WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton

Case No. D2000-56

 

1. The Parties

Complainant is Bellevue Square Managers, Inc., a corporation organized in 1966 under the laws of the state of Washington, United States of America, having its principal place of business at P.O. Box 908, Bellevue, Washington, United States of America. According to the registrar's Whois database, Respondent is an entity entitled "Redmond Web" with an address at 15103 NE 68th Street, Redmond, Washington, United States of America, an email address of {Braden@seanet.com} and a fax number of (425) 861-9024. An investigation by Complainant indicated that Braden F. Moulton, an individual born in 1973 and currently residing at 11869 N.E. 162nd Lane, Bothell, Washington 98011, United States of America, had a previous address that matches the address of "Redmond Web" and that national business directories consulted show no listing for "Redmond Web."

 

2. The Domain Name(s) and Registrar(s)

The domain name at issue is {bellevuesquare.com} (the "Domain Name"), which Domain Name is registered with Network Solutions, Inc. ("Network Solutions").

 

3. Procedural History

A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 9, 2000. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated February 14, 2000.

On February 14, 2000, a Request for Registrar Verification was transmitted to Network Solutions. On February 15, 2000, Network Solutions confirmed by reply e-mail that the Domain Name is registered with Network Solutions that the Respondent, Redmond Web, was the current registrant of the name and that Network Solutionís 4.0 Service Agreement is in effect. The reply also contained contact information for the Respondent.

The Panel finds that the ICANN Uniform Domain Name Disputed Resolution Policy (the "Policy") is the Policy applicable to this dispute.

A Formal Requirements Compliance Checklist was completed by the assigned WIPO Center Case Administrator on February 18, 2000. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in material formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN on October 24, 1999 (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy, in effect as of December 1, 1999 (the "WIPO Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.

No formal deficiencies having been recorded, on February 18, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of March 8, 2000, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent Redmond Web by e-mail to the e-mail address specified in Network Solutionsí Whois confirmation, as well as to {postmaster@bellevuesquare.com}; no e-mail addresses were found at any web page relating to the disputed domain name and to the Respondent Moulton by e-mail to the e-mail address {braden@seanet.com}. In addition, the Complaint was sent by facsimile to the listed fax numbers and express courier to all available postal addresses. Having reviewed the communications records in the case file, the Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."

In view of the Complainantís designation of single panelist (but without prejudice to any election to be made by the Respondent) the WIPO Center invited Thomas D. Halket to serve as a panelist in Case No. D2000-0056, and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence.

On March 9, 2000, having received no Response from the Respondents, using the same contact details and methods as were used for the Commencement Notification, the WIPO Center transmitted to the parties a Notification of Respondent Default.

Having received Thomas D. Halketís Statement of Acceptance and Declaration of Impartiality and Independence, on March 15, 2000, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date was March 28, 2000. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.

 

4. Factual Background

The Panel finds that the following facts appear from the Complaint and documents submitted with the Complaint and have not been disputed by that the Respondent. Complainant owns pending federal applications in the United States for the mark BELLEVUE SQUARE (Serial No. 75/791,848) for "retail store services; retail shopping mall; management of retail shopping mall" in Class 35, THE CORNER AT BELLEVUE SQUARE (Serial No. 75/791,837) for "retail store services; retail shopping mall; management of retail shopping mall" in Class 35, and THE LODGE AT BELLEVUE SQUARE (Serial No. 75/791,840) for "providing facilities for recreational activities" in Class 41. Complainant also owns Washington state registrations for BELLEVUE SQUARE (Registration No. 21691) for "management and promotion of shopping

mall" and BELLEVUE SQUARE THE BEST OF EVERYTHING AND DESIGN (Registration No. 22442) for "retail shopping center goods and services."

Complainant and its predecessors have used the BELLEVUE SQUARE mark

to identify Bellevue Square mall, a regional shopping mall located in Bellevue Washington, which Complainant and its predecessors have owned and operated since 1946. Through such use, Complainant is, at least in the locality in question (which is near the locations of Respondents), the well-known owner of the BELLEVUE SQUARE mark.

The Complainantís use of its trademarks predate any use or registration of the Domain Name, are in full force and effect, and have not been abandoned. Other than to register the Domain Name, Respondents have made no use of it and, in particular, no web site exists for the Domain Name.

The Domain name is not the only such domain name registered by Respondents. In January and February of 1998 (about the time Respondent registered the Domain Name), Respondent registered {redmondtowncenter.com}, {studio1design.com} and {ctstbm.com}. Redmond Town Center is the name of a shopping mall in Redmond, Washington that has no apparent connection to Respondents. Respondents have not developed any Web sites using these domain names, but no other facts appear in the file regarding them

 

5. Partiesí Contentions

A. Complainant

Complainant contends that Respondents have registered as a domain name a mark which is identical or confusingly similar to the trademarks registered and used by Complainant, that the Respondents have no rights or legitimate interests in respect to the Domain Name, and that the Respondents have registered and are using the Domain Name in bad faith.

