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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Mills Limited Partnership v. Michael G. Miller
WIPO Case No. D2000-1577
1. The Parties
Complainant is The Mills Limited Partnership, a Delaware limited partnership with its principal place of business in Arlington, Virginia, U.S.A. ("Mills").
Respondent is Michael G. Miller, an individual residing at 7522 Teague Road, Hanover, Maryland, U.S.A. ("Miller").
2. Domain Names and Registrar
The domain names in issue are:
The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
The WIPO Arbitration and Mediation Center (the Center) received Mills’s complaint via email on November 15, 2000, and in hard copy form on November 20, 2000. After requesting and receiving an amendment to the complaint, the Center verified that the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). Mills made the required payment to the Center. The formal date of the commencement of this administrative proceeding is December 11, 2000.
On November 27, 2000, the Center transmitted via email to NSI a request for registrar verification in connection with this case. On December 1, 2000, NSI transmitted via email to the Center NSI’s Verification Response, confirming that (1) the registrant of each domain name in issue is Miller, (2) each domain name registration in issue is in "Active" status, and (3) NSI’s 5.0 Service Agreement is in effect with regard to the first two domain names, and NSI’s 4.0 Service Agreement is in effect with regard to arundelmillsblvd.com.
On December 4, 2000, the Center requested that Mills submit an amendment to the complaint. On December 5, 2000, the Center received the amendment via email, and on December 7, 2000, in hard copy.
On December 11, 2000, the Center transmitted Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint and the amendment to the Complaint, to Miller. Inter alia, the Center advised that the response was due by December 30, 2000, pointed out the response should be in accordance with specified rules, and described the consequences of a default if the response was not sent by that date.
On December 30, 2000, the Center received via email Miller’s "reply" or "response" to the complaint, accompanied by a request for a "10 day extension." On January 5, 2001, the Center received a hard copy version of the "reply" or "response".
On January 12, 2001, the Center notified the parties of the appointment of the undersigned as sole Panelist and that the due date for the decision was January 25, 2001.
On January 29, 2001, the Center advised the parties that the Panelist had requested an extension to February 12, 2001 to render the decision.
On January 29, 2001, the Center received from Miller an email supplementing Miller’s earlier response. On January 29, 2001, the Center received via email Mills’s objection to Miller’s supplemental submission.
On February 16, 2001, at the request of the Panel, the Center transmitted to the parties Procedural Order No.1. At the same time, the Center advised the parties that the new decision date would be March 9, 2001. The Order requested further information from Mills concerning Mills’s applications to register certain marks. On February 16, 2001, Mills’s counsel responded to the Order.
Also on February 16, 2001, the Center received an inquiry via email from Miller as to certain documents. On February 27, 2001, the Center responded to Miller’s inquiry.
4. Factual Background and Parties’ Contentions
a. The Trademarks
The complaint is based on the service mark ARUNDEL MILLS and the "family of ‘MILLS’ marks associated with shopping centers across the United States."
The family of MILLS marks includes service marks registered on the Principal Register in the United States Patent and Trademark Office. Copies of registrations appear at Annex C to the complaint. Copies of registrations for THE MILLS appear at Annex D to the complaint. It appears from the complaint that ARUNDEL MILLS is not yet the subject of a United States registration.
Mills avers it has developed "extremely valuable goodwill and an outstanding reputation" in its MILLS family of marks. Mills avers specifics as to the malls associated with its POTOMAC MILLS and SAWGRASS MILLS marks.
Mills avers it is currently constructing additional MILLS malls, including the ARUNDEL MILLS shopping center in Anne Arundel County in Maryland, U.S.A. Mills avers it broke ground on the ARUNDEL MILLS project as early as July 1, 1999, and that project was scheduled to open November 17, 2000. (Footnote 1) Since before August 10, 1998, Mills avers it has been engaged in leasing activities to develop tenants for the mall. The shopping center is to include more than 215 stores, including "designer and name brand merchandise," such as Polo, Calvin Klein, Nordstrom Rack, and Off 5th-Saks Fifth Avenue. The shopping center is to be the first "fully enclosed retail and entertainment destination in Anne Arundel County ...". It is expected to attract approximately 18 million visitors per year.
Mills avers that, through mid-September, 2000, Mills "has spent approximately $500,000 to promote" the ARUNDEL MILLS shopping center. Mills avers it produces promotional material using its ARUNDEL MILLS service mark "on signage at the site ... and on its Internet web site located at http://www.millscorp.com/arundel/." Copies of promotional material are reproduced at Annex E to the complaint.
Mills avers that prior to breaking ground, and as early as December 10, 1997, the shopping center had been the subject of "numerous" articles in the press. Copies of four articles from Annapolis and Baltimore papers, dated December 10, 1997, and
February 6, April 24, and July 3, 1998, appear at Annex F to the complaint.
In May 1999, and February and April 2000, Mills filed applications in the United States Patent and Trademark Office ("USPTO") to register ARUNDEL MILLS as a service mark. Copies of three applications appear at Annex G. Mills avers that the first application was published for opposition December 14, 1999, there was no opposition, and a notice of allowance issued March 7, 2000.
Mills avers Mills has developed "extremely valuable goodwill and an outstanding reputation in its MILLS family of marks." Mills asserts "[t]he marks are famous and are an indication of high quality and of origin exclusively [sic] with the MILLS family of shopping centers." Mills avers that it "has established rights" in the ARUNDEL MILLS service mark "as an additional member of its family of MILLS marks ...".
Mills argues it is beyond dispute that Mills has rights in the ARUNDEL MILLS service mark. Mills cites WIPO Case No. D2000-0040 for the proposition that the "pending federal application for registration gives rise to the presumption that it [Mills] is the owner of the ARUNDEL MILLS mark."
Mills asserts that the "pre-opening promotions and publicity" for the ARUNDEL MILLS mall show that Mills has rights in the ARUNDEL MILLS service mark, citing WIPO Cases Nos. D2000-0189 and -0253, as well as three United States judicial opinions.
Mills asserts also that, because Mills has a family of MILLS marks which is older than the domain names in issue, the family of marks also establish Mills’s "rights and priority" in the ARUNDEL MILLS service mark.
B. The Complaint Re Respondents’ Activities
Mills avers that all three elements of Policy Paragraph 4.(a) are met because:
1. the three domain names are identical or confusingly similar to a trademark in which Mills has rights;
2. Mills has no rights or legitimate interests in respect of the domain names; and
3. the three domain names were registered and are being used in bad faith.
Mills requests that the three domain names in issue be transferred to Mills.
Mills avers Miller owns land adjacent the shopping center site. Mills avers major stories about the Arundel Mills shopping center appeared in The Washington Post and The Baltimore Sun on August 9, 1998 (copies at Annex H). On August 10, 1998, Miller registered the domain names arundelmills.com and arundel-mills.com.
Mills avers Miller is not a licensee of Mills and is not authorized to use the ARUNDEL MILLS service mark, and Miller registered the domain names "without the authorization, knowledge or consent" of Mills.
Mills avers "[t]he second level domain names are identical [sic]" to the ARUNDEL MILLS service mark.
In addition to the three domain names in issue, Mills avers Miller has registered "at least three other domain names that include the MILLS mark," viz. millsguide.com, millsmarket.com, and enterthemills.com. (Footnote 2)
Mills avers that in March 1999, Mills sought to register arundelmills.com and arundel-mills. com and that Miller had already done so. Mills avers that a Mills representative, Philip Kroskin, "contacted" Miller in an attempt to have the two domain names transferred to Mills. Miller allegedly responded he "didn’t want anything for it" and he "registers names and helps people build web sites." Miller refused to transfer the domain names. Miller allegedly asserted he did not know about Arundel Mills and came up with the domain names "independently".
