WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magellan Development Group, LLC v. Shelley Stunard
Case No. D2007-1828
1. The Parties
Complainant is Magellan Development Group, LLC (“Complainant”), of Chicago, Illinois, United States of America, represented by Sonnenschein Nath & Rosenthal LLP, of the United States of America.
Respondent is Shelley Stunard (“Respondent”), of Chicago, Illinois, United States of America.
2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2007 by e-mail and December 12, 2007 in hardcopy. On December 13, 2007, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 13, 2007, the Registrar transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On December 17, 2007, 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 Respondent of the Complaint, and the proceedings commenced on December 17, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 7, 2008.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on January 17, 2008. 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, a developer and seller of mixed-use real estate in the United States, and in particular in Chicago, Illinois, is the owner (by assignment) of U.S. Federal Registration No. 3,200,545 (January 23, 2007) for the mark THE SHORE CLUB AT LAKESHORE EAST and design for “body lotion, hair shampoo, hair conditioner, and bath gel” in International Class 3 (the “Lakeshore Registration”). The Lakeshore Registration claims a first use date and first use in commerce date of April 1, 2005, which is almost ten months after Respondent registered the Disputed Domain Name. Complainant’s predecessor in interest did not apply for the Lakeshore Registration until April 28, 2005, which is more than ten months after Respondent registered the Disputed Domain Name.
Complainant subsequently applied for several LAKESHORE EAST-related federal trademark applications. According to Complainant’s use-based federal trademark applications for LAKESHORE EAST, which were all filed on October 5, 2006 (more than two years after Respondent registered the Disputed Domain Name), Complainant began using its LAKESHORE EAST mark in interstate commerce in June 2000 respecting Application No. 77/013,768 (the “768 Application”) for “real estate services, namely rental and brokerage of homes and condominiums” and for “real estate development” and began using its LAKESHORE EAST mark and design in interstate commerce in June 2000 respecting Application No. 77/013,803 (the “803 Application”) for “real estate services, namely rental and brokerage of homes and condominiums” and for “real estate development” services. Neither application has yet matured into a registration.
In addition to the Lakeshore Registration, the 768 Application, and the 803 Application, Complainant filed two additional LAKESHORE EAST-related federal trademark applications on an “intent-to-use” basis (collectively, the “Intent-to-Use Applications”). One of these applications has been abandoned by Complainant and one of them has been withdrawn.
Respondent registered the Disputed Domain Name on June 16, 2004, several months prior to the filing date of the Lakeshore Registration and several months prior to the first use date and first use-in-commerce date asserted in the Lakeshore Registration, and more than two years before Complainant filed the 768 Application and the 803 Application.
Complainant submitted evidence supporting that it actively advertises, promotes, and sells LAKESHORE EAST-branded development properties through its “” web site and through other marketing efforts. As of the date of this Decision, the Disputed Domain Name resolves to a web site containing links to what appears to be third party real estate service providers that are unrelated to Complainant. However, Complainant has not asserted that Respondent is using or has used the Disputed Domain Name in any respect.
Complainant notes that, on March 9, 2007, Complainant was awarded a favorable decision in Magellan Development Group LLC v. Walter and Shelly Stunard, WIPO Case No. D2007-0025 against Respondent (the “Prior Adverse WIPO Decision”), in which the panel ordered the domain names and to be transferred to Complainant.
5. Parties’ Contentions
A. Complainant
Complainant contends that the Disputed Domain Name is identical or confusingly similar to its LAKESHORE EAST mark.
Complainant contends that, as a result of using its LAKESHORE EAST mark exclusively and continuously for longer than six years, the LAKESHORE EAST mark has acquired “secondary meaning” since the relevant consuming public has come to recognize the mark in connection with Complainant’s real estate-related services. Complainant contends that its institution and maintenance of a trademark policing program to prosecute and deter infringement of its LAKESHORE EAST marks enhances the “fame, recognition and substantial goodwill in its LAKESHORE EAST brand of real estate development and related services, including the sale and rental of that real estate.”
