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General Growth Properties, Inc. v. Mark Buzzell [2005] GENDND 1935 (16 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Growth Properties, Inc. v. Mark Buzzell

Case No. D2005-1013

1. The Parties

The Complainant is General Growth Properties, Inc., Chicago, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondent is Mr. Mark Buzzell, Saco, Maine, United States of America.

2. The Domain Name and Registrar

The disputed domain name <themainemall.com> is registered with Domain-It!, Inc. dba Domain-It!.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2005. On September 26, 2005, the Center transmitted by email to Domain-It!, Inc. dba Domain-It! a request for registrar verification in connection with the domain name at issue. On October 3, 2005, Domain-It!, Inc. dba Domain-It! transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant 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 October 10, 2005. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 30, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent of his default on November 1, 2005.

The Center appointed Lynda M. Braun as the sole panelist in this matter on November 7, 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

Complainant is a real estate investment trust company incorporated under the laws of Delaware with its principal place of business in Chicago, Illinois. Complainant develops, owns, leases space in, operates and/or manages shopping malls across the United States. Complainant owns a shopping mall in South Portland, Maine which has operated under the THE MAINE MALL name and mark for over 30 years. Complainant has used the THE MAINE MALL mark in connection with the marketing and promotion of real estate leasing and shopping mall services.

The Complainant’s predecessor has also registered various domain names incorporating the subject mark including <mainemall.com> and < shopthemainemall.com>. These domain names were registered on March 10, 1996, and March 24, 1999, respectively.

The Respondent resides in Saco, Maine, twelve miles from Complainant’s mall property. The Respondent registered the domain name < themainemall.com> on March 24, 2000. The Respondent does not appear to have made any active use of the <themainemall.com> domain name.

The Complainant has submitted as part of its Complaint evidence of its correspondence with the Respondent relating to the registration of the Domain Name.

On July 28, 2004, counsel for Complainant wrote to the Respondent by federal express letter and email notifying him that his registration of the < themainemall.com> domain name infringed Complainant’s service mark and trade name rights and demanded that the Respondent immediately transfer the domain name registration to Complainant.

After receiving no response, counsel for Complainant sent another communication to Respondent via e-mail on August 23, 2004, requesting Respondent’s response to its claims. Complainant’s email was returned as undeliverable. On February 8, 2005, Complainant’s counsel again attempted to contact Respondent, this time by calling the telephone number listed in the registration for < themainemall.com>. Counsel spoke with a man who identified himself as Respondent’s father, who stated that Respondent did not live at the listed number. The man also stated that Respondent received Complainant’s correspondence, had no intention of responding and “didn’t care” if Complainant pursued legal action against him.

5. Parties’ Contentions

A. Complainant

The Complainant claims that the subject mark is widely known and has become distinctive as a result of Complainant and its predecessor’s long and extensive use and promotion of the mark in connection with real estate leasing and shopping mall services.

Complainant argues that the addition of “.com” to the domain name at issue is irrelevant and thus the < themainemall.com> domain name is identical to the THE MAINE MALL mark.

The Complainant contends that the Respondent has no rights or legitimate interests in the <themainemall.com> domain name because he has not used it in connection with the bona fide offering of any goods or services, nor is he referred to or commonly known by the < themainemall.com> domain name. Complainant further contends that Respondent is not making a legitimate, noncommercial or fair use of the domain name because there has never been an active website associated with < themainemall.com>; the domain name simply resolves to the registrar’s “placeholder” website.

Finally, the Complainant argues that the Respondent registered and/or is using the domain name in bad faith on account of the following:

- Respondent was located in close proximity to Complainant’s mall property when he registered <themainemall.com>.

- By maintaining a domain name registration identical to the subject mark, Respondent has prevented Complainant from registering THE MAINE MALL mark as a “.com” domain name.

- Respondent has failed to make any legitimate use of the <themainemall.com> name as evidenced by his passive holding of the domain name.

- Respondent has failed to respond to any of Complainant’s counsel’s communications regarding the domain name.

