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and Mediation Center
Tuttle Crossing Associates II LLC v. Troy Joseph
Case No. D2006-0028
1. The Parties
The Complainant is Tuttle Crossing Associates II LLC, Arlington, Virginia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, United States of America.
The Respondent is Troy Joseph, Boynton Beach, Florida, United States of America,
of United States of America.
2. The Domain Name and Registrar
The disputed domain name <themallattuttlecrossing.com> is registered
with Abacus America Inc. dba Names4Ever.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 10, 2006. On January 11, 2006, the Center transmitted by email to Abacus America Inc. dba Names4Ever a request for registrar verification in connection with the domain name at issue. On January 13, 2006, Abacus America Inc. dba Names4Ever 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 January 16, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was February 5, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 6, 2006.
The Center appointed Andrew Mansfield as the sole
panelist in this matter on February 13, 2006. 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 possesses trademark rights to THE MALL
AT TUTTLE CROSSING and such rights are recognized in United States federal service
registration 2,246,999, registered May 18, 1999. Complainant has filed two additional
service mark registrations with the United States Patent and Trademark Office,
both dated April 18, 2005. One is a standard character mark for THE MALL AT
TUTTLE CROSSING and the other is for a design plus words, letters, and/or numbers.
These applications are pending.
5. Parties’ Contentions
Complainant alleges that it and its predecessors in interest have operated a shopping mall known as “The Mall at Tuttle Crossing” (hereinafter “the Mall”) in Dublin, Ohio, since 1997. The Mall is located in the Columbus, Ohio market area. It consists of over one million square feet of retail space in which are located 140 stores and restaurants.
Complainant alleges that it provides information about the Mall on the Internet at <www.shoptuttlecrossing.com>. Further, Complainant alleges that it has invested a substantial amount of time and resources in the promotion of its trademark rights in THE MALL AT TUTTLE CROSSING.
Upon reasonable inquiry, Complainant alleges that Respondent registered the disputed domain name <themallatshuttlecrossing.com> on December 17, 2002. The parties exchanged letters concerning their respective positions in this dispute through counsel during March of 2005.
Complainant alleges that the disputed domain name is identical to its trademark. Both the disputed domain name and the trademark consist of the words “The Mall at Tuttle Crossing.” Complainant alleges that the addition of the generic top-level domain name “.com” is without legal significance.
Complainant further alleges that Respondent has no rights or legitimate interests in or to the disputed domain name. Respondent is not, allegedly, a licensee of Complainant. Complainant also alleges that Respondent has never been known by the disputed domain name and has made no demonstrable preparations for the bona fide offering of goods or services under such a name.
Complainant alleges that the disputed domain name has been registered in bad faith. Respondent has not, apparently, used the domain name. Complainant states that Respondent had both constructive notice of Complainant’s trademark rights, through its service mark registration, and actual notice of the trademark, as evidenced by Respondent’s counsel’s admission in correspondence. Complainant alleges that Respondent either intended to sell the domain name to Complainant or to commercially benefit from consumer confusion.
For all of the foregoing reasons, Complainant requests that the disputed domain name be transferred to it.
The Respondent did not reply to the Complainant’s
6. Discussion and Findings
In order to succeed in its Complaint the Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:
(i) the domain name in dispute is identical or confusingly similar to a trademark 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 was registered and is being used by the Respondent in bad faith.
The Panel proceeds to deal with each of these elements in turn.
A. Identical or Confusingly Similar
Complainant has a registered trademark concerning the leasing of mall space
and real estate services in THE MALL AT TUTTLE CROSSING. U.S. Reg. No. 2,246,499.
Complainant has much broader common law trademark rights to THE MALL AT TUTTLE
CROSSING. In the United States, trademark rights arise from the actual use of
a trademark or service mark. If a service is provided under a brand, common
law trademark rights are automatically created. This is especially true once
consumers view the brand name as an indicator of the service’s source.