Mills avers that, on April 24, 1999, The Maryland Gazette published an article about construction of a road adjacent the ARUNDEL MILLS mall, to be called "Arundel Mills Boulevard". On April 24, 1999, Miller registered the domain name arundelmillsblvd.com -- without the "authorization, knowledge or consent" of Mills.
Mills avers that no active web site is associated with any of the three domain names in issue. Mills states that each site has a "Welcome to ... " note. Copies of print-outs appear at Annex K. (Footnote 3)
Mills avers (Paragraph B.35 (Footnote 4)) that in May 2000, Mr. Kroskin, together with a Mills vice president, Thomas G. Archer, Jr., held several meetings with Miller and his wife regarding the purchase of Miller’s land adjacent the ARUNDEL MILLS development. Mills avers Mr. Kroskin "did not recall that he had previously spoken" with Miller regarding the domain names in issue and "made no association" between Miller and the domain names. Mills avers that, on May 22, 2000, Mills "made a formal offer for that land." Miller rejected the offer in a letter of May 23, 2000. Mills avers Mr. Archer sent a follow-up letter. (Footnote 5)
Mills avers (Paragraph B.36) that, by letter dated June 9, 2000, Mills’s counsel -- "at the direction of representatives of Complainant who had no knowledge of the discussions with Respondent regarding the possible acquisition of his property" -- demanded that Miller transfer the domain names to Mills. A copy of the June 9 letter appears at Annex L. Mills avers Miller did not respond to the June 9 letter.
Mills avers that "[a] few days later," Mr. Kroskin called Miller regarding the possible real estate purchase. Miller was allegedly hostile and made clear he would not transfer the domain names. Mills speculates that Miller had received the June 9 letter.
Mills avers Miller has used and registered the domain names in bad faith.
Mills avers Miller has no rights or legitimate interests in the domain names.
Mills sets out arguments as to why <arundelmills.com> and <arundel-mills.com> are identical to the ARUNDEL MILLS service mark, and why <arundelmillsblvd.com> is confusingly similar to the mark. Mills cites WIPO Case No D2000-0038, Case No. AF-0145 [sic], WIPO Case No. D2000-0452, WIPO Case No. D2000-0387, WIPO Case No. D2000-0102, WIPO Case No. D2000-0022, and WIPO Case No. D2000-0189.
Mills asserts the domain names in issue are confusingly similar to "the other marks" in Mills’s family of MILLS marks. Mills contends that the use of domain names consisting "essentially of the geographic term ‘Arundel’ followed by ‘Mills’ would be viewed as being related to or associated with" Mills’s family of MILLS marks. Mills cites WIPO Case No. D2000-0042, and WIPO Case No. D2000-0269, as well as WIPO Cases Nos. D2000-0323, 0106, and 0189.
Mills contends that Miller’s having registered the domain names immediately after reading newspaper articles "is an implicit acknowledgment" by Miller that Mills has rights in "the Marks [sic]."
Mills asserts that Miller has never been authorized to use ARUNDEL MILLS in any way, including as part of the domain names in issue. Mills contends that Miller cannot establish "any connection, right, or legitimate interest in" the domain names in issue. (Footnote 6)
Mills contends that Miller’s pattern of registering the domain names in issue immediately following press accounts "leads to the conclusion" that Miller registered the domain names with the intent (1) to later transfer the domain names to Mills as part of the sale of Miller’s land, (2) to use the domain names to obtain leverage during negotiations relating to the sale of Miller’s land, or (3) to attract users to a web site by creating confusion with Mills’s marks. Mills cites WIPO Case No. D2000-0189.
Mills contends that Miller’s knowledge of the ARUNDEL MILLS project, his physical proximity to "his prospective neighbor," and that he "reasonably anticipated a negotiation to sell his land," compels the conclusion that Miller registered the three domain names in issue to prevent Mills "from reflecting its marks in the corresponding domain names."
Mills contends that Miller’s registration of six domain names including the MILLS mark "demonstrates an unmistakable pattern of registered domain names that include the MILLS and/or ARUNDEL MILLS mark." Mills cites WIPO Case No. D2000-0056 and NAF Case No. FA94373.
As for Miller’s alleged assertion that he buys domain names and builds web pages for other people, Mills contends there is "no other conceivable party who would have legitimate interest" in the domain names in issue other than Mills. Mills contends that Miller’s "clear knowledge" of the marks and "the complete lack of any tangible evidence to support Respondent’s claimed business," show that Miller’s explanation as to why he registered the domain names "is a pretext for his true motive," citing WIPO Case No. D2000-0165 and NAF Case No. FA93761.
Citing WIPO Case No. D2000-0003, Mills asserts that inactivity can amount to bad faith, especially in light of the following factors: (1) fame of Mills’s marks, (2) lack of evidence of any actual or contemplated good faith use by Miller, and (3) inability to conceive of any plausible use of the domain names by Miller that would not be illegitimate, citing WIPO Case No. D2000-0155 and six other domain name decisions. On the other hand, Mills contends that the "Welcome to ..." postings on the three web pages are sufficient to establish use, citing WIPO Case No. D2000-0119.
Mills submits that the "acts and circumstances" set out by Mills are more than sufficient to establish bad faith under Paragraph 4(b) of the Policy.
Mills requests that, in accordance with "Paragraph 4(b)(i) of the Policy" the three domain names in dispute be transferred to Mills.
The complaint concludes with the requisite certification, signed by counsel, that the information in the complaint is complete and accurate.
c. The Response
The response comprises 20 pages of averments and argument by Miller, accompanied by copies of documents in 22 separately numbered exhibits plus additional documents attached to the response.
A substantial portion of Miller’s response, and of his exhibits to the response, is directed to matters relating to his real estate, its value and his communications with Mills regarding Miller’s real estate. The Panel summarizes below some of Miller’s contentions and exhibits relating to real estate matters. The Panel deals in greater detail with Miller’s contentions and exhibits relating to the domain names in issue.
Miller avers that Mills "pursued a service mark for Arundel Mills with full prior knowledge that respondent was the long-standing registrant and existing legitimate user of the domain names ArundelMills.com and Arundel-Mills.com for Respondent’s eCommerce business."
Miller asserts Mills’s ARUNDEL MILLS service mark is of limited nature, being confined to "specific graphics and a specific industry (retail shopping centers)."
Miller avers that in the process of "obtaining its service mark in the spring of 2000," Mills "used material omissions," e.g. Mills’ knowledge of the "cyber-squatter" dispute that had occurred and had "ostensibly been resolved ... between August 1998 and March 1999." Also, Mills engaged in bad faith negotiations with Miller, and Miller acted in good faith "in all aspects related to the issues now being arbitrated."
Miller contends Mills is neither the first nor the largest user of the "Mills" mark in connection with shopping centers. "Mills" as used in business is not identified "first & foremost with retail shopping." Mills uses "Mills" only when modified by adjectives and phrases. Miller’s use of arundelmills.com and arundel-mills.com has nothing to do with retail shopping centers. Miller’s use of the terms predates and is unrelated to Mills. "Before ... [Mills] purchased the land on which it has subsequently built its Arundel Mills shopping center, before ... [Mills] had settled on a name for its shopping center, and before ... [Mills] had informed its own Board of Directors and investors that it would proceed with the shopping center ...". Mills was "fully aware of Respondent’s existence, Respondent’s status as registrant of ArundelMills.com and Respondents [sic] good-faith intention to use the ArundelMills.com domain name in Respondent’s own business activities."
Miller argues it is "arrogant and unsound" for Mills to assert that "the anticipated popularity of its real estate projects provides a pre-emptive and/or retroactive right to usurp any phrase that includes the generic term ‘mills’ at such time that this particular ‘Mills company’ determines it has a superior use for a phrase already in use by others."