Complainant contends that Respondent has no rights or legitimate interests with respect to the Disputed Domain Name, and that Respondent was not authorized by Complainant to use the LAKESHORE EAST mark, including as a domain name. Complainant contends that Respondent has purposefully and wrongfully used the Disputed Domain Name to trade upon the substantial and valuable goodwill associated with Complainant’s LAKESHORE EAST mark for Respondent’s own commercial gain.
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Name in bad faith because Respondent registered the Disputed Domain Name while fully aware of Complainant’s rights in its LAKESHORE EAST marks. Complainant also suggests that a finding of bad faith further obtains in this case because Respondent was the subject of the Prior Adverse WIPO Decision concerning two other Lakeshore East-related domain names, which the Panel ordered transferred to Complainant.
Similarly, Complainant is seeking transfer of the Disputed Domain Name to Complainant in this case.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination whether Complainant has proved the necessary elements of a claim for transfer or cancellation of a domain name under the Policy and the Rules. Policy, Paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, Paragraph 4(a) of the Policy requires Complainant to prove each of the following:
(i) that the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interest in the domain name registered by Respondent; and
(iii) that the domain name registered by Respondent has been registered and used in bad faith.
In view of Respondent’s failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant’s undisputed allegations for which there is support, pursuant to Paragraphs 5(e), 14(a) and 15(a) of the Rules, and draw such inferences it considers appropriate, pursuant to Paragraph 14(b) of the Rules.
A. Identical or Confusingly Similar
The Panel notes the Lakeshore Registration claims a first use date and first use in commerce date of April 1, 2005, ten months after Respondent registered the Disputed Domain Name. The Panel also notes the two Intent-to-Use Applications include no first use date recited in connection with intent-to-use and Complainant has not otherwise asserted any. The present record is also insufficient to enable this Panel to conclude with confidence that the LAKESHORE EAST marks, and in particular the LAKESHORE EAST word mark, had acquired secondary meaning or was famous at the time that Respondent registered the Disputed Domain Name (or as of the date of this Decision). In short, there is insufficient evidence to support such a finding.
Nevertheless, the record (the 768 Application and the 803 Application) indicates that Complainant used a LAKESHORE EAST word mark and a LAKESHORE EAST-related design mark in commerce (June 2000) for real estate-related services prior to the date that Respondent registered the Disputed Domain Name (June 16, 2004). In view of Respondent’s failure to submit a response, Respondent has neither challenged Complainant’s asserted first use dates nor the distinctiveness of these LAKESHORE EAST marks. The Panel therefore finds that Complainant holds sufficient rights in the mark LAKESHORE EAST in connection with real estate-related services for the purpose of the present proceedings. It is well-settled that the Policy is applicable to unregistered marks. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (finding that the Policy is applicable to unregistered trademarks). By failing to file a response, Respondent has not contested Complainant’s asserted service mark rights in the LAKESHORE EAST mark.
This Panel also finds that the Disputed Domain Name is substantially identical or confusingly similar to Complainant’s LAKESHORE EAST word mark because it fully incorporates that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). Moreover, the addition of the generic term “realty” does not obviate the confusing similarity between the Disputed Domain Name and Complainant’s LAKESHORE EAST mark. See, e.g., Oki Data Americas, Inc. v. Albert Jackson,WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in was confusingly similar to complainant’s trademark OKIDATA); Deutsche Telekom AG v. Jurgen Muller,WIPO Case No. D2005-1340 (“[T]he Panel finds that the prefix ‘www’ is not to be considered a factor of differentiation as it has no distinguishing capacity when included in a domain name.”); Aventis v. Woofer Smith,WIPO Case No. D2003-0338 (“The Respondent has only added ‘www’ before the trademark. The inclusion in the domain name of the prefix ‘www’ does nothing to distinguish it from the trademark.”). Further, the word “realty” is associated with the Complainant and its business, strengthening rather than weakening the confusing similarity. Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (concluding that when an additional word is “associated with the Complainant and its renowned activities” the additional word strengthens rather than weakens the confusing similarity).
