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General Growth Properties, Inc. v. Baker Ballantine [2005] GENDND 1949 (14 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

General Growth Properties, Inc. v. Baker Ballantine

Case No. D2005-0919

1. The Parties

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

The Respondent is Baker Ballantine, Sydney, Australia.

2. The Domain Names and Registrar

The disputed domain names <glenbrooksquare.com>, <kendalltowncenter.com>, <regencysquare.com> and <streetsatsouthpoint.com> (the “Domain Names”) are registered with Dotster, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 27, 2005. On August 29, 2005, the Center transmitted by email to Dotster, Inc. a request for registrar verification in connection with the Domain Names. On September 6, 2005, Dotster, Inc. 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 26, 2005. The Center verified that the Complaint together with the amendment to 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 September 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2005.

The Center appointed Ian Lowe as the Sole Panelist in this matter on October 31, 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 (“General Growth”) is a real estate investment trust concerned with the development, operation and management of over 200 regional shopping malls in 44 states across the United States of America. These include Glenbrook Square shopping mall in Fort Wayne, Indiana that opened to shoppers in 1966; Regency Square Mall in Jacksonville, Florida that opened in 1967; and The Streets at South Point in Durham, North Carolina that opened in 2002. General Growth is currently developing Kendall Town Center in Miami, Florida.

The Domain Names were registered in May and June 2002. They all resolve to domain parking web pages provided by Sedo.

5. Parties’ Contentions

A. Complainant

General Growth and its predecessor have used and promoted the service marks GLENBROOK SQUARE and REGENCY SQUARE MALL for over 38 years in connection with the provision of real estate leasing and shopping mall services at their well-known shopping malls. Both include retail stores of many of the United States’ best-known retailers such as Sears, Marshall Field’s, JC Penney, Banana Republic and Victoria’s Secret. General Growth and its predecessor have used and promoted the service mark THE STREETS AT SOUTHPOINT in connection with real estate leasing and shopping mall services since development of this super-regional shopping centre was first started in 1999. It also features a number of well-known retailers.

Kendall Town Center is not yet open to shoppers but General Growth and its predecessor have already commenced use of the service mark KENDALL TOWN CENTER in connection with the leasing of shopping mall space and facilities and have promoted the shopping mall during its development such that it has already become well-known to retailers and shoppers in the Miami area and garnered significant media attention.

General Growth or its predecessor have registered a number of domain names associated with the shopping malls to promote the services provided in connection with the service marks including <thestreetsatsouthpoint.com>, <regencysquaremall.com>, <glenbrooksquaremall.com> and <westkendalltowncenter.com>.

As a result of its use and promotion of the service marks in connection with the leasing of shopping mall space and facilities and/or the provision of shopping mall services, General Growth owns valuable goodwill symbolized by its service marks. Such use has established sufficient unregistered or common law rights in its service marks to support a domain name complaint under the Policy. In addition, a General Growth subsidiary has an Indiana state registration for the service mark GLENBROOK SQUARE (registration No. 20040427).

The Respondent registered the Domain Names over 35 years after the REGENCY SQUARE MALL and GLENBROOK SQUARE service marks were first used by General Growth and its predecessors. General Growth became aware of the registrations in June 2004 and believes that they were registered in order to prevent General Growth from registering the service marks as domain names and to trade upon the significant goodwill associated with the service marks. At no time have these domain names resolved to an active website.

A letter to the Respondent at the address given in the registration records demanding the transfer of the <regencysquare.com> and <glenbrooksquare.com> domain names was returned by Federal Express with the explanation that the address did not exist. Attempts to contact the Respondent by telephone were not successful because the telephone number listed in the registration details (+61 02 000 0000) is not valid.

A Reverse WhoIs search against the Respondent reveals that the Respondent has not only registered the Domain Names but also others associated with the shopping malls of competitors of General Growth.

Except for the irrelevant addition of the “.com” suffix, the <glenbrooksquare.com> and <kendalltowncenter.com> domain names are identical to General Growth’s GLENBROOK SQUARE and KENDALL TOWN CENTER service marks. Save for the deletion of the descriptive terms “mall” and “the”, the domain names <regencysquare.com> and <streetsatsouthpoint.com> are identical to the REGENCY SQUARE MALL and THE STREETS AT SOUTHPOINT service marks.

The Respondent cannot establish a legitimate right to the Domain Names. It had no legal relationship with General Growth or its predecessors and General Growth has not consented to the use of the Domain Names. The Respondent is not commonly known by or referred to as the Domain Names. The Respondent has not used any of the Domain Names in connection with the bona fide offering of any goods or services or made any legitimate non-commercial or fair use of the Domain Names.