Pointing to Mills’s use of geographic terms with "Mills", Miller asserts Mills "has no basis to deprive other individuals or companies from attaching adjectives to the word ‘mills’; and has no basis to object to phrases that include ‘mills’ in any business that is clearly distinct from retail shopping centers." Also, Mills has "no entitlement to be the only entity in Anne Arundel County Maryland that incorporates the word ‘Arundel’ in their trade, business or personal uses."
Miller contends Mills "does not have, and can never expect to have a preferential federal right in the un-modified word ‘mills’. Nor can the Complainant claim, or ever expect to achieve, an exclusive or pre-emptive right to create new brands from word combination that include ‘mills’ as a stem."
Miller asserts Mills is neither the exclusive, nor leading user of MILLS in Maryland, the United States or the World. "Mills" is an "inherently generic term whose definitions and usages are infinitely broad ...". In addition --
The Rouse Corporation created the city of Columbia, Maryland and operates the Owings Mills Shopping Center in direct competition with Mills. Mills assumed it would draw customers from the Owings Mills market and named its shopping center "Arundel Mills" years after Owings Mills was built and operating in the Baltimore area. As of the date of the complaint, Miller had been "using the domain name ArundelMills.com for over two years and the words Arundel and Mills for nearly 20 years." Rouse has been "using Owings Mills town center shopping mall for approximately a decade or longer." "Apparently, Complainant is highly tolerant of ‘confusion’ when it works to the advantage of Complainant or the detriment of Complainant’s competitors."
Rouse’s market value is five times Mills’s market value. Mills’s success at "Arundel Mills" depends "critically on Complainant’s ability to induce shoppers to drive straight past the Rouse’s ‘Mills’ to the Complainant’s ‘Mills’." "This is explained in Complainant’s own annual report to investors."
Miller contends Mills cannot reasonably expect deference with respect to the business use of "Mills", especially outside the context of retail shopping destinations. "Larger and more famous brands depend equally on the word ‘Mills’; and these household names co-exist with tens of thousands of smaller more obscure business and personal usages, including the Respondent’s usage of nearly a dozen names that include ‘mills’."
Miller lists General Mills, Cone Mills (and its smaller competitors), Olan Mills, Inc., Purina Mills, EagleMills, and Anheuser-Busch Company (uses www.KingsMill.com domain name, registered since June 29, 1995, to promote its real estate development projects).
Miller never considered opposing the use of "mills" by others, because of the generic and widespread usage of the term -- especially "outside the context of Respondent’s interests which center around leveraging the Internet for African Trade & Development and incubating promising eCommerce concepts domestically."
Miller "regularly, professionally and in good faith, coins phrases and builds new clusters of Internet domain names using strictly generic and/or public domain terms." Miller’s "stems and/or themes" have included, for example: Aroma, Cater, Rent, Mills, Barter, Give, EnterThe, Black, Africa, Vote, Divorce, Care, Time, Health, and Baby.
Miller has previously shared with Mills hard copies of "various business plans, concept papers and web-prototypes" related to Miller’s business initiatives.
Miller asserts that "Hundreds of companies and thousands of individual entrepreneurs," including Miller, have the right to use the term "Mills". Miller lists well over 100 company names that incorporate "Mills", including Alamo Mills, Carolina Mills, Greenwich Mills, Hartford Mills, Indiana Mills, Meadows Mills, none of which is owned by Mills or affiliated with a shopping mall. Others include Bethel Mills (Bethel, VT), Carroll Mills (Carrollton, GA), Columbus Mills (Columbus, GA), Crete Mills (Crete, NE), Greenwood Mills (Greenwood, SC), Hudson Mills (Hudson, NH), Mokena Mills (Mokena, IL), Montgomery Mills (Montgomery, NY), and Spartan Mills (Spartanburg, SC).
Miller urges that Mills cannot argue that Miller is not entitled to use the word "Arundel", and Mills has no basis to argue that its intellectual property rights in "Arundel Mills" predated those of Miller.
Miller contends that Mills’s use of the term "Mills" with various modifiers does not give Mills the exclusive right to use "mills" on the Internet, in any commercial enterprise, or in any retail shopping center. If otherwise, Owings Mills is a violation of Mills’s intellectual property rights.
Miller assert that, in August 1998, when Miller began using the arundelmills.com name, "Arundel Mills" was not a service mark and was no more than "a generic placeholder" term for a project that may or may not have been built.
Miller contends that Mills falsely asserts it had a service mark "Arundel Mills" about August 10, 1998. Mills falsely implies that by August 1998 Mills had decided to build the mall in Anne Arundel County and had decided to name it "Arundel Mills". Miller cites various SEC filings by Mills. Miller asserts that notwithstanding reports filed in November 1998 and January 1999 as to Mills’s projects and proposed projects, it was not until March 31, 1999 that "Arundel Mills"was first referred to in a Mills SEC filing. Miller contends that the reports show that it was only in February 1999 that Mills’s board of directors were convinced to commit to the project.
Miller argues that Mills’s projections as to how successful the Arundel Mills shopping complex may be in 2000-2001 have no bearing on rights established by the parties in 1998 or 1999.
Miller contends the value driver of Mills’s business is the built-out facility, not the mere name of the facility. Mills’s assertions as to having spent $500,000 by September 2000 to promote the name "Arundel Mills" simply says that "prior to March 1999 it had spent virtually nothing on promoting that name and that prior to August 1998 it had spent absolutely nothing promoting the name" -- which Miller "had already begun using in good faith for legitimate business purposes."
Miller avers Mills has registered numerous domain names similar to the domain names and trademarks of others, including domain names arundelmill.com, arundelmillsmall.com and arundelmills.net. The last three will allegedly create confusion with Miller’s domain names and the domain names of other business’s domain names, e.g. arundellhomes.com, arundelbank.com.
Miller argues Mills did not have a service mark "on Arundel Mills" in 1997, 1998 or 1999. "Respondent neither read nor derived any information from the ‘numerous articles’ referred to by Complainant." In any event, "nothing in the articles cited would have imposed any obligations or limited in any way Respondents [sic] ability to freely and aggressively pursue Respondent’s own business interests."
Miller’s business activities are "promotion of Internet Business Strategies, Internet Technology Deployment and utilization of advanced technology in the promotion of Trade & Economic Development in Africa." Miller and Mills "are in fundamentally different businesses .. the notion that a service mark obtained by the one would require abandonment of a similar name by the other is simply false." That "no opposition to the [Mills’s service mark] application was made" must be viewed in light of "the bad-faith negotiations Complainant was conducting with Respondent during that precise period of time." Mills "initiated a series of meetings and information exchanges under the subterfuge of Complainant’s interest in a joint venture with Respondent and/or engaging in an unsolicited real estate transaction with Respondent."
Miller argues Mills’s admissions re the subject of its service mark applications contradict Mills’s claim of exclusivity. "Legally, its marks are only for ‘leasing of shopping center space’, ‘shopping center services’ and ‘leasing of shopping mall space’. Pragmatically, the list of other legitimate users of ‘mills’ marks or domain names, is infinitely long. Chronologically, any rights in ‘Arundel Mills’ in particular are by Complainant’s own admission ‘pending applications for registration, promotional efforts and actual construction of the ... shopping center.’ All such actions post-date Respondent’s commencement of proper, good-faith and legitimate use of ArundelMills.com and Arundel-
Mills.com." Miller then lists 23 exemplary domain names registered between
January 11, 1996 and July 21 1999 and which include "Mills" in the domain name, e.g. --
Miller maintains a primary residence as well as a full time business on his land that is physically adjacent the shopping center. Miller has owned the land for 20 years. Mills personnel have visited Miller and his wife in their home and have discussed "Internet initiatives of Respondent, Complainant and competitors." Mills’s vice president, Thomas Archer, has known Miller since high school in 1968.
