The Complainant is Jamestown Warehouse Row, L.P. of Atlanta, Georgia, United States of America (“U.S.”), represented by Sutherland Asbill & Brennan, LLP, U.S.
The Respondent is Derek Rayburn, Scenic City Productions Studios of Chattanooga, Tennessee, U.S. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2014. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. Also on September 24, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and providing 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 the Respondent of the Complaint, and the proceeding commenced on September 30, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2014. The Respondent did not submit a formal response, but sent an email to the Center that was received on September 25, 2014.
The Center appointed Carol Anne Been as the sole panelist in this matter on October 31, 2014. 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
The Complainant provided copies of webpages, articles and an agreement evidencing that the Complainant owns a community retail marketplace in Chattanooga, Tennessee, known as “Warehouse Row”, and that the marketplace has been operating under that name (through a predecessor of the Complainant) since 1989. The Complainant purchased the WAREHOUSE ROW property and trademark in 2006. The Complainant owns the domain name which was registered in 2006, and operates a website for the Warehouse Row retail marketplace at that domain name.
According to the WhoIs records, the disputed domain name was created on November 19, 2002, and the Respondent’s address is in Chattanooga, Tennessee. 5. Parties’ Contentions A. Complainant
The Complainant alleges that its predecessor established common law trademark rights in the mark WAREHOUSE ROW prior to the Respondent’s registration of the disputed domain name and that the disputed domain name is identical or confusingly similar to the WAREHOUSE ROW trademark. The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
In addition to the evidence specified above, to support these contentions the Complainant alleges that the disputed domain name resolves to a webpage for an online retailer offering Chattanooga-themed clothing and apparel, which competes with the Complainant’s tenants that lease space at the Warehouse Row retail marketplace. B. Respondent
The Respondent did not submit a formal response to the Complainant’s contentions, but did send a three-sentence email to the Center stating that he has “legitimate reason to hold” the disputed domain name, and that the site at the disputed domain name “is for the private backend use for a property in Austin, Texas, called ‘Warehouse Row’ and has nothing to do with [the Complainant’s] Chattanooga Tennessee location called ‘Warehouse Row’.” 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established that it holds rights in the trademark WAREHOUSE ROW and that it and its predecessor(s) use and have used such trademark in connection with a community retail marketplace in Chattanooga, Tennessee, since prior to the Respondent’s registration of the disputed domain name. See, e.g., Uitgerverij Crux v. W. Frederic Isler,WIPO Case No. D2000-0575 (“A fundamental principle of trademark law is that rights in a trademark can be acquired through use, and such rights exist even though the trademark may not be registered”); Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322 (“On the other hand, even if Complainant’s mark … acquired goodwill and reputation only in a limited academic field, this would still be sufficient to establish common law trademark rights within the meaning of paragraph [4](a)(i) of the Policy”).
The disputed domain name consists of the Complainant’s exact WAREHOUSE ROW mark.
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark. B. Rights or Legitimate Interests
The Complainant claims that the Respondent is not commonly known by and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Rather, the Complainant claims that the Respondent’s interest in the disputed domain name is to trade off of the goodwill of the WAREHOUSE ROW trademark, and profit by diverting customers seeking information regarding clothing retailers that are tenants in the Complainant’s Warehouse Row retail market, to the disputed domain name, which resolves to a webpage for an online retailer offering Chattanooga-themed clothing and apparel that compete with the goods of Complainant’s tenants. As the Complainant notes, such use does not constitute legitimate, noncommercial use, or fair use of the disputed domain name.
The Panel is satisfied that the above establishes the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The burden of production therefore shifts to the Respondent to come forward with any rebuttal evidence demonstrating its rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions.