By registering and maintaining domain name registrations that are identical and/or confusingly similar to General Growth’s service marks, the Respondent has prevented General Growth from registering those service marks as “.com” domain names. The Domain Names and a fifth domain name registered by the Respondent, <shopsatlacantera.com>, are all identical or confusingly similar to General Growth’s well-known mall names. THE SHOPS AT LA CANTERA is used as a service mark by General Growth for its new development at San Antonio, Texas. The Respondent cannot possibly have registered the five domain names innocently or coincidentally but must have registered them in bad faith and with knowledge of General Growth’s prior rights in its service marks.

The Respondent has failed to make any legitimate use of the Domain Names and its passive holding of them constitutes evidence of bad faith.

Finally, the Respondent has provided false information in its registration of the Domain Names in that its address, telephone number and fax number are all false. This is a breach of Dotster’s registration agreement and constitutes further evidence of bad faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:

(i) the Domain Names are identical or confusingly similar to trademarks or service marks in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interest in respect of the Domain Names; and

(iii) the Domain Names have been registered in bad faith and are being used in bad faith.

A. Identical or Confusingly Similar

General Growth has adduced evidence of its very long-standing use of the GLENBROOK SQUARE and REGENCY SQUARE MALL service marks and its more recent use of the marks THE STREETS AT SOUTHPOINT and KENDALL TOWN CENTER.

It is well established that unregistered trademark rights may be asserted to justify a complaint under the Policy. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions (the “WIPO Overview”) indicates at paragraph 1.6 that in order to assert such rights successfully the complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services.

The Panel has no hesitation in finding that in relation to the GLENBROOK SQUARE and REGENCY SQUARE MALL service marks, used by General Growth or its predecessor for over 35 years, this test has been satisfied. The shopping mall known as The Streets at Southpoint has only been open to the public since 2002 but the service mark THE STREETS AT SOUTHPOINT has been used since at least as early as the groundbreaking on the property in 1999 and General Growth has produced documentation evidencing the promotion of the shopping mall under that name since that date.

General Growth is currently developing Kendall Town Center and it is not due to open to shoppers until 2007. Nevertheless, the evidence of General Growth is that it has already commenced promotion of the mall during its development and as a result of pre-opening promotional activities using the service mark KENDALL TOWN CENTER there has been considerable media attention with the result that the development and the name have become well-known to retailers and shoppers in the Miami area.

As the WIPO Overview also indicates at paragraph 6, the fact that the secondary meaning of a name (as distinctive of the complainant or its goods or services) may only exist in a small geographic area does not limit the Complainant’s rights.

Accordingly, the Panel finds that General Growth does have rights for the purposes of the Policy in the names GLENBROOK SQUARE, REGENCY SQUARE MALL, THE STREETS AT SOUTHPOINT and KENDALL TOWN CENTER.

Each of the Domain Names is identical to one of these service marks, save only for the “.com” suffix (which is to be ignored for the purposes of the comparison) or the omission of the word “mall” or “the”. The Panel finds that these generic words do not add any distinctive quality to the remainder of the service marks in question and that in the circumstances each of the Domain Names is identical or confusingly similar to a service mark in which General Growth has rights.

B. Rights or Legitimate Interests

The Respondent has not replied to the Complainant’s contentions and has not therefore displaced the assertion on the part of the Complainant that the Respondent does not and cannot possibly have any rights or legitimate interests in any of the Domain Names. The Panel accepts the assertion on the part of the Complainant that it cannot be a coincidence that the Respondent has registered five domain names identical to or confusingly similar to service marks of the Complainant, all used in relation to shopping malls operated or developed by General Growth. The clear inference is that the Respondent must have had General Growth in mind when registering the Domain Names.

The Panel finds that the Respondent has no rights or legitimate interests in any of the Domain Names.

C. Registered and Used in Bad Faith

The Respondent’s use of the Domain Names is largely passive although at the date of this decision all of them resolved to a domain parking web page operated by Sedo, each of which created a portal with sponsored links to commercial websites. The Panel infers that the Respondent will have derived some financial benefit from Internet traffic following such sponsored links having been attracted to these web pages by the use of the Domain Names.

Paragraph 3.2 of the WIPO Overview reflects the consensus view that passive use of a domain name does not prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. It cites examples of circumstances that can indicate bad faith as including: the complainant having a well-known trademark; no response to the complaint; concealment of identity; and the impossibility of conceiving a good faith use of the domain name.

In this case, at least three of the four service marks on which General Growth bases its complaint are well-known; there has been no response to the Complaint; and the Respondent has apparently given a false physical address and invalid telephone and fax numbers in its registration details. It is impossible to conceive a legitimate or good faith use of the Domain Names by the Respondent.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Names and each of them in bad faith.

7. Decision

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

Ian Lowe
Sole Panelist

Dated: November 14, 2005