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The Mills Limited Partnership v. S.L., Crea3 [2005] GENDND 1786 (14 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Mills Limited Partnership v. S.L., Crea3

Case No. D2005-0887

1. The Parties

The Complainant is The Mills Limited Partnership, Arlington, Virginia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.

The Respondent is S.L., Crea3, Madrid, Spain.

2. The Domain Names and Registrars

The Disputed Domain Names <madridxanadu.net> and <madridxanadu.org> are registered with Network Solutions, LLC. The disputed domain name <xanadumadrid.com> is registered with Tucows Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2005. On August 19, 2005, the Center transmitted by email to Network Solutions, LLC and Tucows Inc a request for a registrar verification in connection with the domain names at issue. On August 19, 2005, Tucows Inc transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <xanadumadrid.com> and providing the contact details for the administrative, billing and technical contact. On August 23, 2005, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of the domain names <madridxanadu.net> and <madridxanadu.org> and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 16, 2005. The Respondent replied on that date requesting the Center’s notification to be resent in Spanish. The Center replied on September 19, 2005, stating that under paragraph 11 of the ICANN UDRP Rules, the language of the Administrative Proceeding shall be the language of the Registration agreement, which, according to information received from the Registrars, is English. Accordingly, the Center indicated that it would proceed in English unless the parties agreed to proceed in another language. The Respondent did not reply to this email.

The Center appointed Alistair Payne as the sole panelist in this matter on September 29, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a commercial property development and property management company, which owns and operates a number of shopping centers throughout the United States, Canada and Europe. In particular, it operates the MADRID XANADU Shopping Center located in Madrid, Spain. The Complainant opened this shopping center on May 16, 2003.

The Complainant is the owner of two United States federal service mark registrations for the MADRID XANADU mark: U.S. Reg. No. 2,861,016 registered on July 6, 2004 and Reg. No.2,861,017 registered on July 6, 2004. In addition, the Complainant is the owner of Community Trade Marks for the MADRID XANADU mark: No. 002414621 registered on January 9, 2003 and No. 00287597 registered on 13 June, 2004.

The Complainant has also registered the domain name <madridxanadu.com>.

The Respondent registered the Disputed Domain Names on the following dates:-

- <madridxanadu.net> on May 22, 2003;

- <madridxanadu.org> on May 22, 2003; and

- <xanadumadrid.com> on June 21, 2003.

5. Parties’ Contentions

A. Complainant

(i.) Identical or Confusingly Similar

The Complainant contends that it has trade mark and service mark rights in the MADRID XANADU mark. It contends that the Disputed Domain Names <madridxanadu.net> and <madridxanadu.org> are identical to its MADRID XANADU mark.

It also contends that the disputed domain name <xanadumadrid.com> is confusingly similar to its MADRID XANADU mark because the domain name merely switches the order of the two components of the MADRID XANADU mark.

(ii) Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons:-

- The Complainant has not agreed or consented to the use of its mark by the Respondent.

- The Respondent has not made use of, or has indicated that it intends to use, the disputed domain names in connection with the bona fide offerings of goods or services.

- Although the Disputed Domain Names now resolve to websites containing non-commercial information about bicycle maintenance, this does not establish rights or legitimate interests in the Disputed Domain Names, nor does it not relieve the Respondent of its prior illegitimate use of the Disputed Domain Names.

- The Complainant also contends that the Respondent only decided to change the content of its websites to add a veneer of legitimacy to its use of the domain names. The Complainant goes on to argue that the new content appearing on the website is identical to content appearing on the “www.amigosdelciclismo.com” website. The Complainant contends that this indicates that the Respondent has merely set up a “sham” website to show legitimate use.

- Finally, the Complainant contends that the Respondent cannot establish rights in the domain names because it is not commonly known by any of the domain names and has not acquired trade mark or service rights in the Disputed Domain Names.

(iii) Registered and Used in Bad Faith

The Complainant contends that the Respondent registered the Disputed Domain Names primarily for the purpose of either selling or leasing the Disputed Domain Names to the owner of the MADRID XANADU marks. In particular, the Complainant contends that the timing of the Respondent’s registration of the Disputed Domain Names is significant, coming soon after the widely publicized opening of its MADRID XANADU Shopping and Entertainment Center. It contends that the Respondent was familiar with the Complainant’s MADRID XANADU mark prior to registering the Disputed Domain Names.

The Complainant also contends that the MADRID XANADU mark is well known in Madrid, and the Respondent had prior knowledge of the mark. Consequently, the Complainant contends that the Respondent’s registration of the Disputed Domain Names in light of this prior knowledge is evidence of the Respondent’s bad faith.

The Complainant contends that the Respondent directly solicited offers to purchase the Disputed Domain Names. It also contends that the Respondent’s reconfiguration of its websites once it received the Complainant’s demand letter is further evidence of the Respondent’s bad faith.

Finally, the Complainant contends that the Respondent’s registration of a number of domain names that infringe or are confusingly similar to the Complainant’s mark reflect the pattern of conduct indicative of bad faith under paragraph 4(b)(ii) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this Administrative Proceeding and the time requested remedy (in this case transfer of the Disputed Domain Names) the Complainant must prove that, in respect of each of the Disputed Domain Names, each of the following three elements are present:-

(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element of the Policy requires the Complainant to prove that (a) it has rights in the trade mark or service mark; and (b) the Disputed Domain Name(s) is (are) identical to or confusingly similar to such a trade mark or service mark.

