WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION South Campus Development Team L.L.C. v. Avance Consulting, Inc. Case No. D2008-1898 1. The Parties
Complainant is South Campus Development Team L.L.C. (SCDT), Chicago, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, United States.
Respondent is Avance Consulting, Inc., Chicago, Illinois, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 11, 2008. On December 12, 2008, the Center transmitted by e-mail to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On December 15, 2008, 1&1 Internet AG transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2009. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 8, 2009.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 20, 2009. 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.
On January 21, 2009, the Panel issued Administrative Panel Procedural Order No. 1, which stated in relevant part:
“With reference to paragraph 11 of the Complaint, the Panel requires that Complainant provide the Center [by January 24, 2009] with a copy of the March 2000 License Agreement between University Village, Inc. and Complainant for the Panel's review.”
Complainant complied with this Order. 4. Factual Background
Since 1958, University Village, Inc. has used the UNIVERSITY VILLAGE mark in connection with its shopping center and real estate management services. In December 1990, University Village, Inc. obtained United States trademark Registration No. 1,627,572 for the mark UNIVERSITY VILLAGE in connection with “shopping center services and real estate management services” in International Class 36.
Complainant develops and manages real estate in the University Village development in Chicago, Illinois. In March 2000, University Village, Inc. executed a License Agreement with Complainant granting Complainant an exclusive license to use the UNIVERSITY VILLAGE mark in connection with a new UNIVERSITY VILLAGE branded residential real estate development in Chicago. Since 2000, Complainant has used and promoted the UNIVERSITY VILLAGE mark in connection with a residential development near the University of Illinois at Chicago. The development comprises academic facilities, student housing and private residential development encompassing 86 acres of land.
On October 19, 2002, Respondent registered the Domain Name. Complainant never consented to this registration by Respondent.
The website to which the Domain Name resolves features the name “University Village” and contains various photos of Chicago's skyline and scenes in University Village. The site also contains information about local amenities and attractions. There are also various links at the site, including one designated as “Looking to Buy?”
In or about January 2008, Complainant became aware of Respondent's registration of the Domain Name. On January 3, 2008, Complainant's counsel sent a letter to Respondent via Federal Express to the address listed in the registration record for the Domain Name, demanding that Respondent cease use of that Domain Name and immediately transfer it to Complainant.
Respondent did not reply to Complainant's initial demand letter. Counsel therefore sent another letter via Federal Express to Respondent on January 17, 2008. Again, Respondent did not reply to the letter.
In or about February 2008, Complainant's counsel reached Mr. Chappa a representative of Respondent. Mr. Chappa told Complainant's counsel that Respondent had not received either of the two previously sent letters regarding the Domain Name. Consequently, on February 22, 2008, Complainant's counsel both e-mailed Mr. Chappa and had Mr. Chappa personally served with a third letter enclosing the first two letters.
Complainant did not receive a reply to its third letter.
On October 20, 2008, Complainant's counsel reached Mr. Chappa by telephone. Mr. Chappa indicated that Respondent was unwilling to cease use of the Domain Name and transfer it to Complainant unless Complainant paid Respondent an amount “substantially in excess of the nominal costs associated with registering a Domain Name.” Counsel sent Respondent a letter on October 24, 2008 purporting to confirm the contents of the October 20, 2008 telephone conversation. There is no indication in the record that Respondent replied to this last correspondence. 5. Parties' Contentions A. Complainant
Complainant's factual contentions are substantially set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Complainant, by virtue of the March 2000 License Agreement discussed above, has rights in the federally registered mark UNIVERSITY VILLAGE. The Domain Name incorporates the mark in its entirety and adds the geographic indicator “Chicago”. In the Panel's view, the Domain Name is confusingly similar to the mark in which Complainant has rights. In numerous cases under the Policy, it has been held that a domain name comprised of a mark and a descriptive geographic indicator may be confusingly similar to the mark in question. See, e.g., VeriSign, Inc. v. Nandini Tandon,WIPO Case No. D2000-1216 (November 16, 2000) (transferring and ).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(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 [Respondent] (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 [Respondent] 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.”
As noted above, Respondent did not file a Response and, as far as the record indicates, did not attempt to justify or explain its conduct in the context of the telephonic and written communications with Complainant's counsel. Hence, despite having the opportunity to do so on multiple occasions, Respondent did not attempt to rebut any of Complainant's assertions or justify its conduct. Under these circumstances, the Panel concludes that Complainant did not authorize Respondent to use the mark UNIVERSITY VILLAGE.
There is no evidence that Respondent is commonly known by the disputed Domain Name. Moreover, under the circumstances of this case, Respondent's maintenance of a website featuring the UNIVERSITY VILLAGE mark cannot be considered a bona fide use under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the domain name in a corresponding website which trades on the other party's mark do not confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu,WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on Respondent's website or location.
Complainant relies chiefly on paragraphs 4(b)(i) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument.
With respect to paragraph 4(b)(i), Complainant alleged in its Complaint and in correspondence to Respondent, that Respondent had demanded payment substantially in excess of its out-of-pocket costs as a condition of transferring the Domain Name. Respondent did not rebut these allegations, and the Panel concludes that the allegations are accepted as true. Hence, Respondent is in bad faith under paragraph 4(b)(i).
With respect to Complainant's argument under paragraph 4(b)(iv), the Panel finds it more likely than not that Respondent had Complainant's mark in mind when registering the Domain Name. In addition to the confusing similarity between the mark and the Domain Name, Respondent's website appears to solicit consumers interested in purchasing property at University Village in Chicago. It is reasonable to presume that Respondent does so for commercial gain. The Panel therefore concludes that Respondent registered the Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to his website by creating confusion between the Domain Name and Complainant's mark.
Accordingly, because bad faith registration and use exists under paragraphs 4(b)(i) and 4(b)(iv), the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 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 Complainant.
Robert A. Badgley
Sole Panelist
Dated: January 29, 2009
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