The Complainant is International Council of Shopping Centers, Inc. of New York, New York, United States of America (“United States”), represented by Scoolidge Peters Russotti & Fox LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Ashutosh Negi of Delhi, India. 2. The Domain Name and Registrar
The disputed domain name (the “Disputed Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2019. On February 5, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 6, 2019, 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 February 7, 2019, 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 amended Complaint on February 15, 2019.
The Center verified that the Complaint, together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was March 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 11, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on March 25, 2019. 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 relevant facts are straightforward and can be summarized as follows.
The Complainant was established in 1957 as a trade organization for the shopping center industry. Today, it has over 70,000 members in 100 countries, including shopping center owners, managers, investors, retailers, brokers, academics, and public officials. It provides research, events, and publications related to the shopping center industry. It conducts conferences and educational seminars for its members and the public in both the United States and internationally. It advertises its services and provides content and news to members and the public through its website using the “ICSC.org” domain name. It holds an annual convention in Las Vegas, Nevada known as RECon. RECon draws over 35,000 attendees comprised of real estate and other professionals involved in the shopping center business. In 2007, it began using the “RECon” mark in commerce for the provision of services related to shopping centers. It registered the word mark RECON with the United States Patent and Trademark Office on March 17, 2009, under Registration No. 3,590,485 (the “RECON trademark”). The RECON trademark is registered in Class 35 for “arranging and conducting business conferences for the retail real estate industry and shopping center industry.”
The Disputed Domain Name was registered by the Respondent on October 8, 2018. At the date of this decision it does not appear to resolve to any website. However evidence filed with the Complaint shows that it has previously resolved to a website (the “Respondent’s Website”) which contains some rudimentary information about the Complainant’s 2019 conference and then advertising links to hotels and other services. If a visitor scrolls down several pages a disclaimer is found reading “We are not official society and neither associated with RECON 2019. We provide information related to the event and accommodation to the participant. For More Information Visit RECON 2019 Official Website. Click Here .” 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Name is confusingly similar to the RECON trademark trademark in that it simply adds the figures 2019, simply referring to a given year.
The Complainant says that the Respondent has no rights or legitimate interests in the term “RECON”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Name is in bad faith. It says it was clearly chosen with knowledge of the Complainant and its conference and is obviously trying to attract visitors who will believe it to be associated with the Complainant, and the Respondent then hopes to derive advertising revenue by promoting links to hotels and other services. B. Respondent
No Response has been filed. 6. Discussion and Findings
Preliminary Matters
The Panel notes that no communication has been received from the Respondent. However given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“Registration Private”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.4.5, as follows:
“Panel discretion
In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent to be Ashutosh Negi and references to “the Respondent” are to that person.
Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the RECON trademark. The Panel finds the Disputed Domain Name is confusingly similar to this trademark. It simply adds the term 2019 clearly designating a specific year. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive or geographic term (such as here “2019”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006‑0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
The Panel finds the RECON trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation and where there is no evidence of anyone else using that term
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, 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) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is 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.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Name or to use the RECON trademark. The Complainant has prior rights in the RECON trademark which precede the Respondent’s acquisition of the Disputed Domain Name. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Name (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003‑0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Name. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Name and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel concludes that (iv) applies as the Disputed Domain Name is likely to attract traffic because of confusion with the Complainant’s RECON trademark, and the Respondent derives commercial gain as a result. The Respondent’s Website is clearly intended to attract visitors who confuse it for a website operated by or with the permission of the Complainant, or who are looking for information about the Complainant’s 2019 conference. The Respondent’s website contains click through links to hotels. The Respondent presumably earns “click through” linking revenue as a result; even if not, it is clearly intended to confuse. It is well established that where a domain name is used to generate revenue in respect of “click through” traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith, see for example Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc.,WIPO Case No. D2006-1315; Owens Corning v. NA,WIPO Case No. D2007-1143; McDonald’s Corporation v. ZusCom,WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna,WIPO Case No. D2007-1912; Rolex Watch U.S.A., Inc. v. Vadim Krivitsky,WIPO Case No. D2008-0396.
The disclaimer on the Respondent’s Website does not alter this analysis – see WIPO Overview 3.0 at section 3.7 “On the other hand, where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, panels may consider the respondent’s use of a disclaimer as an admission by the respondent that users may be confused”. The Panel considers this to be such a case.
As a result the Panel finds that the Disputed Domain Name has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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.
Nick J. Gardner
Sole Panelist
Date: April 8, 2019
Full & Egal Universal Law Academy