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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

General Growth Properties, Inc., Provo Mall L.L.C. v. Steven Rasmussen/Provo Towne Centre Online

Case No. D2003-0845

 

1. The Parties

The Complainant is General Growth Properties, Inc., Provo Mall L.L.C., Chicago, Illinois, United States of America; Provo, Utah, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.

The Respondent is Steven Rasmussen/Provo Towne Centre Online, Utah, United States of America. Provo Town Centre Online is a sole proprietorship owned by Steven Rasmussen, who has opted to represent himself in this proceeding.

 

2. The Domain Names and Registrar

The disputed domain name <provotownecentre.com> is registered with All West Communications Inc., dba AW Registry. The disputed domain name <provotownecentre.net> is registered with R&K Global Business Services, Inc. d/b/a 000Domains.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2003. On October 27, 2003, the Center transmitted by email to All West Communications Inc., dba AW Registry and R&K Global Business Services, Inc., d/b/a 000Domains.com, a request for registrar verification in connection with the domain names <provotownecentre.com> and <provotownecentre.net>. On October 28, 2003, All West Communications Inc., dba AWRegistry, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. Also on October 28, 2003, R&K Global Business Services, Inc. d/b/a 000Domains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center dated October 30, 2003, that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 1, 2003. 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"), 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 November 4, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 24, 2003. The Response was filed with the Center on November 23, 2003.

The Center appointed Andrew Mansfield as the sole panelist in this matter on December 9, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

On December 11, 2003, Complainant filed a Supplementary Filing that included thirty eight pages of new exhibits. On December 12, 2003, Respondent then also filed a Supplementary Filing. The Panel chose to consider both additional filings and issued a Panel Procedural Order extending the time for the transmission of the decision to the Center.

 

4. Factual Background

Provo Towne Centre is the largest shopping mall in the State of Utah. Construction of the mall began in 1997, and it was opened to shoppers in 1998. General Growth Properties, Inc., the Complainant, is a Real Estate Investment Trust that controls a subsidiary business named Provo Mall L.L.C.

Steven Rasmussen operates a business named Provo Towne Centre Online. He formed the business in 1997, and has operated a gateway or portal page at the domain name <provotownecentre.com> since that date. Presently, the services offered at <provotownecentre.com> are web hosting, web design and domain name sharing or sub-hosting. The web design and web hosting services are provided by another company owned by Steven Rasmussen, Secure Solutions, Inc.

This dispute centers on the common law trademark "Provo Towne Centre." Although Complainant has just recently attempted to register the trademark with the State of Utah, neither party has a Federal registration for the trademark nor did either party seek state registration prior to this dispute. Nevertheless, pursuant to United States law (the nation in which both the Complainant and Respondent reside) trademark rights arise from public use of the mark related to the distribution of goods or services, not registration of the mark. Sufficient use must not be merely de minimis. In addition, the trademark "PROVO TOWNE CENTRE" is descriptive and not suggestive or arbitrary. Descriptive trademarks must acquire what United States law terms "secondary meaning" to be protected. Consumers must identify the descriptive trademark with one provider of goods or services. Such secondary meaning is usually developed over some period of use, sales and advertising.

The Policy, of course, protects common law trademarks and service marks. Numerous decisions of prior Panels make this clear. See, e.g., Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235; Giampaolo Matteucci v. Webmaster, AWG, WIPO Case No. D2001-1135.

 

5. Parties’ Contentions

A. Complainant

Complainant states that it began to use the trademark Provo Towne Centre in May of 1997, in relation to leasing space to retailers. In support of that assertion, Complainant has submitted an April 8, 1997 letter between its predecessor and Sears concerning the leasing of space. Complainant did not submit any lease documents because there is no procedure in the Policy or the Rules for the filing of confidential documents under seal. Complainant then, in Paragraph 16 of the Complaint, asserts that it has extensively and continuously used the mark so that it has acquired distinctiveness and secondary meaning. Complainant operates a website promoting its mall at "www.shopprovotownecentre.com". That URL was registered on May 1, 2001.

Complainant asserts that it began construction of the Provo Towne Centre on June 5, 1997, and that the event was highly publicized in the Provo, Utah area. At that time, Respondent lived near Provo, Utah. On the same day that the construction commenced, Respondent registered the domain name <provotownecentre.com>. Complainant claims that it only became aware of Respondent’s registration of the domain name <provotownecentre.com> in March 2003.

On March 14, 2003, Complainant sent a letter to Respondent, through counsel, that Respondent cease use of the domain name < provotownecentre.com>. Various email and mail messages were exchanged between Complainant and Respondent in the period of March and April 2003. Complainant alleges that Respondent’s email message dated March 18, 2003, is the "most candid substantive response" provided by Respondent. In that email message, Respondent claims that the Internet Mall he envisioned for the domain name <provotownecentre.com> never met its potential and that the mall concept was, indeed, never attempted. Further, the business Provo Towne Centre and the website <provotownecentre.com> had "never [produced] a dime of income nor a customer/client."

