The Complainant is Lindeva Living Trust. Kim W. Lu Trustee of Los Angeles, California, United States of America (“United States”), represented by Miller & Miller, United States.
The Respondent is Domain Privacy Service FBO Registrant of Provo, Utah, United States / 510 Pacific Ave, Pacific Venice of Venice, California, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2015. On June 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 1, 2015, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on July 1, 2015.
The Center verified that the Complaint together with the amendment to 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 proceedings commenced on July 2, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 22, 2015. On July 3, 2015, the Respondent submitted emails to the Center. On July 8, 2015, the Respondent submitted a further email to the Center.
The Center appointed William R. Towns as the sole panelist in this matter on July 17, 2015. 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 is the owner of an eight-unit apartment building located at 510 Pacific Avenue in Venice, California. The Complainant acquired this rental property on or about June 2014 from the prior owner, subject to existing leases and tenancies.
The disputed domain name was registered on September 3, 2014, utilizing a privacy protection service, but the true registrant appears to be a tenant or occupant of the apartment building. The disputed domain name resolves to a website with content critical of the Complainant’s management of the property, including allegations that the Complainant is “bullying” the tenants, and advises prospective tenants to look elsewhere. The Complainant has taken legal action seeking to enjoin the Respondent’s use of the website and to recover damages. The Complainant’s lawsuit is pending. 5. Parties’ Contentions A. Complainant
The Complainant submits that “510 Pacific Avenue” is an unregistered common law mark in which the Complainant has rights, and that the disputed domain name is identical or confusingly similar to the mark. According to the Complainant, 510 Pacific Ave is unique to one property, and has been consistently used for over 50 years to market to the public specific rental property in Venice, California, which was acquired by the Complainant in June 2014. The Complainant submits that Internet searches for “510 Pacific Avenue” together with “Venice” results in hundreds of links to the Complainant’s property and none other.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name, which the Complainant asserts was “created for the clear and obvious purpose of deceiving potential tenants” searching for the Complainant’s rental units. The Complainant further submits that the Respondent’s use of the disputed domain name is intended to confuse and mislead the public and consumers, has no legitimate purpose, and aims only to interfere with the commercial activities of the lawful owner of the property.
In view of the foregoing, the Complainant asserts that the Respondent registered and is using the disputed domain name in bad faith. The Complainant also argues that the Respondent’s use of a privacy protection service is evidence of bad faith, and that underlying WhoIs information provided by the Respondent to the Registrar is incomplete or fictitious, and also indicative of bad faith. B. Respondent
The Respondent submitted an email to the Center on July 3, 2015. In reply to an email inquiry from the Center, the Respondent by email dated July 8, 2015 confirmed that these emails constituted the Respondent’s “official response.” The Respondent contends that there is nothing unique about the street address “510 Pacifica Avenue”, asserting that the same street address is used with properties in at least seven other locations in California. The Respondent asserts that all content on the website to which the disputed domain name resolves is truthful, and that the actions of the Complainant, including installation of surveillance cameras pointed at the tenants’ units, has caused emotional distress for the tenants. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses whether the Complainant has established trademark or service mark rights in “510 Pacific Avenue”. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218.
In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
For purposes of paragraph 4(a)(i) of the Policy, and consistent with United States trademark law, in cases involving claimed common law or unregistered trademarks that are descriptive in nature, a complainant must present convincing evidence of secondary meaning or acquired distinctiveness. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.7. The Panel considers “510 Pacific Avenue” to be prima facie descriptive in nature, as it reflects the physical or street address of the property owned by the Complainant.
For purposes of the present Policy proceeding, the Panel concludes that the Complainant has failed to establish unregistered or common law trademark or service mark rights in “510 Pacific Avenue”. The Complainant has submitted no evidence of her use of “510 Pacific Avenue” in a manner that would likely be recognized by a relevant section of the public as an indicator of source for goods or services, as opposed to the mere physical address of the rental property. The Panel notes, through its own Internet search for “510 Pacific Ave”, that while there are numerous real estate agents whose online listings include the rental property at 510 Pacific Avenue in Venice, California, there is nothing in the record before the Panel to indicate that visitors to such websites are likely to appreciate such online listings as doing more than describing the property. The Complainant has not made a sufficient showing to establish that this property address has acquired secondary meaning as an indication of source for goods or services.
In view of the foregoing, the Panel concludes that the Complainant has not satisfied her burden under paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests / Registered and Used in Bad Faith
In view of the Panel’s determination above under paragraph 4(a)(i) of the Policy, it is unnecessary for the Panel to address issues of rights or legitimate interests with respect to bad faith registration and use of the disputed domain names under paragraph 4(a)(ii) and (iii) of the Policy. Having said that, given the content at the website to which the disputed domain name points, it is clear that the Respondent is claiming free speech as a defense under the Policy. Even if the Complainant were able to meet the first element test, she would likely fail under the second and third elements. Moreover the Panel notes that the present decision does not prevent the Parties from seeking redress in a court of competent jurisdiction. 7. Decision
For the foregoing reasons, the Complaint is denied.
William R. Towns
Sole Panelist
Date: July 31, 2015
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