B. Respondent

Respondents have not contested the allegations of the Complaint.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since all parties are domiciled in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: "(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and, (ii) that the respondent has no legitimate interests in respect of the domain name; and, (iii) the domain name has been registered and used in bad faith."

The Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to trademarks marks in which the Complainant has prior rights. Although the registration of the Domain Name predates the dates for the United States registrations of Complainantís trademarks, Complainantís use of the trademarks, and the Washington State registrations of them, predate that of the Domain Name. As Respondents are located within the State of Washington, they are bound by those State registrations. Indeed, since Respondents are located near Complainantís mall, it is reasonable to assume that they had actual knowledge of Complainantís trademarks.

The Domain Name also violates Paragraph 4(a)(ii) of the Policy in that (i) Respondent is not a licensee of Complainant, and has not received any permission or consent to use the trademark BELLEVUE SQUARE; (ii) Complainantís use of the trademark BELLEVUE SQUARE precedes by over fifty years the registration date of the Domain Name; and (iii) Respondent is not (either as an individual, business or other organization) commonly known by the name BELLEVUE SQUARE.

Whether the Domain Name violates Paragraph 4(a)(iii) of the Policy is not nearly so evident. To violate Paragraph 4(a)(iii) of the Policy that the Respondent must both register and use the domain name in question in bad faith. See, e.g., World Wrestling Federation Entertainment, Inc. v. Michael Bosman, Case No. D99-0001 (January 14, 2000). The evidence, such as it is, with respect to both prongs of this test is far from compelling.

The Complaint does not allege any facts which would constitute use of any kind. It does allege that Respondents registered the Domain Name primarily for the purpose of disrupting the business of Complainant, but these are mere allegations with no words or deeds of Respondents sited to support them. Indeed, Respondents appear to have taken no action with respect to the Domain Name other than to have registered it. In fact, they have ignored both a letter from the Complainant as well as the Complaint in this action. The Complaint does allege that Respondents have engaged in a pattern of conduct, citing the other registrations mentioned above.

Paragraph 4(b) of the Policy provides some guidance on Paragraph 4(a)(iii) of the Policy. It provides:

"b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a), the following circumstances, 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:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

Subparagraphs (iii) and (iv) are not applicable here. Respondents are not the competitor of the Complainant as required by (iii) and there is not the use of the Domain Name required by (iv).

The only evidence cited by Complainant that could go to subparagraphs (i) and (ii) is (a) the similarity, if not identity, of Complainantís trademarks and the Domain Name and (b) the other domain name registrations by Respondents. This Panel finds that this evidence is insufficient to support a violation of subparagraph (i). Among other things, there is no evidence of any activity by Respondents from which to draw any conclusions as to their intent to sell or otherwise profit from the Domain Name, such results not being the only natural consequences of their acts. In this regard it must be noted that the trademark in question is not a purely coined word, but consists in large part of the name of the town/city in which Complainant is located. Compare Cellular One Group v. Paul Brien, Case No. D2000-25 (March 10, 2000).

With respect to subparagraph (ii), Complainant must demonstrate that Respondents "registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name" and that Respondents have engaged in a pattern of such conduct. While Complainant has presented no evidence to demonstrate Respondentsí purpose in registering the Domain Name, the Panel concludes that, with respect to this question, it is not unreasonable to find that Respondents intended the natural consequences of their acts, particularly where, as in this case, Respondents have not contested the Complaint.

The issue of a pattern of conduct is somewhat more problematic. Complainant sites only one other registration, {redmondtowncenter.com}, where the surrounding circumstances appear similar to the one in question; no further facts beyond their mere registrations and non-use are presented for {studio1design.com} and {ctstbm.com}. Are the facts regarding the latter two marks sufficiently close to the case under consideration to support a finding of a pattern and, if not, does one other instance constitute a pattern? Were the allegations of the Complaint contested by the Respondents, this Panel could have had both additional facts as well as contentions of law to aid it in its deliberations. Since, however, Respondents have not chosen to participate in these proceedings, the Panel finds that the failure of Respondents to use any of the three marks or to allege any good faith basis for use of them is sufficient basis for the inference to be drawn that a pattern of conduct exists.

Accordingly, the Panel finds that the Domain Name violates paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondents is identical or confusingly similar to the trademark and service marks in which the Complainant has rights, that the Respondents have no rights or legitimate interests in respect of the Domain Name and that the Respondentsí Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the Domain Name {bellevuesquare.com} be transferred to the Complainant.

 


 

Thomas D. Halket
Presiding Panelist

Dated: March 27, 2000