Miller iterates that Miller neither read, was aware of, nor acted in response to any newspaper article when registering arundelmills.com and arundel-mills.com.
Miller asserts that Mills tries to "rationalize its double-dealing" on, inter alia, the "baseless notion that Respondent would prefer to sell assets to Complainant rather than develop them on Respondents [sic] own account." Miller never wanted to sell or transfer any domain name to Mills. Miller neither wanted to sell to nor purchase real estate from Mills. "Respondent encouraged Complainant to limit discussion to either co-operative development or simply being good neighbors." Miller wrote a letter to Mills "to choke off Complainant’s persistent attempts to engage in a negotiation to buy-out Respondent’s interest."
From 1997 to the present, Miller "regularly and independently develops domain name ‘themes’ for business use by Respondent." Miller "develops and promotes ‘concept papers’ and business plans for online initiatives, and seeks incubation funding to implement web-centric businesses." Miller’s "vision has been to operate a diverse portfolio of web-based businesses that fully leverage Respondent’s diverse business knowledge and solid network of prospective financial backers." Millers "limited success in actually launching many of Respondent’s planned web-based initiatives has no bearing on the fact that Respondent’s domain name uses are fair, are legitimate and are entered into with good faith and great optimism." Miller’s use of ArundelMills.com and "related domain names operated by Respondent ... dates back to August 1998 and prior." When Mills contacted Miller in March 1999, Miller was "in the midst of seeking funding for an incubation business under the placeholder name ‘Enterprise Ecommerce Solutions’ that would have provided a source of funds for the build-out of ArundelMills.com and several other concepts that Respondent was seeking to launch." Miller asserts that Mills "was made fully aware of these facts at the time."
Miller asserts that his registration of the arundelmills.com and arundel-mills.com domain names in August 1998 did not require the permission of Mills or any other entity "who was neither using those names in my industry nor in possession at the time of any actual or pending legal or exclusive rights in usage to the names." Miller contends Mills had registered "numerous Internet domain names by August 1998, including domain names for possible malls that had not been constructed, scheduled for construction or even purchased. Clearly Complainant considers far more real estate projects than it ever actually builds."
Miller avers that Mills "initiated no process to obtain Service Marks for ‘ArundelMills’ except after becoming fully aware that the arundelmills.com domain name was neither available for registration nor available for transfer."
Miller argues that Miller’s failure to include millsguide.com, millsmarket.com and enterthemills.com in this proceeding suggests that Mills understands "the untenable nature of its argument but seeks to prejudice the hearers of this dispute nonetheless."
Miller charges Mills with reverse domain name hijacking on the ground that Mills decided to register arundelmills.com and arundel-mills.com only in March 1999 when earlier, in 1998 and 1997 it had registered domain names for malls that even to this date have not been approved and constructed." Miller "suggests" that Mills did not reach its decision to build the mall, and what to name it, until the first quarter of 1999. Miller asserts Mills pretended "to reach agreement and deal amicably with Respondent while perfecting Complainant’s legal, financial and public relations position." Miller asserts that Mills "pretended to accept co-existence" with Mills, when
Mills did not own the real estate on which it subsequently built the mall.
Mills needed Miller’s cooperation with regard to wetlands, historic properties and other issues.
Mills apparently believed its project would become "larger than life" and "it could then abandon such niceties. That is what occurred in June 2000 ...".
Miller asserts that, after Mills called Miller a "cybersquatter", Miller sent to Mills a letter "outlining Respondent’s business activities and legitimate interests in using arundelmills.com. Miller notes hard copies of all correspondence between Mills and Miller from March 1999 to the date of the complaint are attached to the response. (Footnote 7)
Miller asserts that, in April 1999, Miller was "actively using the domain names arundelmills.com and arundel-mills.com," and Mills was aware of Miller’s "assertion of rights to use those domain names" in Miller’s business. Miller asserts he "had notified Complainant, in writing, that Respondent would neither surrender nor sell the name rights in question ...".
Miller avers he learned directly "from county officials in Annapolis" that his "own street" would be renamed "Arundel Mills Blvd." Miller avers he learned, not from a newspaper, but "directly from the Office of Planning and Zoning (OPZ) that signage that heretofore directly [sic] visitors to Ridge Road would be re-labeled as ‘Arundel Mills Blvd’." Miller asserts also (1) he learned Arundel Mills Boulevard was to be a public roadway funded and maintained by tax-payers, and (2) "the new way for visitors from nearby highways to access Respondent’s real property would be to use ‘Arundel Mills Blvd’." Having learned this, Miller asserts he properly registered the domain name arundelmillsblvd.com. Miller asserts that all residents and businesses "in this area make common use of this new, public road."
Miller asserts there is "no active content on the ArundelMills.com website" because of (1) "the economic downturn in the ‘dot-com’ sector," and (2) Mills asked Miller "not to deploy content on the site pending the outcome of joint development discussions." Miller contends it was only on June 9, 2000 that he discovered the "duplicitous nature" of Mills’s request. (Footnote 8)
Miller asserts that Mills’s account (Paragraph B.35 of the complaint) of communications with Miller is "simply false and misleading." Miller contends –
Mr. Kroskin and Miller had numerous telephone conversations throughout 1999, "as an outgrowth of Kroskin’s March  telephone call and Respondent’s immediate written reply." (Footnote 9)
Mr. Kroskin understood "perfectly the identity of Respondent" and tried "to impose on Respondent to set up a meeting with Respondent’s brother, who also owned real property in Hanover, MD."
During the fall of 1999, "Philip began to suggest a ‘summit meeting’" between Mills and Miller.
The first face-to-face meeting occurred in February 2000, not May 2000. Miller and his wife attended the meeting. For Mills, Messrs. Grissom, Kroskin, Archer and Davis attended.
Mills expressed interest in "buying out" the Millers. The Millers explained they were not sellers and their interest would be limited to "coordinated and/or joint development of real estate, or a jointly operated business focused on the area’s [sic] of Respondent’s professional competencies (i.e. an Internet business)." The Mills executives "said that they would be prepared to negotiate a joint venture ...". Mills would, inter alia, develop an "imputed cash value" for the Miller’s property which would be counted as "an equity infusion" to be supplemented by Mills.
An exchange of emails followed. "Philip was fully aware of Respondent’s involvement in the Internet and called several times to ‘pick my brain’ about ecommerce-related topics."
"Philip telephoned in March 2000 to say the actual Board of Directors of The Mills Corp was looking at the possible joint venture scenarios pertaining to our adjacent real estate properties. In April and May, Philip and I brainstormed about jointly developing an Internet Incubator and we talked in greater depth about my Internet & Ebusiness development initiatives."
Miller states that Mills’s assertion that Kroskin did not know Miller’s identity as owner of the arundelmills.com domain name is "simply absurd and dishonest."
Miller asserts that, in April 2000, Kroskin called Miller to say that Mills’s "senior-most management had vetoed the concept of any type of joint venture, explaining that the Mills corporation was ill-equipped to do business directly with a ‘small scale entrepreneur’." Kroskin inquired if the Millers would entertain a proposal for a straight buyout. Miller told him "no". Miller agreed to receive a proposal from Mills, but stated to Kroskin and Archer that Miller did not expect they would find common ground.
