WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Growth Properties, Inc. v. Mr. Fred Norris
Case No. D2003-0084
1. The Parties
1.1 The Complainant is General Growth Properties, Inc., a Delaware corporation with its principal place of Chicago, Illinois, USA.
1.2 The Respondent is Mr. Fred Norris, an individual, Chicago, Illinois, USA.
2. The Domain Name and Registrar
2.1 The disputed domain name is .
2.2 The registrar of the disputed domain name is BulkR, Inc., having a corporate administration office located in Baltimore, Maryland, USA.
3. Procedural History
3.1 Complainant initiated the proceeding by filing a complaint, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 6, 2003.
3.2 On February 12, 2003, all formal requirements for the establishment of the complaint were checked by WIPO and found to be in compliance with the ICANN 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 Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel accepts the WIPO checklist as evidence of proper compliance with the Policy, Rules, and Supplemental Rules.
3.3 On February 12, 2003, WIPO transmitted notification of the complaint and commencement of the proceedings to Respondent.
3.4 On March 5, 2003, WIPO transmitted notification of Respondent's default to the Respondent.
3.5 On March 25, 2003, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 26, 2003, the undersigned transmitted by facsimile the executed Statement and Declaration to WIPO.
3.6 On March 28, 2003, Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. WIPO notified the Panel that, absent exceptional circumstances it would be required to forward its decision to WIPO by April 11, 2003.
The Panel has not received any further requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.
4. Factual Background
4.1 Complainant General Growth Properties, Inc. has used and promoted the service mark NORTHBROOK COURT in association with the Northbrook Court shopping mall in Northbrook, Illinois, with a claimed first use as early as 1976.
4.2 The Respondent registered the domain name on September 12, 1996. The domain name is not active.
5. Parties� Contentions
A. Complaint
Complainant states:
"Complainant General Growth Properties, Inc. is a corporation organized under the laws of the state of Delaware with its principal place of business in Chicago, Illinois. Complainant is one of the United States� best known Real Estate Investment Trusts, and it develops, owns, operates and/or manages shopping malls in 41 states across the country."
"Complainant�s well-known trade name and service mark NORTHBROOK COURT serves as the basis for this Complaint. Complainant is one of the United States� best known Real Estate Investment Trusts. Complainant and its predecessor companies have been in the shopping center business for over 50 years, and presently develops, owns, operates and/or manages shopping malls in 41 states."
"Among Complainant�s well-known shopping malls is Northbrook Court, which has been in operation in Northbrook, Illinois since 1976. Occupants of Northbrook Court mall include many of the United States� best-known upscale retailers, including Lord & Taylor, Marshall Fields, Neiman Marcus, DKNY and Williams-Sonoma."
"Long before the alleged conduct of the Respondent, Complainant has used and promoted its service mark in connection with shopping mall services. Copies of promotional material regarding Northbrook Court available on General Growth�s web site, a print-out of a photograph of an entrance to Northbrook Mall, advertisements published in magazines and other General Growth advertisements and promotional material bearing the service mark are attached as Annex F."
"As a result of its long and extensive use and promotion of its NORTHBROOK COURT service mark in connection with shopping mall services, the service mark has acquired a further distinctiveness and secondary meaning signifying Complainant, and Complainant has built up and now owns valuable goodwill which is symbolized by its NORTHBROOK COURT service mark, which has become one of its most valuable assets."
"Although the service mark NORTHBROOK COURT is not registered, Complainant has established rights in its service mark by virtue of its long and continuous use in connection with its shopping mall."
"As a part of its efforts to protect the integrity of its service mark and in order to further promote its shopping mall, on January 3, 2000, Complainant registered the domain name, which is comprised of its service mark. This domain name has been in continuous use by Complainant in connection with its Northbrook Court mall since January 2000. Complainant also registered the domain name on February 18, 2000, and the domain name on December 4, 2002. Users visiting or are automatically forwarded to Complainant�s web site for its Northbrook Court mall maintained at ."
"On September 12, 1996, twenty years after Complainant�s and its predecessors� adoption and first use of the service mark, and concurrent with the completion of a multi-million dollar renovation of the Northbrook Court mall, Mr. Les Cieplinski registered the domain name . Mr. Cieplinski�s registration record for also listed him as both the administrative and technical contacts for the domain name, and listed the mailing address for ProPlanet Internet Solutions, Inc. as further contact information for Mr. Cieplinski in his capacity as the domain name�s administrative and technical contact."
