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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

UDR, Inc. v. Registrant 460461 Domain names Administration/St Kitts Registry

Case No. D2007-0963

 

1. The Parties

The Complainant is UDR, Inc., Highlands Ranch, Colorado, United States of America, represented by Morrison & Forester, LLP, United States of America.

The Respondent is Registrant 460461 Domain Names Administration/St Kitts Registry, Olam, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <uniteddominion.com>is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 30, 2007. That Complaint identified the Respondent as Moniker Privacy Services of Pompano Beach, Florida. On July 4, 2007, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On July 23, 2007, Moniker Online Services, LLC transmitted by email to the Center its verification response identifying Registrant 460461 St. Kitts Registry as the registrant and providing the contact details. On July 24, 2007 the Center gave notice to the Complainant of a change in registrant information. The registrant of the domain name in issue is Registrant 460461 St. Kitts Registry, not the Respondent named in the Complaint and the Center advised the Complainant to file an amended Complaint to identify the correct registrant. On July 27, 2007 the Amended Complaint was duly filed naming Registrant 460461 St. Kitts as the Respondent. The Center verified that the amended 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 August 1, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was August 21, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 27, 2007.

The Center appointed David Perkins as the sole panelist in this matter on September 11, 2007. The Panel finds that it was properly constituted. The panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

4.A Complainant

4.A.1 Complainant’s Business

The Complainant was founded in 1972. It is the joint largest multifamily real estate investment trust in the United States of America. It has its principal places of business in Virginia, Maryland and in Colorado. It owns and operates more than 70,000 apartment homes in 200 communities covering 16 States.

4.A.2 Complainant’s UNITED DOMINION Tradename

The Complainant UDR, Inc was formerly known as United Dominion Realty Trust, Inc.. Since at least 1985 it has used the United Dominion and related tradenames in connection with its apartment complex management, rental and leasing services. The Complainant is the proprietor of the U.S. registered trademarks tabulated below:

U.S. Registration	Trademark	Goods & Services	Date of Registration	Date of First Use
2,306,568	UNITED DOMINION**	Class 36 Apartment and Apartment Complex Management, Rental and Leasing Services.	January 4, 2000	January 1985
2,193,753	UNITED DOMINION REALTY TRUST	Class 36 as above	October 6, 1998	January 1985
2,162,725	UNITED DOMINION RESIDENTIAL COMMUNITIES*	Class 36 as above	June 2, 1998	October 1996

* The letter “D” is a stylized double “D” connecting the words UNITED and DOMINION.

** US 2,306,568 has been incontestable under U.S. trademark law since 2005 by reason of evidence filed establishing continuous use for more than 5 years after the registration date in January 2000. Both the other two U.S. registrations have also become incontestable under U.S. trademark law on the same basis.

4.A.3 Complainant’s Website

Since 1996, the Complainant has operated a website at “www.udrt.com”. Visitors to that site can search for apartments, pay their rent and learn about the services the Complainant provides. The extract from the website exhibited to the Complaint features both the UNITED DOMINION and UNITED DOMINION REALTY TRUST trademarks.

4.B. Respondent

In the absence of a Response, there is no information about the Respondent other than that which appears from the Complaint.

5. Parties’ Contentions

5.A. Complainant

5.A.1 Identical or Confusingly Similar

The domain name in issue <uniteddominion.com> is identical to the Complainant’s UNITED DOMINION registered U.S. trademark but for the joining of the two words “united” and “dominion” and the .com suffix. The domain name was registered on June 26, 1996, some 11 years after first use of the Complainants’ UNITED DOMINION and UNITED DOMINION REALTY TRUST trademarks.

5.A.2 Rights or Legitimate Interests

5.A.2.1 The Complainant says that it first became aware of the Respondent’s use of the domain name in issue in late 2006. That domain name resolves to a website which links to apartment rental, apartment management and other services provided by third parties. Those are precisely the same services which are provided by the Complainant under and by reference to its UNITED DOMINION trademark. This website hosted at the domain name in issue has, according to the Complainant, taken this form since 2005.