Miller contends that Mills’s assertions (Paragraph B.36) -- that the June 9, 2000 letter to Miller was "at the direction of representatives of Complainant who had no knowledge of the discussions with Respondent regarding the possible acquisition of his property" -- defy reason and common sense. Miller states that Kroskin was "the point person on both the domain name issue and the real estate issue." Miller notes that Mills’s written offer to purchase Miller’s property expired by its terms on June 15, 2000. (Exhibit 7 to the response) Miller asserts he had made it "abundantly clear" he was giving no consideration to Mills’s purchase offer and had written to Mills to suggest we "turn our attention to simply being good neighbors." (Footnote 10)
Miller asserts --
"Instead, on June 9th, a Vice President of Complainant sent Respondent a threatening letter pertaining to ArundelMills.com. The letter demanded that Respondent reply within precisely 5 days, ie by June 14, 2000." (Footnote 1)
Miller avers further that, on June 12, 2000, both Archer and Kroskin telephoned to Miller and asked if he had reconsidered his decision not to sell. Miller states --
"During this phone conversation, which became heated, both Archer and Kroskin acknowledged that they knew about and participated in the discussions about the domain name strategy and the Complainant’s decision to exert a claim for the domain name ArundelMills.com from the Respondent. I informed Kroskin and Archer that their coercive tactics would not work."
Miller further asserts --
"Archer ended the conversation by saying that if I accepted the letter of intent, or kept negotiations open, perhaps the disagreement would again become moot."
Under "CONCLUSION", Miller contends --
1. Any confusion "derives from a service mark which Complainant obtained two year [sic] after Respondent was known to be using ArundelMills.com. Complainants [sic] rights are limited to the scope of its grant, which pertains to shopping centers."
2. "Respondent has legitimate rights to each of the Internet business initiatives Respondent has been working on intensive, uninterrupted basis to develop since returning to the USA from South Africa in June, 1996. That a MILLER who lives in Anne Arundel County has to shoulder a burden of proof with respect to prior registration and use of ArundelMills.com is patently absurd. In the last five years, virtually all of Respondent’s income has derived from the Internet and from Respondent’s activities in Anne Arundel County, most notably Respondent’s $850,000 commercial building in Severna Park, MD and Respondent’s secondary office in Hanover, MD. Respondent is a certified reseller of Intershop Ecommerce Software and has numerous web projects, including ArundelMills.com, and NETintimacy.com. That Respondent’s several projects that include the word ‘mills’ are on hold, is directly attributable to actions, both promises & threats, of the Complainant. In March 1999, Respondent demonstrated exhaustively to Philip Kroskin and other representatives of Complainant the use and preparations for use that Respondent was engaged in for more than 6 months prior to Complainant notifying Respondent of a dispute."
3. Miller has acted in good faith. Miller has believed and believes he "was developing legitimate business activities that did not infringe on any other parties’ established rights." Miller has done nothing to suggest, and Mills has not alleged otherwise, that Miller has been willing or interested in transferring the disputed domain names under any circumstances. The issues pertaining to the timing and registration of ArundelMillsBlvd.com are "entirely separate" from ArundelMills.com.
Miller urges that Mills is asking the Panel to apply a double standard with respect to information each party is assumed to have had. Mills’s allegation of bad faith "hinges not simply on Complainant’s assertion of confusion regarding the identity of Respondent. One must also conclude that Respondent anticipated and relied upon the coordinated cases on corporate amnesia that Complainant defensively asserts to explain away what is otherwise clearly Complainant’s duplicitous, inconsistent and coercive dealings directed against Respondent. Complainant’s behavior defines bad faith."
Miller requests that no domain names be transferred to Mills, and further, "finding of attempted reverse domain name hijacking be returned."
The response concludes with Miller’s certification as to completeness and accuracy, his signature, and the date "12/30/00".
d. Supplemental Submissions
1. The January 29, 2001 Submissions
On January 29, 2000, Miller submitted to the Center via email additional comments, including copies of email messages of April 3 and April 5, 2000. Miller contends that these email messages provide further evidence of Mills’s misrepresentations of fact in Paragraphs 35 and 36 of the complaint.
On January 29, 2000, Mills’s counsel submitted to the Center via email Mills’s objection to Miller’s submission of that date. Mills’s counsel refers to post-complaint evidence of alleged confusion, but does not offer any such evidence.
Neither submission is certified as to accuracy and completeness. Neither submission adds any new evidence or argument that is of material help to the Panel. Accordingly, the Panel, notwithstanding that it has read each submission, will not rely on either submission in reaching its decision.
2. Mills’s February 16, 2001 Response to Procedural Order No. 1
With respect to application Serial No. 75/715,968, the May 26, 1999 intent to use application with respect to ARUNDEL MILLS, Mills has submitted to the Panel:
1. A March 7, 2000 Notice of Allowance.
2. A First Request for Extension of Time to File a Statement of Use filed on September 6, 2000.
3. A December 5, 2000 Notice of Approval of the First Request.
4. A Statement of Use filed on January 18, 2001 ("based on first use of the mark on November 17, 2000 (the date that ARUNDELL MILLS mall opened)").
The March 7, 2000 Notice provided that to avoid abandonment either a statement of use or a request for extension of time to file a statement of use must be received by the USPTO within six months of the issue date of the Notice. In the September 6, 2000 First Request, Mills asserted:
"Applicant has a continued bona fide intention to use the mark in commerce on or in connection with those services that are identified in the Notice of Allowance [i.e. "leasing of shopping center space"]."
In the January 18, 2001 Statement of Use, signed by its Executive Vice President, Thomas E. Frost, Mills asserted:
"Applicant is using the mark for the services that are identified in the Notice of Allowance and are incorporated into this Statement of Use".
"The mark was first used in connection with the services at least as early as November 17, 2000; was first used in connection with the services in interstate commerce at least as early as November 17, 2000; and is now in use in such commerce. The mark is used for advertising and promotional purposes in print and via electronic media. One specimen showing the mark as actually used is presented herewith."
The accompanying specimen appears (a) to be a copy of a portion of a promotional piece and (b) to show ARUNDEL MILLS as used in the type face with the design which are the subject of the February 18, 2000 application for registration.
With respect to application Serial No. 75/923,202, the February 18, 2000 intent to use application for ARUNDEL MILLS and DESIGN, Mills has submitted to the Panel:
1. A February 13, 2001 Notice of Allowance.
2. A Statement of Use filed on February 13, 2000 (also based on a first sue date of November 17, 2000).
The Statement of Use, also signed by Thomas E. Frost, referred to (a) the services identified in the Notice of Allowance (i.e. "shopping center services and leasing of shopping mall space"), (b) the first use on November 17, 2000, and (c) a specimen showing the mark as actually used. The specimen appears to be a copy of the same promotional piece submitted to the PTO on January 18, 2001 in connection with Serial No. 75/15,968, supra.
With respect to application Serial No. 76/027,926, the April 18, 2000 intent to use application for ARUNDEL MILLS, Mills has submitted to the Panel, according to Mills’s counsel’s cover letter:
1. A February 6, 2001 Notice of Publication.
2. A Statement of Use, dated February 1, 2001, based on a date of first use of November 17, 2000, and which Mills says "we will file for this application once a Notice of Allowance issues." (Footnote 12)
5. Discussion and Findings
In connections with Mills’s request that the three domain names in issue be transferred to Mills, Paragraph 4.(a) of the Policy directs that Mills must prove, with respect to each of the three domain names in issue, each of the following:
(i) The domain name is identical or confusingly similar to Mills’s service marks in issue here, and
(ii) Miller 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. (Footnote 13)
Paragraph 4.(b) of the Policy sets out four illustrative circumstances, which for purposes of Paragraph 4.(a)(iii) above shall be evidence of the registration and use of a domain name in bad faith.
Paragraph 4.(c) of the Policy sets out three illustrative circumstances any one of which, if proved by respondent, shall demonstrate respondent’s rights or legitimate interests to the domain name for purposes of Paragraph 4.(a)(ii) above.
In addition, pursuant to Paragraph 15.(e) of the Rules, the Panel is authorized to find that a complaint has been brought in bad faith, "for example in an attempt at Reverse Domain Name Hijacking ...".
