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The Irvine Company v. LocalnewsInc and Mark Whitehead [2005] GENDND 2131 (5 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Irvine Company v. LocalnewsInc and Mark Whitehead

Case No. D2005-1061

1. The Parties

The Complainant is The Irvine Company, of Newport Beach, California, United States of America, represented by Sonnenschein Nath & Rosenthal, United States of America.

The Respondents are LocalnewsInc and Mark Whitehead, of Newport Coast, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <fashionislandrealty.com> is registered through eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2005. On that date, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue, and eNom, Inc. transmitted by email to the Center its verification response confirming that the Respondents are listed as the registrants and providing their contact details.

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”).

On October 18, 2005, in accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the commencement of the proceedings, using the contact information contained in the Whois record for the disputed domain name. Accordingly, the Center notified the Respondents by email to [Respondents’ email address as identified in the WHOis listing], and by DHL courier to the address contained in the Whois record; the Center’s records confirm that the email was transmitted successfully on October 18, 2005, and the courier successfully delivered the package to the correct address on October 21, 2005. On October 18, 2005, the Center also notified the Respondents of the Complaint and commencement of the proceedings by facsimile to the facsimile number ((949) 209 1963), identified as Respondent Mark Whitehead’s facsimile number on the <fashionislandrealty.com> website; the Whois record does not contain a facsimile number. The facsimile was successfully transmitted on that date.

In accordance with the Rules, paragraph 5(a), the due date for the Response was November 7, 2005. The Respondents did not submit a response by that date. Accordingly, on November 8, 2005, by email to the Respondents’ email address listed in the WHOis record, the Center notified the Respondents’ default. Subsequently, on November 21, 2005, California time, by email a Mr. Whitehead advised the Panel that he had just become aware of the proceeding and contested the Complaint.

The Center appointed Ms. Sally M. Abel as the sole panelist in this matter on November 21, 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, a 110-year old privately held real estate investment company, developed, owns and operates a shopping center in Newport Beach, California, called FASHION ISLAND. Newport Beach is located in Orange County. According to the Complainant, FASHION ISLAND is a nationally known shopping destination, with over 200 stores, 40 restaurants and a cinema complex. In addition to owning and operating the FASHION ISLAND retail center, the Complainant owns an upscale residential development adjacent to the shopping center called “The Colony at Fashion Island”.

The Complainant claims to have used FASHION ISLAND as a trademark since at least as early as 1967, and owns several incontestable U.S. trademark registrations for FASHION ISLAND and other FASHION ISLAND based marks, including “FASHION ISLAND”, Registration No. 2,353,175, filed on June 9, 1998, and registered on May 30, 2000, for “real property leasing and shopping center services”. The Complainant allows its tenants in the shopping center to use FASHION ISLAND to identify their location, such as “Apple Store Fashion Island”. The Complainant has policed some unauthorized uses of FASHION ISLAND and provides a list of companies purportedly using FASHION ISLAND in their name who apparently never were or no longer are using FASHION ISLAND.

On September 16, 2002, Respondents registered the domain name <fashionislandrealty.com>. Respondent, Mark Whitehead, a real estate broker, maintains a website at “www.fashionislandrealty.com”, on which he advertises his real estate brokerage services. According to information contained on the site, Mr. Whitehead offers homes and income property for sale in the cities of Newport Coast, Newport Beach, Corona del Mar, Crystal Cove and Laguna Beach.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the domain name <fashionislandrealty.com> is confusingly similar to the Complainant’s well-known and incontestable FASHION ISLAND and FASHION ISLAND-based trademarks (NEWPORT CENTER FASHION ISLAND and FASHION ISLAND NEWPORT BEACH), in that it contains the Complainant’s FASHION ISLAND mark in its entirety and the addition of the generic term “realty” does not reduce the confusing similarity.

The Complainant has used FASHION ISLAND as a service mark since the 1960s in connection with its well-known shopping center in Newport Beach and has not licensed or otherwise authorized the Respondents to use FASHION ISLAND in connection with their business. The Complainant therefore submits that the Respondents have no rights or legitimate interests in respect of the domain name in dispute.

By email on November 16, 2004, and again by letter on January 27, 2005, and April 28, 2005, and follow-up telephone calls, the Complainant notified the Respondents of its long standing rights in its FASHION ISLAND marks and its concern regarding the challenged domain name, and asked the Respondents to cease and desist from such use. The Respondents’ only response was to add a disclaimer of affiliation with the Complainant or with the Complainant’s shopping center on the site, buried at the end of a paragraph of text extolling Mr. Whitehead’s style and ideas as a real estate agent.

Finally, the Complainant submits that the dispute domain name was registered and is being used in bad faith by the Respondent. The Respondents’ real estate business is located in Orange County, the county in which the FASHION ISLAND center is located, and the site indicates that Mr. Whitehead offers properties for sale in Newport Beach, the city in which the FASHION ISLAND center is located, as well as other cities.  The Respondents had constructive notice of the Complainant’s rights in FASHION ISLAND on the basis of the Complainant’s trademark registrations, and necessarily had actual notice of the Complainant’s thirty year use of FASHION ISLAND based on the Respondents’ activities in the city and county.

B. Respondents

The Respondents defaulted in that they did not file a timely response to the Complaint.  The Response was due November 7, 2005.  On November 21, 2005, the Respondents sent an email to the Center, informing that they had “just received for the first time a copy of a dispute over a web name that I have had for over 3 years now,” and otherwise taking issue with the Complaint, claiming that many uses of FASHION ISLAND exist, but that there is only one FASHIONISLANDREALTY. 