5.A.2.2 Upon becoming aware of this use of the domain name in issue, the Complainant’s counsel sent a cease and desist letter addressed to the then registrant of that domain name [Moniker Privacy Services] and dated August 21, 2006. No reply to that letter was received. A second letter was sent to Moniker Privacy Services by the Complainant’s counsel dated September 8, 2006. Again, no reply to that letter was received.

5.A.2.3 Subsequent to those letters, it appears that the registrant [Moniker Privacy Services] transferred the domain name to WHOIS Data Shield. The website to which that domain name resolved continued to operate as described above. A cease and desist letter was then sent by the Complainant’s counsel to WHOIS Data Shield dated April 18, 2007. In that letter the Complainant offered US500.00 in consideration of the prompt transfer of the domain name to the Complainant and various undertakings relating to the UNITED DOMINION trademark. No reply to that letter was received.

5.A.2.4 Although the postal address of Moniker Privacy Services [Pompano Beach, Florida] and WHOIS Data Shield [Jupiter, Florida] differ, the WHOIS data information on the domain name in issue as at June 27, 2007 listed the same telephone number for both.

5.A.2.5 As noted in paragraph 3 above, after filing the original Complaint in this administrative proceeding on June 29, 2007 the Complainant was advised by the Center that the domain name had been transferred to the Respondent to the Amended Complaint, St. Kitts Registry.

5.A.2.6 The Complainant’s case is that the Respondent cannot establish that it has rights or legitimate interests in the domain name by demonstrating that any of the circumstances set out in paragraph 4(c) of the Policy apply.

5.A.2.7 First, the Complainant has neither licensed nor otherwise authorized use by the Respondent of the UNITED DOMINION trademark.

5.A.2.8 Second, the Respondent’s use of the UNITED DOMINION trademark as a domain name is not bona fide use. As explained in paragraph 5.A.1 above, the domain name resolves to a website which links to apartment rental, apartment management and the services related to the Complainant’s business “… in a clear attempt to confuse consumers and appropriate the goodwill associated with the Complainant’s UNITED DOMINION trademark.”

5.A.2.9 Third, such use is neither a legitimate non-commercial nor fair use of the domain name. A cost-per-click search engine directs visitors to the website to entities offering apartment rentals which are competitors of the Complainant. The Respondent’s aim is clearly to profit commercially from unauthorized use of the UNITED DOMINION trademark in the domain name by creating consumer confusion and misleadingly diverting customers from the Complainant to competitors’ sites.

5.A.2.10 Finally, there is no evidence that the Respondent has been commonly known by the domain name. Indeed, the Respondent has chosen not to reveal its true identity by using a privacy registrations service.

5.A.3 Registered and Used in Bad Faith

5.A.3.1 The Complainant’s case is the circumstances set out in paragraph 4(b)(iv) of the Policy apply, namely that by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its “www.uniteddominion.com” website, by creating a likelihood of confusion with the Complainant’s UNITED DOMINION mark as to the source , sponsorship, affiliation or endorsement of its “www.uniteddominion.com” website or of services on that website.

5.A.3.2 The original registrant of the domain name appears to have used it between 1997 and 2000 in connection with a United Dominion Industries. In 2001 the domain name was then used in connection with SPX Corporation, which acquired United Dominion Industries in May 2001. A WHOIS listing shows that SPX Corporation was the administrative contact for the domain name in early 2005.