The Panel turns first to the Paragraph 4.(a) requirements of the Policy.
A. Identity or Confusing Similarity
Mills has the burden of proving this element and each of the other two elements of Paragraph 4.(a) of the Policy.
Not only are the ARUNDEL MILLS service mark and the domain names in issue virtually identical on their faces, Miller does not attempt to contest this virtual identity. Clearly, under the weight of authority interpreting Paragraph 4.(a)(i) of the Policy, arundelmills.com and arundel-mills.com are are identical to ARUNDEL MILLS. E.g. Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case D2000-0062, General Electric v. John Bakhit, WIPO Case D2000-0386, and Cisco Systems v. Mike Haag, Case Nos. AF-0585a, AF 0585b. Also, persuasive authority makes it plain that the addition of the term "blvd" to the "arundelmills" does not save the arundelmillsblvd.com domain name from a finding of identity or confusing similarity. E.g. Robo Enterprises v. Orvin Tobiason, Case No. FA 0010000095857, Ermenegildo Zegna v. Estco Enterprises, WIPO Case D2000-0395, and Chanel v. Estco Technology Group, WIPO Case D2000-0413. Thus, on this record, identity or confusing similarity has been established.
However, it remains for Mills to establish that it has "rights" in the ARUNDEL MILLS service mark sufficient to sustain Mills’s complaint. Mills has provided evidence of references in the press to the term ARUNDEL MILLS on December 10, 1997 and
February 6, May 8, and July 3, 1998 (Annex F). The December 10, 1997 article says the project has been "dubbed Arundel Mills." The April 24, 1998 article says the project is "tentatively named Arundel Mills."
Mills has also submitted copies of two press releases (Annex E). The February 5, 1999 release refers to "Arundel Mills" as "under development." The July 15, 1999 release refers to "the ground breaking and commencement of construction for Arundel Mills" that day, and advises that "information on Arundel Mills can be found at www.arundelmillsmall.com [sic]."
Whether the foregoing references in the press in 1997, 1998 and 1999 establish any common law trademark or service mark rights in Mills in ARUNDEL MILLS is doubtful. They may establish that Mills was slowly but surely accruing rights in a trade name, viz.; ARUNDEL MILLS. But this Panel is authorized to consider rights only in trademarks and service marks, not in trade names.
It is interesting, but not dispositive, that the February 1999 application to register ARUNDEL MILLS had been allowed March 7, 2000, and on about January 18, 2001, Mills filed the required statement of use setting out November 17, 2000 as the date of first use. Because no registration had issued on this application, or any other ARUNDEL MILLS application, as of the commencement of this proceeding (i.e. December 11, 2000), or even as late as February 16, 2001, Mills as a matter of strict legal construction cannot in this proceeding properly claim that it is entitled to February 1999 as a constructive use date. 15 U.S.C. §§ 1051, 1057. (Footnote 14) The earliest date that Mills is legally entitled to claim any rights in the service mark ARUNDEL MILLS in this proceeding is November 17, 2000 -- as shown by Mills’s statement of use in the February 1999 application. November 17, 2000 is after Mills submitted its complaint and before the commencement date of this proceeding. (Footnote 15) November 14, 2000 is more than two years after Miller registered two of the domain names in issue, and 19 months after he registered the third domain name.
It seems reasonable to expect that, for purposes of inducing retailers to lease space in the proposed mall (which activities allegedly commenced as early as August 1998), Mills would have prepared brochures or other advertising material -- especially in light of Mills’s averments that (1) through mid-September 2000 Mills had spent approximately $500,000 to promote the Arundel Mills shopping center, and (2) Mills produces promotional material using the ARUNDEL MILLS service mark "on signage at the site ... and on its Internet web site located at http://www.millscorp.com/arundel/." The only "promotional material" Mill has submitted with the complaint comprises the two 1999 press releases at Annex E. (Footnote 16)
In light of the statement of use filed by Mills in connection with the February 1999 application, and other documents in evidence here, the Panel has no basis for finding that, on this record, Mills’s had any common law rights in the service mark ARUNDEL MILLS before November 17, 2000.
The decision in Potomac Mills, supra, may assist Mills in regard to the identity aspect of Paragraph 4.(a)(i), but that decision does not assist Mills in any other regard in this proceeding. Indeed, in Potomac Mills, the POTOMAC MILLS service mark had allegedly been in use in commerce in the United States since January 1985. The mark had been the subject of federal registrations issued in June 1987 and July 1998, which gave rise to a presumption of validity. The Potomac Mills decision seems not at all to support Mills’s assertion that Mills’s "ownership of the family of MILLS marks has previously been recognized" in the decision. The decision appears to rest entirely on Mills’s POTOMAC MILLS service mark. (Footnote 17)
Especially relevant here, the Potomac Mills decision gives no indication that, as of the date of the complaint there (February 14, 2000), Mills had included ARUNDEL MILLS in its exemplary list of service marks used by Mills. This is entirely consistent with Mills’s 1999 and 2000 intent to use applications re ARUNDEL MILLS, and its declared first use date of November 17, 2000. In Potomac Mills, Mills submitted evidence of its use of the POTOMAC MILLS service mark comprising "brochures, news stories and advertisement." Mills has not made similar submissions here. Thus, Potomac Mills is substantially different from this case and of little comfort to Mills here.
At bottom, the Panel concludes that Mills has common law rights in the service mark ARUNDEL MILLS. However, these rights are limited in time and in subject matter. Timing in this proceeding is a critical issue which the Panel discusses infra in Sections 5.b. and c. The earliest date on which Mills had rights in the service mark is
November 17, 2000. (Footnote 18) The subject matter of the ARUNDEL MILLS service mark is "shopping center services and leasing of shopping mall space," or simply "Leasing of shopping center space."
Thus, the Panel finds that Mills has demonstrated that (1) since November 17, 2000, it has had rights in the ARUNDEL MILLS service mark, and (2) the three domain names in issue are identical or confusingly similar to the mark.
B. Rights or Legitimate Interests
On this record, Miller challenges both Mills’s rights in the ARUNDEL MILLS service mark and Mills’s assertions that Miller has no rights or legitimate interests in the three domain names in issue. The Panel has already determined that Mills does have rights in ARUNDEL MILLS as a service mark as of November 17, 2000 and for shopping center leasing or services activities. The Panel turns now to considering whether or not, in light of the three exemplary circumstances set out in Paragraph 4.(c) of the Policy, Miller has rights or legitimate interests in any of the three domain names.
(1) Miller’s use or demonstrable preparation to use the domain names in connection with a bona fide offering of goods or services.
At the latest, Miller received notice of this dispute by way of Mills’s counsel’s letter of June 9, 2000. It is more likely that, for purposes of this proceeding, Miller received notice as early as March 1999, when Mills says its Philip Kroskin attempted to persuade Miller to transfer to Mills the two domain names then registered. Miller’s March 12, 1999 letter to Kroskin (Exhibit 18) substantiates this conclusion. (Footnote 19)
At best, Miller points only to a speculative vision -- at any time -- to develop Ecommerce businesses using one or more of the domain names in issue. Miller asserts that, as of August 1998 (when he registered two of the domain names), he "had already begun using in good faith for legitimate purposes" the name "Arundel Mills". Miller provides no particulars -- to say nothing of contemporaneous documents -- to support this and similar assertions, and none to suggest that his asserted use was in connection with any offering of goods or services. Miller provides no details as to his "own business interests" relating to the "Arundel Mills" domain names. Nothing provided to this Panel associates any of the domain names in dispute with Miller’s alleged "promotion of Internet Business Strategies, Internet Technology Development and utilization of advanced technology in the promotion of Trade & Economic Development in Africa." His December 21, 1998 business plan for "BlazeNet Enterprise eCommerce Solutions" (Exhibit 18) does not mention Arundel Mills. Miller has offered no evidence of any activity relating to his alleged development of any domain name "theme" involving "Arundel Mills" in connection with any Miller business. Also without any details or documentary support, Miller asserts that in April 1999 he was "actively using the domain names ArundelMills.com and Arundel-Mills.com."