- Respondent has failed to maintain accurate contact information for the registration.

B. Respondent

The Respondent has failed to respond to the Complaint or to any other communications from Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

First, the Complainant must prove that the domain name is identical or confusingly similar to the Complainant’s service mark. (Policy, paragraph 4(a)(i)). Although the service mark at issue is unregistered, Complainant has proffered various exhibits including newspaper articles and other promotional materials demonstrating Complainant’s long and continuous use of the subject mark in connection with its shopping mall. Thus, Complainant has established rights in THE MAINE MALL service mark. Moreover, the paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the Complainant has rights – it is not required that the trademark or service mark be registered. CavinKare Private Limited v. LaPorte Holdings, Inc. and Horoshiy, Inc., WIPO Case No. D2004-1072 (February 14, 2005).

Turning to the issue of similarity of the domain name and service mark, this Panel finds that the <themainemall.com> name is confusingly similar to the THE MAINE MALL service mark. The only difference between the disputed domain name and Complainant’s service mark lies in the addition of “.com”. It is generally accepted that the addition of “.com” in no way distinguishes a domain name which otherwise wholly incorporates another’s trademark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493 (July 12, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name “Pomellato” is not relevant); Oxygen Media, LLC v. Primary Source, WIPO Case No. D2000-0362 (June 19, 2000) (finding <oxygen.com> identical to Complainant’s mark because the addition of .com after the name “OXYGEN” was not a distinguishing difference); see also Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409 (December 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name. . . ”).

This Panel therefore concludes that the disputed domain name < themainemall.com> is confusingly similar to Complainant’s THE MAINE MALL service mark.

B. Rights or Legitimate Interests

The Complainant is also required to prove that the Respondent has no rights or legitimate interest in respect of the domain name. (Policy, paragraph 4(a)(ii)).

Once a complainant establishes that a respondent’s domain name is identical or confusingly similar to complainant’s mark, and that complainant makes a prima facie case of lack of rights or legitimate interests, the burden shifts to respondent to establish some right or legitimate interest in respect of the domain name. Sony Kabushiki Kaisha v. Sony.net, WIPO Case No. D2000-1074 (November 28, 2000). In light of Respondent’s default, and since the Complainant has made a prima facie case, this Panel presumes that Respondent has no such rights or legitimate interest.

Respondent’s default notwithstanding, there is no evidence in the record that Respondent is in any way associated with Complainant, that Respondent is now or was ever known as “the maine mall”, or that Respondent has other authority or permission to use Complainant’s service mark. Furthermore, by not submitting a response, Respondent has failed to invoke any other circumstance that might demonstrate, pursuant to paragraph 4(c) of the Policy, that he holds some right or legitimate interest in the disputed domain name. Ahead Software AG v. Leduc Jean, WIPO Case No. D2004-0323 (June 29, 2004); see also Nintendo of America, Inc. v. Tasc, Inc. and Ken Lewis, WIPO Case No. D2000-1563 (January 11, 2001) (finding Respondent’s default alone sufficient to conclude that it had no rights or legitimate interest in the domain name).

Moreover, Respondent’s close proximity to Complainant’s well known mall property demonstrates that Respondent knew, at the time Respondent registered the disputed domain name, that THE MAINE MALL was a service mark owned by a third party. Such awareness on the part of a respondent limits the probability that the Respondent has some right or legitimate interest in respect of the domain name. Pfizer Inc. v. Websites, WIPO Case No. D2004-0730 (October 17, 2004). See also Boezio 31 S.r.l. v. Siga S.r.l., WIPO Case No. D2001-0267 (April 11, 2001) (even where complainant’s mark is not internationally well-known, when complainant and respondent are located in the same geographical area, it may be presumed that respondent knew of the mark).