6. Discussion and Findings:

Before turning to the merits of the Complaint, the Panel must determine whether to consider the Respondents’ November 21, 2005 email as a timely Response. Paragraph 5(a) of the Rules provides that the response is due within 20 days of the commencement of the proceeding. There is no question that the Respondents were so notified on October 18, 2005, when the email and facsimile notices were sent, and again on October 21, 2005, when the couriered package was delivered.

In “exceptional” cases, failure to timely file a response may be excused. Paragraph 5 of the Rules provides in relevant part:

“(d) At the request of the Respondent, the Provider may, in exceptional cases, extend the period of time for the filing of the response. The period may also be extended by written stipulation between the Parties, provided the stipulation is approved by the Provider.

(e) If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.”

The Panel finds that the Center has not extended the period of time to file a response pursuant to Paragraph 5(d) of the Rules, and that there are no exceptional circumstances presented here to satisfy the requirements of either Paragraph 5(d) or Paragraph 5(e).  In their November 21, 2005 email, the Respondents do not deny receipt of the Center’s October 18, 2005 email and facsimile notification of commencement of the proceeding, nor deny receipt of the same successfully delivered to Respondents’ address on October 21, 2005, nor explain how it is that they have “just received” documents sent to them a month earlier.  The email address to which the Center addressed the notice is the email address contained in the Whois information for the disputed domain name, and the same email address Mr. Whitehead identifies as his email address in the November 21 email, though he sent that email from a different address.  The facsimile number the Center used is the same number Mr. Whitehead identifies on the website as his business facsimile number.

Under the circumstances, therefore, the Respondents’ claim to have “just received for the first time” a copy of the notification of commencement of the proceedings and the complaint, more than a month after the documents were sent and two weeks after the Response was due, is not credible. The Panel finds that the Respondents’ November 21, 2005 email does not constitute or qualify as a Response; the Respondents’ default stands. As provided for in Paragraph 5(e), because there are no exceptional circumstances, the Panel will decide the dispute based upon the Complaint.

Pursuant to Paragraph 4(a) of the Policy, in order to prevail in the proceeding, Complainant must establish:

(i) that the domain name registered by the Respondent is identical or confusingly similar to the trademarks or service marks in which the Complainant has rights; and

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

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

A. Identical or Confusingly Similar

There is no question that the domain name is confusingly similar to the Complainant’s trademark. The Complainant owns incontestable rights in FASHION ISLAND as a service mark. The domain name <fashionislandrealty.com> contains the Complainant’s mark in its entirety. It is beyond dispute that adding a generic term to an established mark does not overcome confusing similarity.

The Panel finds that the Complainant has proven that the domain name in dispute is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondents are not licensed or otherwise authorized by the Complainant to register and/or use a domain name containing the Complainant’s FASHION ISLAND mark. With the Complaint, the Complainant submitted a copy of the content of the <fashionislandrealty.com> website (Annex D). There is nothing on the website to suggest that the Respondents have any rights or legitimate interests in the domain name. In fact, nothing on the website suggests that the Respondents have any interest in the domain name, other than as a means of attracting consumers familiar with the FASHION ISLAND complex to the site in order to then interest those consumers in Mr. Whitehead’s real estate services covering not only Newport Beach, where the FASHION ISLAND shopping center and residences are located, but a number of other Orange County communities as well.

The Panel finds that the Complainant has demonstrated that the Respondents have no rights or legitimate interests in the domain name in dispute.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out that certain circumstances may, “in particular but without limitation”, be evidence of bad faith registration and use. The Complainant alleges that the Respondents’ behavior constitutes bad faith registration and use under Paragraph 4(b)(iv), in that the Respondents have used the <fashionislandrealty.com> domain name intentionally to attempt to attract Internet users to the site, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of the Respondents’ real estate services.

The Complainant’s FASHION ISLAND shopping center is particularly well-known both nationally, and locally, in Orange County. For more than 30 years, Complainant has offered real property leasing and shopping center services under the FASHION ISLAND mark, and offers real estate services in connection with its high-end residential development known as “The Colony at Fashion Island”.

The Respondents use the disputed domain name for a website promoting Mr. Whitehead’s real estate services in connection with “purchases and sales of single-family residences and income property within the cities of Newport Coast, Newport Beach, Corona del Mar, Crystal Cove, [sic] Laguna Beach”, despite the fact that the Respondents’ have no affiliation with the Complainant. Unlike the Complainant’s tenants, who may use FASHION ISLAND in their store name to identify the store’s location in the shopping center, the Respondents have no basis for using <fashionislandrealty.com> other than to trade off the established cache of the FASHION ISLAND trademark in the local area. Consumers looking for real estate services related to FASHION ISLAND properties, either within the shopping center or in The Colony at Fashion Island, are likely to think that <fashionislandrealty.com> is somehow affiliated with the FASHION ISLAND properties and/or their owner.

The Respondents’ only apparent response to the Complainant’s repeated demands that the Respondents cease use of the domain name, was to add a disclaimer of affiliation with the Complainant on the website, which disclaimer is buried, mid-sentence at the end of a paragraph touting Mr. Whitehead’s real estate prowess. The Panel considers it unlikely that consumers would notice the disclaimer, and considers Mr. Whitehead’s chosen placement of the disclaimer to be indicative of his continuing intent to divert traffic to his website by creating a likelihood of confusion through use of the <fashionislandrealty.com> domain.

The Panel concludes that the Respondents registered and are using the domain name in bad faith.

7. Decision

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

Sally M. Abel
Sole Panelist

Dated: December 5, 2005