"In or about summer 2001, Complainant became aware of Mr. Cieplinski�s registration of the domain name . Subsequent investigation confirmed that Mr. Cieplinski is with ProPlanet, a firm specializing in web site design, web site hosting and Internet marketing. ProPlanet also claims on its web site to be a domain name registrar. ProPlanet is located in Wilmette, Illinois, which is within 10 miles of Complainant�s Northbrook Court mall."
"Shortly after discovering that its NORTHBROOK COURT service mark had been registered as a domain name by Mr. Cieplinski, Mr. Keith Maladra, Vice-President of Customer Relationship Management for Complainant, contacted ProPlanet by telephone in order to discuss Mr. Cieplinski�s registration of and apprise Mr. Cieplinski of Complainant�s rights in its service mark."
"In this telephone call to ProPlanet, Mr. Maladra was informed by a Mr. Rosen that, while ProPlanet had no real use for , ProPlanet was not interested in simply transferring the domain name to Complainant. Mr. Rosen informed Mr. Maladra that ProPlanet would only transfer to Complainant in exchange for a significant and ongoing commitment to use ProPlanet for marketing projects, a commitment whose cost would total many thousands of dollars."
"Mr. Maladra informed Mr. Rosen that Complainant was not in the market for another marketing services agency, but Mr. Rosen insisted that he would not participate in further conversations regarding unless and until Mr. Maladra agreed to meet with him and review ProPlanet�s marketing capabilities."
"Soon thereafter, Mr. Maladra met with Mr. Rosen and reviewed ProPlanet�s marketing work. Mr. Maladra again informed Mr. Rosen that Complainant was not in the market for another marketing services agency, but that it was only interested in . Mr. Rosen reiterated that ProPlanet had no intention of relinquishing without Complainant�s ongoing commitment to use ProPlanet for its marketing needs."
"Mr. Maladra informed Mr. Rosen that Complainant would not respond to ProPlanet�s threats to hold hostage in order to extort Complainant�s promise of ongoing business and asked to speak with Mr. Rosen�s superior by telephone. Mr. Rosen�s superior, however, was no more cooperative than Mr. Rosen had been, and hung up on Mr. Maladra."
"As a result of ProPlanet�s refusal to transfer to Complainant, and in light of ProPlanet�s extortionist tactics, on October 11, 2002, Complainant�s counsel demanded that Mr. Cieplinski cease use of and relinquish ."
"On October 24, 2002, counsel for Complainant spoke via telephone with Mr. Cieplinski in order to ascertain his position concerning Complainant�s demand letter. Mr. Cieplinski informed Complainant�s counsel that his attorney would contact Complainant�s counsel regarding the matter "shortly." Mr. Cieplinski refused to identify his attorney by name or provide any contact information for this attorney."
"Despite Mr. Cieplinski�s representations, Complainant has never been contacted by his counsel. Subsequent efforts to reach Mr. Cieplinski have been unsuccessful, and Mr. Cieplinski never responded substantively to Complainant�s demand letter."
"In the time since Complainant sent its demand letter to Mr. Cieplinski, the registration for has changed. The registration record for now identifies the Respondent, Fred Norris, as the current registrant of the web site. *** The webmaster of ProPlanet is now listed as the administrative and technical contact at the same mailing address as was provided in the administrative and technical contact information of Mr. Cieplinski�s registration record for ."
"On January 28, 2003, Complainant demanded that Respondent relinquish . *** Complainant attempted to deliver this demand letter via messenger to Respondent�s address as listed in the registration for . The demand letter was returned to Complainant�s counsel as undeliverable with the further instruction that no person named Fred Norris could be found at the building at 121 North LaSalle Street, Chicago, Illinois."
"At no time since Complainant became aware of the registration of its service mark as a domain name has the domain name resolved to an active web site or other online presence."
"Except for the irrelevant addition of ".com," Respondent�s domain name is identical to Complainant�s NORTHBROOK COURT service mark, under which Complainant and its predecessors have owned, operated and managed the mall for twenty-five years."