The Complainant has rights in the MADRID XANADU mark, specifically it is the Registrant of US federal service marks and Community Trade Marks in the MADRID XANADU mark. The disputed domain names <madridxanadu.net> and <madridxanadu.org> are identical to the Complainant’s mark. The specific top level of the domain name is irrelevant in determining whether a domain name is identical or confusingly similar to the Complainant’s trade mark or service mark (Rollerblade Inc., v. McCrady, WIPO Case No. D2000-0429).

The disputed domain name <xanadumadrid.com> is not identical to the Complainant’s mark. However, merely reversing the order of the Complainant’s mark can hardly be considered sufficient to distinguish the disputed domain name from the Complainant’s mark and, consequently, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.

The Panel finds that the Complainant has established this element of the Policy.

B. Rights or Legitimate Interests

In accordance with paragraph 4(c), a Respondent may demonstrate its rights or legitimate interests in its disputed domain name by proving, on a non-exhaustive basis, any of the following circumstances:-

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trade mark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Respondent has not replied to the Complainant’s contentions and on the evidence before the Panel, there is nothing to suggest that any of the circumstances set out above apply in this case.

The Complainant has provided evidence at Annexure 4 to its Complaint that the Disputed Domain Names all initially resolved to websites where visitors were offered the opportunity to purchase the domain name corresponding to the website address. Offering a domain name for sale at the site whose address is the domain name is neither legitimate non-commercial use nor fair use of the domain name (see General Motors Corporation v. Vette Owners, WIPO Case No. D2000-0595).

The Panel accepts the Complainant’s contention that in the circumstances the fact that the websites now contain information about bicycle maintenance does not establish rights or legitimate interests in the Disputed Domain Names. The Respondent has provided no evidence to suggest that it has a legitimate non-commercial interest in promoting bicycle maintenance. On the contrary the content of the web pages is practically identical to the content of a web site “www.amigosdelciclismo.com” that appears to be unrelated to the Respondent and in which it has no interest. Further, the Respondent changed the content of the websites after receiving a “cease and desist” letter from the Complainant. Notwithstanding that the Respondent appears to have no legitimate non-commercial interest in promoting bicycle maintenance, this coincidental changing of the website content suggests that the Respondent’s motivation in so doing was to give the impression of fair use. The Panel, therefore, accepts the Complainant’s contention that the Respondent has no rights or legitimate interests in the Disputed Domain Names.

The Panel therefore finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances, without limitation, any of which if found by the Panel to be present shall be evidence of the registration and use of the domain name in bad faith.

The Complainant registered a Community Trade Mark for the MADRID XANADU Mark prior to the registration by the Respondent of the Disputed Domain Names. Further, while the Complainant has not provided any specific evidence regarding the publicity surrounding the opening of the MADRID XANADU complex, the Panel accepts that the opening of such a large leisure and shopping complex would inevitably have attracted a significant amount of publicity. Given this publicity and the fact that the Respondent is based in Madrid, it is more than likely that the Respondent would have been well aware of the Complainant’s shopping centre and trade marks. In this context, the Panel considers the timing of the Respondent’s registration of the Disputed Domain Names (all three registrations occurred just after the opening of the MADRID XANADU complex) as pointing to registration in bad faith.

More particularly, the Complainant has, at Annexure 4 to its Complaint, provided evidence that the Respondent was soliciting offers from visitors to the websites to purchase the Disputed Domain Names. The only content on the websites was a form which prospective purchasers of the Disputed Domain Names were invited to fill in. In the Panel’s view, this suggests that the Respondent acquired the Disputed Domain Names primarily for the purpose of selling the domain name registration to third parties. In particular, the timing of the domain name registrations suggests that the Respondent’s intention in registering the Disputed Domain Names was to sell the domain name registrations to the Complainant at an inflated price in terms of paragraph 4(b)(i) of the Policy. The Panel, therefore, finds that the Respondent, in addition to registering the Domain Names in bad faith, also used the Domain Names in bad faith.

The timing of the domain name registrations and the website solicitation of offers for the Disputed Domain Names suggests that the Respondent’s motivation in registering the Disputed Domain Names was also to prevent the Complainant from reflecting its mark in a corresponding domain name. In addition, the Respondent registered a number of domain names corresponding to the Complainant’s mark. This is sufficient to constitute a pattern of conduct and thus to constitute bad faith within the meaning of paragraph 4(b)(ii) of the Policy (see General Electric Company v. Normina Anstalt a/k/a Igor Fyodorov, WIPO Case No. D2000-0452).

For these reasons, the Panel finds that the Respondent registered and used the Disputed Domain Names in bad faith and the Complainant also succeeds under this element of the Policy.

7. Decision

For all foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <madridxanadu.net>, <madridxanadu.org> and <xanadumadrid.com> be transferred to the Complainant.

Alistair Payne
Sole Panelist

Dated: October 14, 2005