DECISION

The Mills Limited Partnership v. John Kraus a/k/a MrInter.Net

Claim Number:  FA0408000306628

PARTIES

Complainant is The Mills Limited Partnership (“Complainant”), represented by Mitchell H. Stabbe, of Dow, Lohnes & Albertson, PLLC, 1200 New Hampshire Avenue NW Suite 800, Washington DC, 20036.  Respondent is John Kraus a/k/a MrInter.Net (“Respondent”), 1313 Maple Avenue, Torrance, CA 90503.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com>, registered with Enom, Inc.

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 Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 30, 2004; the Forum received a hard copy of the Complaint on August 2, 2004.

On August 2, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 August 5, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 25, 2004 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@californiamills.com, postmaster@delamofashionmills.com, postmaster@delamomall.com, postmaster@delamomills.com,  postmaster@foxhillmills.com, postmaster@puentehillmills.com, postmaster@southbaymills.com, postmaster@thetorrancemills.com and postmaster@torrancemills.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 September 2, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain names are confusingly similar to Complainant’s MILLS and DEL AMO marks.

2. Respondent does not have any rights or legitimate interests in the <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain names.

3. Respondent registered and used the <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain names in bad faith.

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

FINDINGS

Complainant, The Mills Limited Partnership, owns the family of MILLS marks associated with shopping centers.  Complainant and its affiliated entities have used the MILLS marks to identify and promote the family of MILLS shopping centers across the United States (Reg. No. 2,218,274, issued January 19, 1999, Reg. No. 2,308,207, issued January 18, 2000, Reg. No. 2,489,249, issued September 11, 2001, Reg. No. 2,557,121, issued April 2, 2002, Reg. No. 2,592,098, registered July 2, 2002, Reg. No. 2,727,538, issued June 17, 2003, Reg. No. 2,735,468, issued July 8, 2003, Reg. No. 2,407,573, issued November 28, 2000, Reg. No. 2,413,371, issued December 19, 2000, Reg. No. 2,553,703, issued March 26, 2002, Reg. No. 2,600,964, issued July 30, 2002, Reg. No. 2,650,550, issued November 12, 2002, Reg. No. 2,650,662, issued November 12, 2002, Reg. No. 2,660,769, issued December 10, 2002, Reg. No. 2,723,364, issued December 12, 2003, Reg. No. 2,723,364, issued June 10, 2003, Reg. No. 1,641,523, issued April 16, 1991, Reg. No. 2,486,429. issued September 11, 2001, Reg. No. 2,489,725, issued September 18, 2001, Reg. No. 1,755,693, issued March 2, 1993, Reg. No. 1,757,200, issued March 9, 1993, Reg. No. 1,750,400, issued February 2, 1993, Reg. No. 1,750,401, issued February 2, 1993, Reg. No. 2,316,377, issued February 8, 2000, Reg. No. 2,369,055, issued July 18, 2000, Reg. No. 2,384,020, issued September 5, 2000, Reg. No. 2,135,350, issued February 10, 1998, Reg. No. 2,138,325, issued February 24, 1998, Reg. No. 2,577,427, issued June 11, 2002, Reg. No. 2,624,283, issued September 24, 2002, Reg. No. 2,638,845, issued October 22, 2002, Reg. No. 2,638,846, issued October 22, 2002, Reg. No. 2,729,519, issued June 24, 2003, Reg. No. 1,442,419, issued June 9, 1987).  Complainant’s marketing strategy for its MILLS shopping centers has been to brand the particular shopping center with the name of the city or region in which the shopping center is located, followed by the term MILLS.

In June 2003, Complainant acquired rights to the DEL AMO mark upon sale of the DEL AMO FASHION CENTER from the Torrance Company, who began operating under the DEL AMO marks since as early as the 1970s.  In the course of its business, the Torrance Company obtained federal service mark registrations for the DEL AMO FASHION SQUARE mark (Reg. No. 2,378,737, issued August 22, 2002) and the DEL AMO FASHION CENTER mark (Reg. No. 2,372,227, issued August 1, 2000).  On October 29, 2003, Complainant recorded the assignments of the DEL AMO marks from the Torrance Company with the United States Patent and Trademark Office. 

Prior to Complainant’s transfer and purchase of the DEL AMO marks from the Torrance Company, in August 1998, the Torrance Company learned that Respondent had registered a number of domain names incorporating the DEL AMO marks.  The Torrance Company contacted Respondent and asserted its trademark rights.  After several exchanges in correspondence, the two parties entered into an agreement where Respondent agreed to transfer the domain names to the Torrance Company in exchange for a cash payment of $3,000.00.  Although the assignment agreement permitted Respondent to maintain the domain name registration for the <delamomall.com> domain name, Respondent agreed, among other things, that he would refrain from adopting, or registering a domain name that is similar to any of the DEL AMO marks, translations, transliterations or any variations thereof. 