Common law trademark rights can be established by demonstrating continuous use
of a mark over an extended period of time. American Home Products v. Ben
Malgioglio, WIPO Case No. D2000-1602
Both registered and unregistered marks are entitled to protection under the
Policy Para. 4(a)(1). See Business Architecture Group, Inc. v. Reflex Publishing,
Case No. FA 0104000097051 (NAF June 5, 2001) (“A complaining party can
establish that it has rights in a trademark or service mark by establishing
that an entity such as the PTO has approved its mark, or, alternatively, that
it has established rights as a common law mark”). Numerous decisions of
prior panels make clear the fact that common law trademarks are protected. See,
e.g., Fiona Roberts v. Russell Boyd, WIPO
Case No. D2000-0210; Jeanette Winterson.v. Mark Hogarth, WIPO
Case No. D2000-0235; Giampaolo Matteucci v. Webmaster, AWG,
WIPO Case No. D2001-1135.
The Panel finds that the disputed name is identical to Complainant’s registered trademark and common law trademark rights in the service mark THE MALL AT TUTTLE CROSSING.
B. Rights or Legitimate Interests
The following are examples of circumstances pursuant to the Policy wherein Respondent may have rights or legitimate interests in a contested domain name:
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue.”
Respondent filed no response in this matter. Complainant asserts that it is not aware of any rights or legitimate interests that Respondent may have in “The Mall at Tuttle Crossing.” The Panel is also unable to discern any rights or legitimate interests that Respondent has in “The Mall at Tuttle Crossing”.
Based on the case file, the Panel finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, internet users to your website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
There is a three-year gap between the time Respondent registered the disputed
domain name and this dispute. During that time, Respondent has made no use of
the domain name. Prior panels have found bad faith present when respondents
fail to use domain names if such failure occurs in association with: (1) notice
of complainant’s trademark rights; (2) an offer by respondent to sell
or lease the domain name; and, (3) a lack of any identified legal use to which
respondent may put the disputed domain name. Telstra Corporation, Ltd. v.
Nuclear Marshmallows, WIPO Case No. D2000-0003
(February 18, 2000); Certified Financial Planner Board of Standards, Inc.
v. Career Professionals, Inc., Case No. FA0106000097354 (NAF July 12, 2001).
The Panel finds that Respondent had actual knowledge of Complainant’s trademark rights. In his letter dated March 14, 2005, counsel for Respondent, admitted reviewing Complainant’s service mark federal registration. In that letter, he states that he discussed Complainant’s registered service mark with Respondent. Certainly, counsel for Respondent was aware that Complainant’s common law trademark rights were even broader than those reflected in the federal registration. The Panel safely concludes that Respondent was aware that Complainant operated a large shopping mall under the trademark “The Mall at Tuttle Crossing.”
In the March 14, 2005 letter, Respondent’s counsel indicated Respondent’s
willingness to develop “a mutually beneficial” solution. He offered
to serve as an intermediary in negotiating such a solution. The Panel finds
that Respondent sought through counsel, though in coded language, to sell or
lease the domain name to Complainant. See Petland, Inc. v. COM.sortium, LLC,
WIPO Case No. D2001-0430 (holding that
respondent’s statement that it “would consider meeting with [complainant]
to discuss a mutually beneficial resolution” was “fairly standard
code for an offer to sell a domain name” given that “[f]ew domain
name registrants in violation of the Policy nowadays are willing explicitly
to commit their intentions to paper as they were several years ago;” and
finding bad faith in light of the above).
Respondent has officially provided no explanation as to what use it could put the disputed domain name that would not violate Complainant’s trademark rights. In the March 14, 2005 letter, Respondent’s counsel indicates only that Respondent intended to advertise and promote goods and services on behalf of online merchants and/or provide an e-commerce site at the disputed domain name. The Panel finds that any such use of the disputed domain name as described by Respondent’s counsel would violate Complainant’s registered and common law trademark rights.
The Panel finds that Respondent registered the domain name primarily for the
purpose of selling, renting, or otherwise transferring the domain name registration
to the Complainant for valuable consideration in excess of Respondent’s
documented out-of-pocket costs directly related to the domain name – if
not simply with a view to otherwise profit from the goodwill associated with
Complainant’s trademarks. Such action constitutes registration and use
of the disputed domain name in bad faith.
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.
Dated: February 27, 2006