Complainant further alleges that Respondent has attempted to alter his domain name registration for <provotownecentre.com> so that it appears to have been registered at least one day earlier than it was actually registered. Other conduct of Respondent in the weeks prior to this proceeding indicates that he is untrustworthy and has changed his positions on several occasions. Complainant brings to light the fact that Respondent registered the domain name <provotownecentre.net> several days after receiving Complainant’s first cease and desist letter.

Complainant asserts that the domain names are identical to its trademark Provo Towne Centre. Complainant further asserts that Respondent has no legitimate interest in the domain names. Finally, Complainant asserts that Respondent registered the domain names in bad faith and continues to use the domain names in bad faith. In particular, Complainant points to the facts that the spelling of the domain names and the mall name are identical even though spelled incorrectly. Further, the timing of the registration of the domain name <provotownecentre.com> and the news surrounding the commencement of construction are too close to be coincidental. Complainant alleges that Respondent must have heard about the name of the mall and rushed to register an identical domain name. Because Respondent lived in close proximity to this major mall, the most reasonable conclusion, according to Complainant, is that he received information about the construction and approval of the mall project.

B. Respondent

Respondent alleges that he considered opening an "Internet Mall" during the years 1995 and 1996. He had witnessed the success of imall.com, located in Utah, and he worked as a web designer and Internet presence provider. On June 3, 1997, Respondent applied for a business license from Provo Utah under the name Provo Towne Centre Online. Respondent submits a check to Provo, Utah for a business license to substantiate this date. Also on June 3, 1997, Respondent applied for and received the domain name <provotownecentre.com>. The domain name was actually granted on June 5, 1997.

Respondent questions the exhibits provided in support of the Complaint. For example, Respondent complains that no lease is provided indicating when Complainant actually began leasing services under the trademark. In addition, Respondent calls into question Complainant’s statement that it first became aware of his business and website in March of 2003. Certainly when Complainant registered its domain name it discovered Respondent’s domain name.

Respondent alleges that he has rights and legitimate interests in the domain names because he has made a bona fide use of the domain names to offer services for approximately six years. Respondent also clarifies that the domain names do generate revenue. The revenue is collected by the company to which the domain names refer customers – Secure Solutions, Inc.

In addition to its business license, Respondent alleges that it has been commonly known by the name Provo Towne Centre Online because it has been listed in the Sanpete County, Utah business directory under that name for each of the last six years. In addition, the domain name <provotownecentre.com> has been a working marketing and referral website for approximately six years.

Respondent alleges that it had no actual or constructive knowledge of any trademark equal or similar to "Provo Towne Centre" at the time he registered the domain name. In fact, the clerk for the City of Provo ran a search to ensure that his name was not confusingly similar to any other name when he registered for his business license.

Finally, Respondent states that Complainant did not have any trademark rights to the trademark on the date he registered <provotownecentre.com>. Respondent cites authority for the proposition that a trademark that did not exist cannot serve as the basis for a claim under the Policy because bad faith registration cannot be shown.

 

6. Discussion and Findings

To prevail, Complainant must prove each of the following three elements, pursuant to Paragraph 4(a) of the Policy:

(i) the domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the domain names have been registered and are being used in bad faith.

The Panel will analyze each of the elements below for each of the two domain names at issue.

A. Identical or Confusingly Similar

There is no dispute between the parties as to whether the two domain names are identical to the Complainant’s current common law trademark "PROVO TOWNE CENTRE". As discussed above, the Policy protects common law trademarks. In addition, the fact that the trademark antedates the registration of the domain name is not relevant to the analysis under Paragraph 4(a)(i) of the Policy. For example, the Panel in Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, found that "Paragraph 4(a)(i) does not require that the trademark be registered prior to the domain name" although "[t]his may be relevant to the assessment of bad faith pursuant to the Paragraph 4(a)(iii)."

B. Rights or Legitimate Interests

Complainant has continuously operated a web site at "www.provotownecentre.com" for six years and maintained his business license in the name "Provo Towne Centre Online." At the time Respondent registered <provotownecentre.com> he was not known by Provo Towne Centre. Likewise, Respondent has never made a non-commercial or fair use of the domain name <provotownecentre.com>. The only remaining question, then, is whether before any notice to Respondent of the dispute, Respondent made use of or demonstrably prepared to use the domain name in connection with a bona fide offering of goods or services. Paragraph 4(c)(i) of the Policy.

Respondent has not convincingly explained why it is that he registered the domain name <provotownecentre.com> on or about the same day that the name of the Provo Towne Centre mall was announced and construction began. In addition, the two matching misspellings in the domain name and the name of the mall indicate to the Panel that the registration was not coincidental. Although it is a difficult factual decision, the Panel finds that Respondent had knowledge of the name of the mall at the time the domain name <provotownecentre.com> was registered.

Because of this knowledge, the deployment of a page offering subdomains and Internet shopping website services, almost entirely by referral to a pre-existing website operated by Respondent, does not qualify as a bona fide offering of goods and services.

The Panel finds that Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides an illustrative but not exhaustive list of indicia of bad faith:

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) 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.

Complainant relies on a common law trademark in presenting its case to this Panel. However, the use that Complainant made of the mark prior to the registration of <provotownecentre.com> was de minimis. There is no evidence the mark had acquired secondary meaning or otherwise matured into a common law mark at the time of that domain name registration[1].

