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The Mills Limited Partnership v. +1.NA / Fortune Financial Center [2005] GENDND 48 (21 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Mills Limited Partnership v. +1.NA / Fortune Financial Center

Case No. D2004-1014

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 +1.NA / Fortune Financial Center, Coral Gables, Florida, United States of America.

2. The Domain Name and Registrar

The disputed domain name <westlandmall.com> (the “Domain Name”) is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 2, 2004. On December 3, 2004, the Center transmitted by email to Wild West Domains, Inc. (the “Registrar”) a request for registrar verification in connection with the domain name at issue. On December 3, 2004, the Registrar transmitted by email to the Center its verification response stating that the Respondent named in the Complaint, Henry Socorro, was incorrect. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 13, 2004, naming +1.NA/Fortune Financial Center as the Respondent. 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 December 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 3, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2005. On January 4, 2005, the Center received an email message from someone identifying himself as Henry Socorro, the owner of the Domain Name, who said that he had just been notified of the situation, and asked for advice on how to defend his rights. On January 5, 2005, the Center replied that notification of the complaint had been provided by email and FedEx to the contact details provided by the Registrar, and that since no response had been received, the Respondent was in default. The Center’s email also stated that if the Respondent submitted a Response after the deadline, it would be up to the appointed Panel to decide whether or not to accept it. The Center has not received any additional communication from the Respondent.

The Center appointed Michelle Brownlee as the sole panelist in this matter on January 10, 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 commercial real estate development and property management company that owns and operates shopping centers in the United States, Canada and Europe. In January 2004, Complainant acquired a shopping center in Hialeah, Florida known as the “Westland Mall.” The previous owners of this property had been operating it under the name “Westland Mall” since 1971. Complainant owns Florida registration number T04000000301 for the mark WESTLAND MALL in connection with services in class 36.

5. Parties’ Contentions

A. Complainant

From approximately September 2002 to July 2003, the Domain Name resolved to a web site titled “www.abcmalls.com,” which displayed a directory listing for The Dadeland Mall in Miami, Florida, which is a competitor of Complainant. From July 2003 to the present, the Domain Name has resolved to a default HTML file directory page.

In May 2004, Complainant discovered that Respondent had registered the Domain Name. Complainant’s counsel sent a cease and desist letter to Respondent, then telephoned Respondent. Respondent told Complainant’s counsel that he thought of the Domain Name as a future business, and suggested that Complainant enter into a business arrangement by which Complainant would pay Respondent a fee based on a percentage of the business generated by the web site.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the 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.

A. Identical or Confusingly Similar

The second level of the Domain Name is identical to Complainant’s service mark “Westland Mall.”

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain, to misleadingly divert consumers or to tarnish the trademark at issue

Respondent has not provided any evidence of rights or legitimate interests in the domain name. Moreover, as discussed below, the circumstances described in the Complaint provide strong evidence that Respondent’s intended use of the Domain Name was to lease it to Complainant. This intended use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.

The fact that Respondent appears to have no legitimate claim to the Domain Name, combined with Respondent’s offer to lease the domain name to Complainant based on the revenue generated by the web site provides strong evidence that Respondent registered the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration for valuable consideration in excess of documented out-of-pocket costs in violation of Paragraph 4(b)(iv).

The bad faith factors enumerated above are not exclusive. Other circumstances can demonstrate bad faith. See Playboy Enterprises International Inc. v. SAND WebNames - For Sale, WIPO Case No. D2001-0094; General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377. The fact that Respondent directed the Domain Name to a web site displaying information about Complainant’s competitor provides further evidence of bad faith. Panels have found bad faith under similar circumstances. See e.g., Briefing.com v. Cost Net Domain Manager, WIPO Case No. D2001-0970 (finding bad faith where the domain name resolved to a search engine with pre-programmed search terms displayed that were likely to lead Internet users to the web sites of complainant’s competitors).

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 Name be transferred to the Complainant.

Michelle Brownlee
Sole Panelist

Dated: January 21, 2005