It appears that Miller discussed with Mills representatives the prospects of a joint venture and an Internet incubator. For example, Miller’s April 3, 2000 email to Kroskin asks "Would you be interested in joint development of an Internet eBusiness Incubator?" (Exhibit 4). No contemporaneous document in this record reveals any use or preparation for use of any of the domain names in issue in any such speculative endeavor. Nor does the Panel have any document evidencing any attempt by Miller to obtain funds "for the build-out of ArundelMills.com."
Giving Miller the benefit of any doubt as to when Mills in fact committed to develop the Arundel Mills shopping center (e.g. according to Miller, not before the first quarter of 1999), Miller has not shown any use, or demonstrable preparation to use, the two domain names than registered by Miller in connection with any offering of goods or services. Miller did not register the "blvd" domain name until April 24, 1999. The same conclusion applies to that domain name.
(2) Miller has not been commonly known by the domain names
Miller has not asserted that he has been commonly known by any domain in issue. This factor does not cut in favor of Miller.
(3) Legitimate noncommercial or fair use of the domain names without intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue
Miller has not asserted that any proposed use of the domain names in issue will be noncommercial. He does assert that his use will be "fair use".
Miller’s proposed use will be commercial. It will necessarily trade on the name-recognition value of the neighboring shopping center. Having established no trademark or service mark rights in any of the domain names, Miller proposed use of the domain names is likely to divert consumers from their intended destination to Miller’s websites (if they become active). This factor does not favor Miller.
In light of the foregoing analyses, the Panel finds that Miller has no rights or legitimate interests in any of the three domain names as contemplated in Paragraph 4.(a)(ii).
c. Registration and Use in Bad Faith
Registration and use of the domain names in issue in bad faith are matters of the appropriate inferences to be drawn from circumstantial evidence. Both registration in bad faith and use in bad faith must be proved by Mills.
Of the four illustrative circumstances set out Paragraph 4.(b) of the Policy, it appears that the fourth illustration is relevant here. (Footnote 20) The fourth circumstance is that "by using" the domain names, Miller has intentionally attempted to attract, for commercial gain, internet users to his web sites, by creating a likelihood of confusion with Mills’s ARUNDEL MILLS service mark as to source, sponsorship, affiliation, or endorsement of the Miller’s web sites or of a product or service on his web sites. (Footnote 21)
Mills contends that it is more than merely coincidental that Miller registered (1) the first two domain names on August 10, 1998, the day after reports of the Arundel Mills project appeared in the local press, and (2) the third domain name on April 24, 1999, the same day a report of Arundel Mills Boulevard appeared in a local newspaper. Miller denies that any of these reports motivated him to register the domain names in issue. (Footnote 22)
Miller asserts that in August 1998 Mills had no trademark rights in ARUNDEL MILLS, and indeed, Mills had not yet decided to build the mall and name it "Arundel Mills". Miller contends that his use of the term Arundel Mills pre-dates Mills’s purchase of the site and its selection of the name for the project. Miller devotes extensive argument to Mills’s allegedly bad faith negotiations with Miller and to the recent and narrow character of Mills’s rights (if any) in the service mark ARUNDEL MILLS.
As for the April 24, 1999 registration of the "blvd" domain name, he claims to have learned directly from County officials of the renaming of Ridge Road. He asserts that, having learned of the new name, he promptly registered registered <arundelmillsblvd.com>.
Regardless of whether or not Miller learned about relevant aspects of the Arundel Mills project from the press, he registered the domain names in issue promptly as relevant events occurred, viz. (1) in August 1998, Anne Arundel County Council agreed to issue bonds to finance road projects, apparently signaling that the project was indeed coming to Anne Arundel County (Exhibit H), and (2) in April 1999, at least one public hearing was held with regard to "Arundel Mills Boulevard" (Exhibit J). Notwithstanding his repeated protestations to the contrary, supra Section 5.b., Miller had not used "Arundel Mills" or "Arundel Mills Blvd." in connection with any of his enterprises.
Even if Miller was cleverly prescient in choosing his three domain names for registration, and even if he hoped to capitalize on the promise that Arundel Mills would mature into a viable commercial enterprise, at the times Miller registered the three domain names, Mills as far as this record is concerned had no trademark or service mark rights in ARUNDEL MILLS. Mills had no trade mark rights until November 17, 2000. Miller’s registration could not have been to abuse, or to take advantage or, any existing trademark or service mark rights. Thus, regardless or Miller’s use or non-use of his domain names, his registration of them cannot, under the Paragraph 4.(b)(iv) of the Policy be regarded as having been undertaken in bad faith vis-a-vis any mark of Mills.
As to use or non-use, on the one hand, Miller attributes his failure to establish a web site at any of the domain name addresses to a downturn in the dot com industry and Mills’s duplicity. But the downturn did not occur until 2000, well after Miller registered the first two domain names on August 10, 1998, and substantially after he registered the third "blvd" domain name on April 24, 1999. Also, Miller has produced no contemporaneous record of any circumstances inspired by Mills that deterred Miller from establishing a web site.
The October 10, 2000 print out of the front page of the arundelmills.blvd.com website (Annex K) suggests strongly that the web site was used, i.e. was at least hosted by "ValueWeb" which solicited business at the site. This use of the "blvd" web site preceded any rights Mills had in the service mark ARUNDEL MILLS.
As the Panel has already stated, regardless of one’s view of the implications of Miller’s actual use or non-use of the three websites, the record here supports the inference that Miller has not registered the domain names for the purpose of attracting Internet users to his web sites by creating a likelihood of confusion with Mills’s ARUNDEL MILLS service mark. Although such confusion may arise in the future, (Footnote 23) there simply was no ARUNDEL MILLS service mark at the time of Miller’s registrations.
Miller argues, correctly, that Mills’s service mark rights are limited in terms of time and of subject matter. Both limitation are relevant to the issue of bad faith registration and bad faith use now under consideration. Mills has had no rights in the mark until
November 17, 2000. Presumably, if Mills’s February 1999 application matures into a registration, Mills will have constructive use rights going back to February 1999. But that date is not yet available to Mills. Thus, Miller’s registrations of his domain names at a time when Mills enjoyed no trademark or service mark rights in ARUNDEL MILLS cannot be regarded as bad faith registrations.
In light of the foregoing, the Panel finds that Miller did not register and use in bad faith each of the domain names in issue.
d. Reverse domain name hijacking
Miller’s repeated and detailed assertions as to Mills’s bad faith in negotiating with Miller with regard to Miller’s real estate, and to some extent with regard to two of the domain names, do not avail Miller in this forum. The issue here is whether or not Mills has used this process in bad faith to attempt to extract from Miller domain names which Miller has registered. Mills has come within a hair of prevailing in this proceeding. On this record, the Panel cannot attribute to Mills the requisite bad faith. Accordingly, Mills is not guilty of reverse domain name hijacking.
In light of the findings by the Panel, the Panel decides that (a) Mills’s ARUNDEL MILLS service mark is identical or confusingly similar to the three domain name registrations in issue, (b) Miller has no rights or legitimate interests in the domain names, and (c) Miller has not registered the three domain names in bad faith.
Accordingly, the Panel determines that Respondent’s three domain name registrations should not be transferred to Complainant.