While the Respondent claimed in an email to the Center that it has a legitimate reason to hold the domain name in connection with the backend use for a property in Texas called “Warehouse Row”, the Respondent has not provided any evidence to support this claim nor has the Respondent demonstrated other rights or legitimate interests in the disputed domain name. Following receipt of the Respondent’s email, the Center advised the Respondent that the Response would be due within twenty days of the commencement of the administrative proceeding. The Center also provided the Respondent with a link to the Response filing guidelines. The only other communication from the Respondent, available in the record, is a second email confirming that the Respondent received the Complaint. While it is possible that there may be additional facts and evidence known to the Respondent, the Respondent has chosen not to submit a Response, any evidence or additional facts to support the statement in the email, or an explanation as to why it did not do so.
Thus, the Respondent has failed to rebut the Complainant’s prima facie case by providing the Panel with any evidence to show that the Respondent has rights or legitimate interests in the disputed domain name. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064 (“A number of panels have held that the burden on a complainant regarding the second element is necessarily light, because the nature of the registrant’s rights or interests, if any, in the domain name lies most directly within the registrant’s knowledge. Other panels have held that once the complainant makes a prima facie showing that the registrant does not have rights or legitimate interest in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name”); Allianz, Compañía de Seguros y Reaseguros S.A. v. John Michael,WIPO Case No. D2009-0942 (“In short, Complainant has satisfied its burden of providing sufficient evidence to show that the Respondent lacks rights to or legitimate interests in the disputed domain name, and the Respondent has failed to provide the Panel with any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the disputed domain names”).
Thus, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Evidence of bad faith arises when, among other things, a respondent attempts to attract, for commercial gain, users to its website by creating a likelihood of confusion with the complainant’s mark. As panels have consistently noted, “the relevant issue is... whether in all the circumstances of the case, it can be said that the Respondent is acting in bad faith.” Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
According to the Complainant, the website at the disputed domain name redirected users to a webpage for an online retailer offering Chattanooga-themed clothing and apparel, which competes with the Complainant’s tenants that lease space at the Complainant’s Warehouse Row retail marketplace. The Respondent’s use of the disputed domain name in such a manner is likely to cause confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name, in an apparent attempt to capture traffic from consumers looking for information regarding the Complainant’s Warehouse Row marketplace or the Complainant’s website, and to direct such consumers instead to the disputed domain name, which resolved to an online retailer selling competitive goods.
Further, the disputed domain name was created after the Complainant’s predecessor had been using, and likely obtained common law trademark rights in, its WAREHOUSE ROW mark. The address listed for the Respondent, in the WhoIs records for the disputed domain name, is in the same city as the Complainant’s Warehouse Row retail market, Chattanooga, Tennessee. The Complainant provided evidence indicating that its Warehouse Row retail marketplace is a well-known destination in Chattanooga. Thus, it is unlikely that the Respondent was unaware of the Complainant’s WAREHOUSE ROW trademark when it registered the disputed domain name.
While the Respondent’s assertion in his email to the Center, if true, would weigh against a finding of bad faith, absent any evidence from the Respondent to support the assertion despite the opportunity to provide such support, the Panel may infer that the Respondent cannot refute the Complainant’s reasonable assertions of bad faith. See, e.g., MC Enterprises v. Mark Segal (N),WIPO Case No. D2005-1270 (“Although a respondent is not obliged to participate in a domain name dispute, if it were to fail to do so, it would be vulnerable to the inferences that flow naturally from a complainant’s not unreasonable assertions of fact. The information provided by the Complainant, including the Respondent’s history, suggest bad faith in the acquisition and use of the subject domain name. The Respondent has done nothing to supplant that suggestion”); The Vanguard Group v. Lorna King, supra (“There is no direct evidence that the Respondent knew of Complainant or its VANGUARD trademark, or intended to use the disputed domain name to confuse and divert Internet users. Nevertheless, the Respondent’s knowledge and intention may be determined by common sense inferences from circumstantial evidence”); The Gates Corporation v. WhoisGuard, Embelle Litumbe,WIPO Case No. D2013-0231.
Thus, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
For 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 the Complainant.
Carol Anne Been
Sole Panelist
Date: November 13, 2014
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