After Complainant’s acquisition of rights to the DEL AMO mark, Respondent registered the <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain names.  Respondent then used the disputed domain names to resolve to a website that contained the text “DelAmoMall.com DelAmoFashionCenter.com is NOW DelAmoMills.com DelAmoFashionMills.com.”  These domain names have also resolved to a website stating “This CyberMall is coming soon to you” and websites that simply contain a web counter.  Additionally, Respondent has offered to sell the domain name registrations to Complainant, indicating that at least two of the domain names are worth more than $80,000.00 each.    

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 established with extrinsic proof in this proceeding that it has rights in the MILLS and DEL AMO marks through registration with the United States Patent and Trademark Office and by continuous use of its marks in commerce for at least the last 30 years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption.

The domain names registered by Respondent are confusingly similar to Complainant’s MILLS and DEL AMO marks because the domain names incorporate Complainant’s marks and deviate only by adding generic, descriptive or geographic terms.  Moreover, Complainant is the owner of numerous federal registrations for marks that incorporate a geographic term in connection with its MILLS mark.  The domain names registered by Respondent all follow the same pattern of using terms that are geographically descriptive of regions or cities in the State of California, followed by Complainant’s MILLS mark.  The mere inclusion of generic, descriptive or geographic terms does not render Respondent’s domain names distinctive from Complainant’s MILLS marks pursuant to Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) finding that combining the generic word “shop” with Complainant’s registered mark “llbean” does not circumvent Complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term; see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights. 

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain names that contain Complainant’s marks.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain names.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also 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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name.

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) stating that “[i]n the absence of a response, it is appropriate to accept as true all allegations of the Complaint”; 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.

Additionally, Respondent is wholly appropriating Complainant’s marks and is not using the disputed domain names in connection with a bona fide offering of goods or services, as the domain names resolve to a page containing the confusing statement: “DelAmoMall.com DelAmoFashionCenter.com is NOW DelAmoMills.com DelAmoFashionMills.com.”  Respondent also uses the domain names to resolve to websites containing a web counter, which simultaneously opens a window containing a screen saver.  The Panel finds that Respondent’s registration of a series of domain names confusingly similar to Complainant’s marks for these purposes does not demonstrate a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain names pursuant to Policy ¶ 4(c)(iii).  See Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant; see also eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use".

Respondent offered no evidence and no proof in the record suggests that Respondent is commonly known by the <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain names.  Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to 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.

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

Registration and Use in Bad Faith

Respondent’s registration of domain names incorporating Complainant’s registered marks and deviating only with the addition of generic, descriptive or geographic terms suggests that Respondent knew of Complainant’s rights in the MILLS and DEL AMO marks.  Therefore, the Panel finds that Respondent likely chose the disputed domain names based on the distinctive and well-known qualities of Complainant’s marks.  See 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; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that the ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith; see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”.

Furthermore, Respondent has offered to sell the disputed domain name registrations to Complainant for an amount in excess of Respondent’s out-of-pocket expenses directly related to the domain names, which evidences Respondent’s bad faith registration pursuant to Policy ¶ 4(b)(i).  See World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs; see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) finding bad faith where Respondent offered domain names for sale; see also Grundfos A/S v. Lokale, D2000-1347 (WIPO Nov. 27, 2000) finding that a failure to use the domain name in any context other than to offer it for sale to Complainant amounts to a use of the domain name in bad faith.

Moreover, Respondent intentionally registered domain names containing Complainant’s well-known MILLS and DEL AMO marks in an attempt to attract users to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website, as evidenced by Respondent’s website stating “This CyberMall is coming soon to you.”  This message, coupled with the existence of a web counter, evidences Respondent’s intent to use the domain names to either establish a commercial website providing links to the websites for members with stores in Complainant’s fashion center, or to document the websites popularity through the number of clicks when it attempts to sell the domain name registration to a third party.  In the absence of any evidence from Respondent to the contrary, the Panel finds these activities amount to bad faith registration and use under Policy ¶ 4(b)(iv).  See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) stating that “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also 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.

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 <californiamills.com>, <delamofashionmills.com>, <delamomall.com>, <delamomills.com>, <foxhillmills.com>, <puentehillmills.com>, <southbaymills.com>, <thetorrancemills.com> and <torrancemills.com> domain name, be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  September 13, 2004

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