David W. Plant
Dated: March 8, 2001
- Mills does not aver in the complaint that in fact the ARUNDEL MILLS shopping center has opened. In its November 15, 2000 complaint at ¶18, Mills avers the ARUNDEL MILLS shopping center "is not yet fully constructed and open to the public ... ." See Section 4.d.2. infra with regard to the November 17 2000 opening date.
- Mills includes at Annex I a WHOIS print-out listing 42 domain names registered by Miller, including (1) the three domain names in issue, (2) the three referred to in this paragraph, and (3) "hanovermills.com".
- The arundelmillsblvd.com page includes the following:
"Welcome to arundelmillsblvd.com
"Congratulations! Your free website has been set up and configured.
"When you are ready for a more robust web presence, please call 1-800-WE-HOST-U and a ValueWeb representative will be happy to assist you in creating a Valueweb Standard, Email or Commerce Account."
The web page does not suggest that the site is in any way connected with the Arundel Mills shopping center.
- The Panel identifies here and in the next paragraph the paragraph numbers of the complaint in which the averments appear because Miller challenges vigorously the accuracy of these averments -- and thus Mills’s credibility, supra, Section 5.c.
- Mills does not annex copies of this correspondence to the complaint. Miller includes copies of relevant emails and correspondence with his response, at Exhibits 2, 4, 5, 6, 7, 8, 9, 10, 12, 13, 14, 15 and 18, infra.
- Without citing any specifics, Mills asserts:
"When Respondent MILLER was asked what the term ‘Mills’ meant to him, he could provide no response."
- The correspondence appears to comprise unnumbered documents immediately following the complaint plus documents at Tabs 2, 4, 5, 6, 7, 8, 9, 10, 12, 13, 14, 15, and 18.
- June 9, 2000 is the date of a letter to Miller from Mills’s attorneys (Annex L to the complaint; Exhibits 12 and 13 to the response ) demanding that Miller (1) agree not to use or register any domain names incorporating Mills’s marks and (2) take steps to transfer the three domain names in issue to Mills.
- Miller appears to refer to his letter of March 12, 1999 to Kroskin, Exhibit 18 to the response.
- Exhibit 9 to the response is Miller’s May 23, 2000 letter to Archer of Mills. Miller rejected Mills’s offer, countered, and wrote that if Mills could not accept Miller’s numbers "we should probably refocus our attention on being good neighbors." Neither party notes that on May 25, 2000 (Exhibit 10 to the response) Mills’s Archer responded to Miller’s May 23 letter. Inter alia, Archer thanked Miller for his prompt response, assured Miller that Mills had not "low balled" its offer, and solicited Miller’s thoughts about "another way to structure a transaction."
- The only June 9, 2000 letter in the record is the letter from Mills’s outside counsel, who are counsel here, demanding that Miller agree not to use the domain names and to transfer them to Mills. The accompanying draft agreement (Exhibit 13) included a signature line for Mills’s Executive Vice President, Thomas E. Frost.
- In addition, Mills submitted to the Panel a Request for Extension of Time to File a Statement of Use in connection with application Serial No. "75/027,926". This application was purportedly filed April 18, 2000 for ARUNDEL MILLS. A Notice of Allowance purportedly issued February 13, 2001. The Request appears to have been signed by Thomas E. Frost on January 17, 2001 (before the Notice of Allowance). It states the Statement of Use is due "by August 13, 2001"and requests an extension to "February 23, 2002" for filing the statement. It refers to Mills’s continued intention to use the mark ARUNDEL MILLS in connection with the services "identified in the Notice of Allowance." The Panel cannot derive any useful information from this curious and unexplained document.
- Mills mistakenly refers to Paragraph 4.(b)(i) of the Policy as the basis authorizing the Panel to order a transfer. Paragraph 4.(b)(i) relates to only one of the exemplary circumstances that justify a finding of registration and use in bad faith.
- The submission of an application to the USPTO to register a mark does not itself establish a presumption of rights in the mark. Chromalloy Men’s Apparel v. Burch & Hatfield, WIPO Case No. D2000-1046.
- The February 1999 application for ARUNDEL MILLS is the only application the Panel need consider in this proceeding. ARUNDEL MILLS plus DESIGN does not add materially to Mills’s arsenal of alleged rights in the mark. Similarly, the second ARUNDEL MILLS application broadens the subject matter of the application to include shopping center "services" in addition to "leasing" and thus does not augment Mills’s rights in the mark in any material manner insofar as this proceeding is concerned..
- Miller contends that Mills’s SEC filings on November 16, 1998 and January 13, 1999 are silent with respect to Arundel Mills, thus supporting the proposition that "Arundel Mills" could not have been used as a service mark before the end of the filing periods in question. Excerpts of the two filings appear at Exhibit 20. Both filings appear to be directed to a period ending September 30, 1998. Accordingly, these filings, to the extent they are in this record (and are legible), do not add to the documentary evidence discussed above.
- Mills’s unsupported conclusory statements as to goodwill, reputation and fame allegedly attributable to its "family" of MILLS marks are not persuasive, especially in light of Miller’s showing of the large number of marks incorporating the term MILLS. The MILLS "family" of marks cannot support Mills’s position in this proceeding. The Panel thus does not rely on such "family" in this decision. Also, even if this "family" of marks were famous, such fame would not necessarily inure to the ARUNDL MILLS service mark, whose common law existence commenced fewer than four months ago.
- When the registration issues on the February 1999 application, Mills will presumably have rights based on constructive use as of the date of the application. The Panel discusses constructive use in Sections 5.b. and c. infra.
- The letter states in part:
"I am writing to follow-up on your telephone call to me inquiring about the domain names arundelmills.com and arundel-mills.com.
* * *
"I accept the explanation that you may, as you put it, ‘have jumped-the-gun’ in your reference to me as a ‘cyber-squatter’.
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" ... I will not tolerate name-calling and I will neither sell nor allow your company or anyone else to usurp my rights in usage to the domain name ArundelMills.com or other domain names that I may register in the course of my business and personal activities."
- Miller denies that (1) he acquired the domain names for the purpose of selling them (at the times Miller registered the three domain names, Mills had no trademark or service mark rights), (2) he registered the domain names to prevent Mills from reflecting the service mark in a corresponding domain name (Mills did register at least one domain name, e.g. http://www.millscorp.com/arundel), and (3) he registered the domain names primarily for the purpose of disrupting the business of a competitor (there is no evidence that Miller’s registrations have disrupted the business of Mills). The evidence in this record is not sufficient to support a finding contrary to Miller’s denials.
- Paragraph 4.(b)(iv) focuses on "use". The preamble to Paragraph 4.(b) states that the "following circumstances" -- including the Paragraph 4.(b)(iv) circumstances -- shall be evidence of "registration and use" in bad faith. Whether or not Paragraph 4.(b)(iv) circumstances support a finding of both registration and use in bad faith is not clear and has been debated elsewhere. In any event, as the Panel concludes in this Section, Paragraph 4.(b)(iv) does not avail Mills as to bad faith registration.
- Mills’s Annex F shows that, on at least three occasions before August 9, 1998, reports of the Arundel Mills project appeared in the press, viz. on December 10, 1997, February 6, 1998, and July 3, 1998.
- Unquestionably, an Internet user who wants to find information about the shopping center is quite likely to type in "arundelmills.com" or "arundel-mills.com". A user who wants information relating to Arundal Mills Boulevard is likely to type in "arundelmillsblvd.com". In each case, the Internet user will have been misdirected. In no case will the user be directed to any site related in any way to the shopping center or the boulevard. But this is not enough to avail Mills. Without viable trademark or service mark rights at the time Miller registered his domain names, Mills has no room to complain under Paragraph 4.(a)(iii). Miller simply cannot be found under the Policy to have registered his domain names in bad faith vis a vis Mills’s service mark.