5.A.3.3 However, from information obtained from <archive.org> it appears that the domain name no longer resolved to the SPX Corporation website after October 2005 but then resolved instead to the website described in paragraphs 5.A.1 and 5.A.2.8 above. This change would be consistent with information obtained from the hosting history of the domain name in issue, which records a change of service from SPX to Bulkregister.com in July 2005. Accordingly, the Complainant’s case is that the domain name is no longer owned by the original registrant. United Dominion Industries or by SPX Corporation but was acquired by the Respondent at some date in July 2005. At that time the Respondent began using the domain name in issue to resolve to the present website which lists apartment rental search engines linking to competitors of the Complainant. That use was first made in mid 2005, many years after registration and first use of the Complainant’s UNITED DOMINION trademark in 1985.

5.A.3.4 The Complainant asserts that for the purposes of assessing registration and bad faith use of a domain name under paragraph 4(a)(iii) of the Policy, the applicable date for assessing such registration and use is the date when the domain name was acquired by the Respondent. Hence, acquisition of a domain name constitutes registration for the purposes of the Policy.

5.A.3.5 As to bad faith use, the Complainant points to the click-through revenue obtained by the Respondent from use of the website to which the <uniteddominion.com> domain name resolves, when users are led to hyperlinks which in turn lead to third party commercial websites. Revenue is also obtained from pop-up advertisements appearing at the “www.uniteddominion.com” website.

5.A.3.6 Given the longstanding status and widespread use of the Complainant’s UNITED DOMINION trademark, the very incorporation of that tradename in the domain name in issue is, the Complainant says, strongly indicative of bad faith, citing the Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and other decisions under the Policy. That, coupled with use of the domain name in connection with precisely the same services as those provided by the Complainant under the UNITED DOMINION trademark in a manner clearly calculated to mislead consumers into believing that the Respondent’s website is in some way connected to or authorised, by the Complainant is additional strong evidence of bad faith. Again, the Complaint cites a number of cases decided under the Policy where such conduct has been found to constitute bad faith use.

5.B Respondent

As stated, no Response has been filed.

6. Discussion and Findings

6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:

(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(iii) that the domain name has been registered and is being used in bad faith.

6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the panel to be provide shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.

6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.

6.4 As stated, the circumstances set out in paragraphs 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.

6.A Identical or Confusingly Similar

The fact that the domain name in issue combines into one word <uniteddominion.com> the two word component of the Complainant’s UNITED DOMINION trademark does not prevent a holding of identicality under paragraph 4(a)(i) of the Policy. As long established by decision under the Policy, the .com suffix is to be disregarded for purposes of assessing identicality and confusing similarity. Accordingly, the Complaint satisfies the first requirement under paragraph 4(a)(i) of the Policy.

6.B. Rights or Legitimate Interests

There is nothing to suggest that the Respondent, had it responded, could have brought itself within any of the circumstances establishing rights or legitimate interests in the domain name in issue under paragraph 4(c) of the Policy. The Respondent’s use of the domain name since it acquired that name in 2005 – see, paragraphs 5.A.2.1; 5.A.2.8-9; and 5.A.3.3 above – has been neither legitimate nor fair. Accordingly, the Complaint also satisfies the second requirement of the Policy under paragraph 4(a)(ii).

6.C. Registered and Used in Bath Faith

It is established under the Policy that transfer of a domain name to a third party amounts to a new registration for the purposes of establishing the time at which bad faith is to be assessed under paragraph 4(a)(iii) of the Policy. By the time the Respondent acquired the domain name in issue (2005) the Complainant had 20 years prior use of the UNITED DOMINION trademark and US trademark registrations dating from 1998 and 2000. In its area of business, the Complainant is the fourth largest provider in the U.S. of apartment management, rental and related activities. This coupled with its long standing use of the UNITED DOMINION trademark is to be assessed against the Respondent’s use of the domain name from 2005 for a website providing hyperlinks to competitors of the Complainant. This is a classic bad faith use which falls fair and square within paragraph 4(b)(iv) of the Policy. Accordingly, the Complaint meets the twin requirements of paragraph 4(a)(iii) of the Policy.

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 name, <uniteddominion.com> be transferred to the Complainant.

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David Perkins
Sole Panelist

Dated: September 25, 2007