"Complainant submits that neither Respondent nor his predecessor can establish a legitimate right to, or interest in, the domain name. Neither Respondent nor his predecessor has used the domain name in connection with the bona fide offering of any goods or services, nor is Respondent or his predecessor referred to or commonly known by the domain name. In fact, when Mr. Maldara originally contacted ProPlanet in order to attempt to acquire , Mr. Rosen informed him that ProPlanet had no real use for the domain name, but nevertheless, would not transfer the domain name to Complainant without its ongoing commitment to use ProPlanet�s marketing services."
"Complainant also submits that Respondent is not making a legitimate, noncommercial or fair use of the domain name. To Complainant�s knowledge, there has never been an active web site associated with the address."
"Complainant submits that Respondent clearly would not have chosen this domain name unless he was seeking to trade on Complainant�s service mark. Accordingly, Respondent cannot establish legitimate rights or interests in the domain name."
"As set forth above, Mr. Cieplinski registered in 1996. When Mr. Maladra contacted ProPlanet shortly after discovering Mr. Cieplinski�s registration, he was informed that, while ProPlanet had no real use for the domain name, it would only transfer the registration to Complainant in exchange for thousands of dollars worth of marketing business from Complainant. *** This revelation constitutes strong evidence of bad faith in that it reveals that Mr. Cieplinski�s true motivation in registering was to extort a significant sum of money from Complainant."
"The current registration record for suggests that Mr. Cieplinski transferred the domain name to Respondent at some point after he received Complainant�s original demand letter. The evidence in this case establishes that Respondent has acquired and used in bad faith."
"The fact that Respondent is located in Chicago, Illinois, and is in close proximity to the Northbrook Court mall is evidence that Respondent acquired in bad faith and with full knowledge of Complainant�s rights and interest in its service mark."
"Complainant submits that the following circumstances in this case support a finding that Respondent acquired from Mr. Cieplinski in bad faith:
(a) Mr. Cieplinski registered a domain name identical to Complainant�s well-known NORTHBROOK COURT service mark;
(b) Mr. Cieplinski�s company ProPlanet is located just 10 miles from the well-known Northbrook Court mall;
(c) When contacted about the registration, a representative of ProPlanet attempted to extort thousands of dollars worth of business from Complainant in exchange for ;
(d) After the failed attempt to extort business from Complainant in exchange for , and after receiving Complainant�s original demand letter, Mr. Cieplinski transferred to Respondent;
(e) Respondent is located in Chicago, Illinois, in close proximity to Complainant�s well-known Northbrook Court mall; and
(f) The current registration record provides an apparently false address for Respondent and also identifies the webmaster of ProPlanet as the administrative and technical contact for , just as Mr. Cieplinksi�s registration record did."
"Given the foregoing, it is inconceivable that Respondent was unaware of the above-listed facts and that he acquired in good faith. In addition, there is evidence connecting Respondent to ProPlanet, the company of the domain name�s original registrant. This evidence suggests that Respondent was not only aware of Mr. Cieplinski�s and ProPlanet�s prior conduct, but also that Respondent may be acting in concert with Mr. Cieplinski and ProPlanet. Accordingly, the evidence in this case leads to the conclusion that Respondent acquired from Mr. Cieplinski in bad faith and with full knowledge of Complainant�s rights."
"In addition to acquiring in bad faith, Respondent is also using the domain name in bad faith. By maintaining a domain name registration identical to the service mark, Respondent has prevented Complainant from registering its service mark as a ".com" domain name."
"Moreover, Respondent has failed to make any legitimate use of , and his passive holding of the domain name constitutes evidence of bad faith."
"The domain name also never resolved to an active web site or other online presence from the time that Mr. Cieplinski registered in September 1996 until he transferred the domain name to Respondent shortly after receiving Complainant�s October 11, 2002, demand letter."
"Respondent has also provided scant contact details in his registration for , including failing to provide his telephone number, facsimile number, and e-mail address. Moreover, the information that Respondent has provided � including his address � appears to be false. Respondent�s failure to provide complete and correct contact information has not only served to further frustrate Complainant�s attempts to resolve this matter, but it is also a breach of BulkR�s Dispute Policy (Annex E) and constitutes further evidence of bad faith."