Finally, Respondent has held the <themainemall.com> domain name registration for more than four years as only a placeholder website. Respondent’s failure to connect the domain name to an active website is further evidence that Respondent is not making a legitimate, noncommercial or fair use of the domain name as required under paragraph 4(a)(ii) of the Policy. VeriSign, Inc. v. Michael Brook, WIPO Case No. D2000-1139 (March 7, 2001) (holding domain name as a mere placeholder demonstrates that the holder has no right or legitimate interest in respect of the domain name); American Home Prod. Corp. v. Ben Malgioglio, WIPO Case No. D2000-1602 (February 19, 2001), (finding no rights or legitimate interest in the domain name at issue where respondent merely passively held the domain name); Ziegenfelder Co. v. VMH Enterprises, Inc., WIPO Case No. D2000-0039 (March 14, 2000) (finding that failure to provide a product or service on domain site demonstrates that respondents have not established any rights or legitimate interests in the domain name).

As such, this Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name. Accordingly, the Complainant has proven paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Complainant must additionally establish that the disputed domain name has been registered and is being used in bad faith (Policy, paragraph 4(a)(iii)). Based on the record presented, this Panelist concludes that Complainant has proffered sufficient evidence of bad faith.

As an initial matter, the Panelist finds that Respondent has furnished incomplete contact information to its Registrar, which constitutes a breach of the registration agreement,¹ may also be taken as an indication of bad faith. See, e.g., Women in Military Service for America Memorial Foundation, Inc. v. Russian Web Marketing, WIPO Case No. D2001-0610 (July 11, 2001); Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515 (September 13, 2000)). “An obligation exists on each domain name registrant, under its registration agreement, to not only provide its registrar with current, complete and accurate contact information but also to update that information to reflect any subsequent changes in order that the information, accessible through the WhoIs database, is always current, complete and accurate.” Park Place Entertainment Corporation v. Bowno, WIPO Case No. D2001-1410 (January 29, 2001) (holding that panels view erroneous contact information as a deliberate, continuing attempt calculated to conceal that registrant’s identity and location, and thereby frustrate service of process and obstruct the application of the Uniform Policy).

Second, Respondent’s knowledge of the Complainant’s mark when Respondent registered the Domain Name, as the record evidence demonstrates, also supports a finding of bad faith. Accor v. Everlasting Friendship Trust, WIPO Case No. D2005-0288 (May 23, 2005). The fact that Complainant’s service mark is well known in the South Portland area and that Respondent resided within twelve miles of Complainant’s mall property when he registered the domain name is evidence that he registered the domain name in bad faith. See Jupiters Ltd. v. Aaron Hall, WIPO Case No. D2000-0574 (August 3, 2000) (where complainant’s name and mark were well known and respondent’s mailing address was in the same vicinity as complainant’s business, it was “inevitable” that respondent registered the domain name with full knowledge of complainant’s rights, and that such registration was in bad faith). Indeed, the map in Exhibit H of Complainant’s submission indicates that there is a road named “Maine Mall Road” adjacent to the mall property. This further supports charging Respondent with knowledge of Complainant’s service mark and is another indication of bad faith.

Finally, because the Respondent has failed to make any active use of the domain name at issue, it would be appropriate, in determining whether Respondent acted in bad faith, to also look to the panel’s analysis of this element in Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000). There the panel acknowledged that registration of a domain name together with inaction can constitute bad faith use in certain circumstances. The particular circumstances that led the panel to find bad faith use in Telstra are also present in this case. They are:

(i) Complainant’s exhibits clearly show that that the Complainant’s service mark has a strong reputation, has been in use for many years and is widely known throughout the South Portland area;

(ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the domain name;

(iii) Respondent has taken active steps to conceal its true identity by providing erroneous contact information; and

(iv) Respondent has actively provided, and failed to correct, false contact details, in breach of its registration agreement.

Given the above facts and circumstances, this Panel finds that Respondent has registered and is using the domain name at issue in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panelist orders that the domain name <themainemall.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist

Date: November 16, 2005

¹ Paragraph 5 of the DOMAINIT.COM registration agreement provides in relevant part: “Registrant agrees to provide to Domain-It accurate and reliable information. Registrant agrees to promptly correct and update such information during the term of the domain name registration, including: the full name, postal address, e-mail address, voice telephone number, and fax number . . . .”