One three member Panel addressed the issue of bad faith in relation to the registration of domain names occurring prior to the rise of a trademark. In John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited, WIPO Case No. D2001-0074, the Panel found that Complainant’s trademark rights arose three years after the registration of the domain name about which it was then complaining. The Panel found:

"[W]e are of the unanimous view that the trademark must predate the domain name. Whether it arises because of paragraph 4(a)(iii) (requiring bad faith registration), rather than paragraph 4(a)(i) does not call for a decision by us at this time. In either case, the result is the same, as is apparent from our decision below."

The Panel further found that "[t]here are ample authorities supporting the view that a trademark that did not exist at the time the disputed domain name was registered cannot serve as the basis for a claim under the ICANN Policy, since it is impossible for the domain name to have been registered in bad faith." The Panel then cited nineteen Panel decisions that directly or indirectly supported this view as of the date of the date of that decision nearly three years ago.

This Panel reaffirms that, as a general matter, bad faith is not likely to be found when a Complainant relies on a trademark that did not exist at the time a disputed domain name is registered when seeking to make use of the Policy. However, there are many exceptions to this general statement.

One such exception may be found when a portion of the domain name is a registered trademark, even though the mark as a whole is not yet a new trademark. In SBC Knowledge Ventures LP v. John Huberdeau aka J. Johnston, WIPO Case No. D2003-0642, Respondent registered <sbclaboratories.com> on the same day that Complainant issued a press release announcing that the new name of its research arm was "SBC Laboratories." Although Complainant did not have a matured common law mark with secondary meaning in "SBC Laboratories" at the time of the registration, it had a Federally registered trademark in "SBC." In cases such as this, assuming the other elements are found, the domain name must be transferred because of the substantial similarity to Complainant’s existing trademark.

Another exception supported by prior Panel decisions analyzes whether Respondent had knowledge that trademark rights would soon arise through use or registration of a mark by the Complainant. In Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320, the Panel acknowledged that "Respondent’s registration of the Domain Name was prior to any of the trademark or service mark registration applications of Complainant." Nevertheless, the Panel found bad faith because "Respondent registered the Domain Name fully conscious of what ‘business’ he could make out of mistakenly being affiliated with the Complainant." Likewise, in Madrid 2012, A.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, the Panel found that Respondent registered the domain name two days before the Complainant filed the first application for a trademark. The Panel found bad faith on the ground that Respondent sought to "hinder" the registration by the owners of Madrid 2012 and that this constituted registration for "blocking purposes."

Finally, the Panel that decided ExecuJet Holdings Ltd. v. Air Alpha America, Inc., WIPO Case No. D2002-0669 provided narrow grounds on which bad faith registration of a domain name may be found even when that registration antedates the trademark. First, that Panel provided an example of a new trademark to arise from a proposed merger of two companies where the domain name included a combination, in whole or in part, of the former company names. The other example provided was that of a domain name registration based on direct, insider knowledge of a proposed trademark. Neither of these limited exceptions is applicable here.

Respondent has not convincingly explained why he registered the domain name <provotownecentre.com> at the same time that the mall of the same name was announced and construction commenced. In addition, the two matching misspellings in the domain name and the name of the mall indicate to the Panel that the registration was not coincidental. As discussed above, the Panel finds that Respondent had knowledge of the name of the mall at the time the domain name <provotownecentre.com> was registered.

The Panel follows the precedent set in Kangwon Land, Inc. v. Bong Woo Chun (K.W.L. Inc.), WIPO Case No. D2003-0320, and Madrid 2012, A.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598. The Panel concludes that Respondent knew of the pending widespread announcement of the mall at the time he registered the domain name <provotownecentre.com>. Respondent hoped to either benefit from confusion and the diversion of web traffic or by selling the domain name to the trademark holder. This constitutes bad faith registration of the domain name.

Respondent’s use of the domain name <provotownecentre.com> and later registration and use of <provotownecentre.net> also constitute bad faith use and registration. Respondent has been benefiting from confusion with the land-based mall. Respondent’s registration of the ".net" domain name was certainly undertaken in bad faith and with full knowledge of Complainant’s dispute.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <provotownecentre.com> and <provotownecentre.net> be transferred to the Complainant.

 

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Andrew Mansfield
Sole Panelist

Dated: January 15, 2004

 

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1. Other cases involving this Complainant may be distinguished because they involved matured common law trademarks. The General Growth Properties, Inc. v. Future Net (to be), WIPO Case No. D2003-0500 Panel decision is easily distinguishable from the present matter. In that case, Complainant or its predecessors had been using the trademark for twenty three years prior to the registration of the allegedly offending domain name in 2000. In General Growth Properties, Inc. v. Scott Riddell, NAF Claim No. FA0212000137675, Complainant operated the mall and developed the common law trademark for that mall for nearly twenty years before the allegedly offending name was registered. Again, in General Growth Properties, Inc. v. Mr. Fred Norris, WIPO Case No. D2003-0084, Complainant had operated its mall and developed its common law trademark for twenty years prior to the registration.