For these reasons, the Panel concludes that the Disputed Domain Name is confusingly similar to the LAKESHORE EAST mark, a service mark in which Complainant has rights.
B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Policy, Paragraph 4(c).
Complainant contends that Respondent has no rights or legitimate interest in the Disputed Domain Name. Respondent has not submitted any arguments or evidence in rebuttal.
Nothing in the record suggests that Respondent is commonly known by the Disputed Domain Name or that, before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services. Complainant has asserted that Respondent never received a license to use the mark from Complainant. Moreover, there is no evidence that Respondent is making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert customers or to tarnish the LAKESHORE EAST mark. Indeed, the undisputed record indicates that Respondent registered the Disputed Domain Name approximately four years after Complainant established common law rights in its LAKESHORE EAST mark through use.
Moreover, the fact that Respondent included the word “realty” in the Disputed Domain Name evidences that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name. In short, there is no evidence from which the Panel could conclude that Respondent has rights to or legitimate interests in the Disputed Domain Name.
For these reasons, in accordance with the Policy, Paragraph 4(a)(ii), the Panel finds that Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
Complainant also argues that Respondent registered and used the Disputed Domain Name in bad faith. The Panel has taken notice that, as of the date of this Decision, the Disputed Domain Name resolves to an advertising portal with real estate services-related links. In other words, Respondent appears to be presently using the Disputed Domain Name in order to attract Internet traffic to a web site for commercial gain (pay-per-click revenue), which previous WIPO panels have concluded may support a finding of bad faith. See Arla Foods amba v. Jucco Holdings,WIPO Case No. D2006-0409 (“the practice of registering a domain name and using it to redirect a user to a website which is used for the sale of competing services constitutes evidence of registering and using a trademark in bad faith.”) However, Complainant did not assert in its submissions that Respondent has used and/or is using the Disputed Domain Name in connection with a “parked page” generating revenue for commercial gain (pay-per-click revenue). Therefore, the Panel will not consider Respondent’s “parked page” in rendering its decision. Indeed, the Panel need not rely on Respondent’s “parked page” to conclude there was bad faith in this case.
As already discussed, the Panel finds that Respondent was aware of Complainant and its business when Respondent registered the Disputed Domain Name because Respondent combined the LAKESHORE EAST mark with the word “realty” in the Disputed Domain Name, a word associated with the Complainant and its business. Compare PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Cliquot Ponsardin, Maison Fondee en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).
Moreover, the Panel finds it unlikely that there is any legitimate reason for Respondent’s choice of the Disputed Domain Name incorporating Complainant’s LAKESHORE EAST mark; Respondent elected not to respond to the Complaint and present arguments or evidence for the Panel to consider. See Justerini & Brooks Limited v. Juan Colmenar Rueda as Registrant “Colmenar”, aka “jokolm” / “JCR co.”,WIPO Case No. D2000-1308 (finding that, given the notoriety and distinctiveness of the JUSTERINI & BROOKS trademark, it was not one which another trader would legitimately choose unless the trader sought to create an impression of association with that complainant, create an impression of association with JUSTERINI & BROOKS products, attract business from that complainant, misleadingly divert members of the public, and/or damage the reputation and business of that complainant); eBay, Inc. v. SGR Enterprises and Joyce Ayers,WIPO Case No. D2001-0259 (“[I]t is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate.”); Telstra Corporation. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (the fact that the complainant was “widely known” by its trademarked name contributed to the panel’s conclusion that “it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would be legitimate”).
Therefore, the Panel concludes that the bad faith element of the Policy is satisfied in this case.
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 Disputed Domain Name, be transferred to Complainant.
Doc 1498558 Ver 1
Steven M. Auvil
Sole Panelist
Dated: February 5, 2008
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