALL since 1982.  Complainant’s mall hosts some of the nation’s best-known retailers, including The Gap, Sears, K-Mart, Borders Music & Books and J.C. Penney. 

Complainant has used the CHAPEL HILLS MALL moniker to promote and enhance the businesses and services offered at the mall.  The CHAPEL HILLS MALL service mark has become distinctive and has acquired secondary meaning signifying Complainant, especially within the Colorado Springs community. 

Complainant also operates a website at <shopchapelhillsmall.com> as part of an effort to promote its shopping mall.  Complainant has operated this website since 1999. 

Respondent registered the <chapelhillsmall.com> domain name on July 2, 2001, nearly twenty years after Complainant first used the CHAPEL HILLS MALL service mark.  Respondent has never actively used the <chapelhillsmall.com> domain name in connection with a website. 

Respondent is located in Colorado Springs, Colorado where Complainant’s CHAPEL HILLS MALL service mark holds significant meaning.  Respondent was formerly affiliated with Bella Models, a modeling agency located in Colorado Springs.  In fact, Respondent once contacted the CHAPEL HILLS MALL on-site management team to inquire about a kiosk for Bella Models.  Respondent never received a kiosk for Bella Models and has no business connection with CHAPEL HILLS MALL. 

DISCUSSION

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.

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

Complainant has demonstrated its rights in the CHAPEL HILLS MALL service mark with proof of commercial use since 1982.  Furthermore, the strength of Complainant’s common law rights in the CHAPEL HILLS MALL services lies within the use of the mark in Colorado Springs, where Complainant’s mall and Respondent are located.  The Policy does not require that a complainant have a registered trademark, rather a complainant is required to demonstrate that it has “rights” to a mark that is confusingly similar or identical to the domain name in question.  In the present dispute, Complainant has demonstrated its rights in the CHAPEL HILLS MALL service mark.  See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”); see also Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the Complaint in the first place); see also Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the Complainant has common law rights in the mark FISHTECH which it has used since 1982).

Respondent’s <chapelhillsmall.com> domain name wholly incorporates Complainant’s CHAPEL HILLS MALL service mark with the inconsequential addition of the top-level domain “.com.”  Top-level domains are a required feature of every domain name so they have no bearing in a Policy ¶ 4(a)(i) “identical” analysis.  Therefore, Respondent’s <chapelhillsmall.com> domain name is identical to Complainant’s CHAPEL HILLS MALL service mark.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has allowed Complainant’s allegations to go uncontested and the Panel therefore accepts all allegations as true, unless clearly contradicted by the existing evidence.  In addition, the Panel will draw all reasonable inferences in Complainant’s favor.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Complainant has submitted a prima facie Complaint, in which it alleges that Respondent has no rights or legitimate interests in the <chapelhillsmall.com> domain name.  Respondent has failed to challenge that allegation and the Panel therefore presumes that Respondent has no such rights or legitimate interests.  The Panel draws that presumption because Complainant satisfied its burden and effectively shifted the burden on Respondent to articulate rights or legitimate interests in the subject domain name, which Respondent failed to fulfill.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Respondent has held the <chapelhillsmall.com> domain name registration for nearly a year and a half without connecting it to a website.  The Panel is aware that website development takes time and that individuals register domain names prior to the development process.  At present, Respondent has not come forward to explain the reason for holding the <chapelhillsmall.com> domain name without actively using it.  Complainant argues that the inactive use of the domain name fails to inure rights or legitimate interests in Respondent’s favor under Policy ¶¶ 4(c)(i) or (iii).  Respondent has not shown otherwise and the Panel finds the time period of one and a half years sufficient time to develop a website without an explanation to the contrary.  Therefore, Respondent has not used the subject domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and has not established a noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii).  See LFP, Inc. v. B & J Props., FA 109697 (Nat. Arb. Forum May 30, 2002) (recognizing that in certain instances excusable delays will inevitably arise, but noting that those delays must be quantifiable and limited; they cannot extend indefinitely); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in the domain name).

Respondent is identified as Scott Riddell on the WHOIS information page and without any evidence showing otherwise the Panel accepts this as Respondent’s identity.  There is no evidence on the record that demonstrates Respondent is commonly known by the <chapelhillsmall.com> domain name.  Thus, Respondent has no rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <chapelhillsmall.com> domain name and Policy ¶ 4(a)(ii) has thus been satisfied. 

Registration and Use in Bad Faith

While Complainant’s mark is not particularly well-known to a widespread audience, there is evidence that suggests Respondent was aware of Complainant’s interests in the CHAPEL HILLS MALL service mark prior to registering the <chapelhillsmall.com> domain name.  Respondent is located in Colorado Springs where Complainant’s CHAPEL HILLS MALL has operated for over twenty years.  Furthermore, there is evidence that Respondent had contact with the on-site management of the CHAPEL HILLS MALL in order to lease a kiosk for Bella Models, a modeling agency Respondent was formerly associated with.  Hence, Respondent was aware of Complainant’s interests in the CHAPEL HILLS MALL service mark from residing in the area where the mark has significant meaning and goodwill, and through failed business negotiations with the mall’s management.  Therefore, the Panel finds that Respondent registered the <chapelhillsmall.com> domain name in bad faith because of its knowledge of Complainant’s interests in the CHAPEL HILLS MALL service mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent’s passive holding of the <chapelhillsmall.com> domain name for a year and a half warrants a finding of bad faith use.  The lack of use of the <chapelhillsmall.com> domain name coupled with Respondent’s knowledge of Complainant’s interests in the CHAPEL HILLS MALL service mark permits a finding that Respondent’s interests in the domain name were to opportunistically trade off Complainant’s mark.  Furthermore, the CHAPEL HILLS MALL service mark is so closely connected to Complainant’s Colorado Springs mark that any use of the <chapelhillsmall.com> domain name by Respondent could not be done in good faith.  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); see also Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <chapelhillsmall.com> domain name be TRANSFERRED from Respondent to Complainant.

John J. Upchurch, Panelist

Dated:  February 5, 2003

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