"Complainant submits that since the address Respondent has provided in the registration record for is apparently false, and given the ProPlanet connection between Respondent and Mr. Cieplinski, Complainant questions whether an actual person named "Fred Norris" is the current registrant of . If, as Complainant suspects, there is no such person and the name "Fred Norris" is a false name being used as a thinly-veiled attempt to shroud Mr. Cieplinksi�s and ProPlanet�s continued activities, then the provision of such false registrant information constitutes further evidence of bad faith."
B. Response
Respondent did not file a response to the complaint.
6. Discussion and Findings
6.1 The Uniform Domain Name Dispute Resolution Policy (the "Policy"), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999, (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
6.2 It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a) of the Rules).
6.3 WIPO forwarded notification of the complaint to the Respondent via post/courier and email in accordance with the contact details found in the appropriate WHOIS database. WIPO also forwarded notification of default to the Respondent via email.
6.4 Based on the methods employed to provide the Respondent with notice of the complaint and default the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the complaint and initiation of these proceedings. The Panel also finds that the failure of the Respondent to furnish a reply is not due to any omission by WIPO.
6.5 Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:
(i) Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondent�s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
6.6 As the Respondent has failed to submit a response to the complaint, the Panel may accept as true all of the allegations of the complaint. Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009, February 29, 2000.
6.7 Based upon the continuous use of the NORTHBROOK COURT service mark, the Complainant clearly has rights in the mark.
6.8 Complainant asserts that the domain name is identical to Complainant�s service mark NORTHBROOK COURT.
6.9 The Panel agrees with the Complainant that the only actual difference between the domain name and the service mark is the ".com."
6.10 The Panel finds the domain name is identical to the NORTHBROOK COURT service mark, and the Complainant has established it has rights in the NORTHBROOK COURT service mark, pursuant to paragraph 4(a)(i) of the Policy.
6.11 Paragraph 4(c) of the Policy lists several circumstances, without limitation, that if found by the Panel shall demonstrate the Respondent's rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii). In particular, paragraph 4(c) states:
(i) before any notice to you [Respondent] 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.
6.12 There is no evidence in the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain name .
6.13 The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name pursuant to paragraph 4(a)(ii) of the Policy.
6.14 Paragraph 4(b) of the Policy lists several factors, without limitation, that if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, paragraph 4(b)(i) states:
(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.
6.15 Upon discovering that the domain name of had been registered by Mr. Cieplinski at ProPlanet, Keith Maladra (Vice President of Customer Relationship Management for Complainant) contacted ProPlanet and spoke with a Mr. Rosen. According to the affidavit of Mr. Maladra (Annex J), Mr. Rosen indicated that ProPlanet had no real use for , but was not interested in simply transferring the domain name to Complainant. Mr. Rosen informed Mr. Maladra that ProPlanet would only transfer in exchange for a significant and ongoing commitment by the Complainant to use ProPlanet for marketing projects. Complainant estimates this would be a commitment totaling many thousands of dollars.
6.16 During the time that Complainant was attempting to resolve this matter with ProPlanet, the registration for changed and now shows Fred Norris (Respondent) as the current registrant of the domain name rather than Mr. L. Cieplinski. Additionally, Web Master has been substituted for Les Cieplinski under the administrative and technical contact information, with the address and telephone number unchanged.
6.17 Complainant then attempted to hand deliver a demand letter to Respondent at the address listed on the registration for . The letter was returned to Complainant�s counsel as undeliverable, indicating that no one named Fred Norris could be found at the 121 North LaSalle Street address.
6.18 In the absence of contrary evidence, ProPlanet�s offer to transfer the domain name at issue to the Complainant in exchange for a significant and ongoing commitment to use ProPlanet for its marketing projects, a commitment that would total many thousands of dollars, is clearly evidence of registration and use of the domain name in bad faith.
6.19 The Panel finds that ProPlanet's offer to transfer the domain name in exchange for Complainant�s significant and ongoing commitment to use ProPlanet for its marketing projects is also clearly in excess of any reasonable out-of-pocket costs that could have been associated with the domain name.
7. Decision
As the Complainant, General Growth Properties, Inc. has established that the Respondent, Mr. Fred Norris, has engaged in abusive registration of the domain name within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name be transferred to the Complainant.
R. Eric Gaum
Sole Panelist
Dated: April 11, 2003
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