WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Potomac Mills Limited Partnership v. Gambit Capital Management

Case No. D2000-0062

 

1. The Parties

The Complainant is Potomac Mills Limited Partnership, a limited partnership organized in the Commonwealth of Virginia, United States of America (USA), with principal place of business in Arlington, Virginia, USA.

The Respondent is Gambit Capital Management, with address in Aventura, Florida, USA.

 

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

The disputed domain names are "potomacmills.net" and "potomacmills.org".

The registrar of the disputed domain names is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

 

3. Procedural History

The essential procedural history of the administrative proceeding is as follows:

a. The Complainant initiated the proceeding by the filing of a complaint via e-mail, received by the WIPO Arbitration and Mediation Center ("WIPO") on February 14, 2000, and by courier mail received by WIPO on February 17, 2000. Payment by Complainant of the requisite filing fees accompanied the courier mailing. On February 18, 2000, WIPO completed its formal filing compliance requirements checklist.

b. On February 18, 2000, WIPO transmitted notification of the complaint and commencement of the proceeding to the Respondent via e-mail and telefax. The telefax transmission was not successful according to the report generated by WIPOís fax machine. On February 21, 2000,WIPO transmitted notification of the complaint and initiation of the proceeding to Respondent via courier mail 1. On February 18, 2000, WIPO transmitted notification of the complaint to ICANN, Network Solutions and Complainantís authorized representative.

c. On March 9, 2000, WIPO transmitted notification to Respondent of its default in responding to the complaint by courier mail, telefax and e-mail. The telefax transmission was not successful according to the report generated by WIPOís fax machine.

d. On March 14, 2000, WIPO invited the undersigned to serve as panelist in this administrative proceeding, subject to receipt of an executed Statement of Acceptance and Declaration of Impartiality and Independence ("Statement and Declaration"). On March 14, 2000, the undersigned transmitted by fax the executed Statement and Declaration to WIPO.

e. On March 15, 2000, the Complainant and Respondent were notified by WIPO of the appointment of the undersigned sole panelist as the Administrative Panel (the "Panel") in this matter. On March 17, 2000, the Panel received the file in this matter by courier from WIPO. WIPO notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to WIPO by March 28, 2000.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties (taking note of Respondentís default in responding to the complaint). The proceedings have been conducted in English.

 

4. Factual Background

Complainant has provided a copy (Complaint, Annex C) of its U.S. Patent and Trademark Office service mark registration dated July 14, 1998, for "POTOMAC MILLS", number 2,172,821, on the Principal Register. Complainant has provided a copy (Complaint, Annex C) of its U.S. Patent and Trademark Office service mark registration dated June 9, 1987 (number 1,442,419, on the Principal Register) that shows the words "POTOMAC MILLS" in combination with a design. Complainant states that these service mark registrations remain valid and subsisting. The validity of Complainantís service mark registrations for "POTOMAC MILLS", with and without design combination, has not been contested by Respondent, and the Panel accepts as an undisputed fact that Complainant is the holder of a valid service mark registration for "POTOMAC MILLS" in the United States.

Complainant has submitted evidence, including in video format, of brochures, news stories, and advertisement of its use of the service mark "POTOMAC MILLS" in commerce since at least as early as 1994 (Complaint, Annexes D and E). Respondent has not contested Complainantís use of the service mark in commerce.

Network Solutionsí WHOIS database query response (Complaint, Annex A) indicates that GAMBIT CAPITAL MANAGEMENT, with Administrative Contact at "GAMBIT CAPITAL MANAGEMENT", is the registrant of the domain name "POTOMACMILLS.NET". The record of this registration was created on December 1, 1998, and was last updated on November 5, 1999.

Network Solutionsí WHOIS database query response (Complaint, Annex A) indicates that GAMBIT CAPITAL MANAGEMENT, with Administrative Contact at "GAMBIT CAPITAL MANAGEMENT", is the registrant of the domain name "POTOMACMILLS.ORG". The record of this registration was created on December 1, 1998, and was last updated on November 5, 1999.

As indicated in Complainantís Annex F, a Networks Solutionsí WHOIS database search of February 7, 2000, for domain names registered by "GAMBIT CAPITAL" indicated that a large number of domain names were registered by that party (at least 50). Complainant states that many of these names are identical or confusingly similar to trademarks or service marks of parties other than Respondent.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutionsí dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which WIPO is one, regarding allegations of abusive domain name registration (Policy, para. 4(a)). Respondent has not contested that it is properly before this Administrative Panel.

 

5. Partiesí Contentions

A. Complainant

Complainant states that it has used the service mark "POTOMAC MILLS" to identify and promote its shopping center located in Prince William County Virginia since January 5, 1985 (Complaint, para. 13). Complainant states that the Potomac Mills shopping center is heavily used by the public (having been visited by approximately 22 million visitors in 1999) (Id., para. 16). Complainant indicates that it will spend approximately $1,900,000 in the year 2000 in marketing for the Potomac Mills shopping center, and that it promotes this shopping center nationwide in the United States (id, para. 17).

Complainant indicates that it is has registered the service mark "POTOMAC MILLS" at the U.S. Patent and Trademark Office (PTO) (id., paras. 12 and 32) (see Factual Background supra).

Complainant states that "POTOMAC MILLS® shopping center is part of a family of "MILLS" shopping centers operated nationwide, including SAWGRASS MILLS® in Florida, FRANKLIN MILLS® in Pennsylvania, GURNEE MILLS® in Illinois, ARIZONA MILLS® in Arizona, ONTARIO MILLS® in California, GRAPEVINE MILLS® in Texas, KATY MILLS in Texas and CONCORD MILLS in North Carolina. Cumulatively, in 1998, the MILLS malls attracted approximately 130 million visitors" (id., para. 20). Complainant states that "POTOMAC MILLS LP has developed extremely valuable goodwill and an outstanding reputation in its POTOMAC MILLS® mark. The mark is famous and is an indication of high quality and of origin exclusively with POTOMAC MILLS LP and its POTOMAC MILLS® shopping center" (id. para. 21) [bold in original].

Complainant states that Respondent registered the domain names "potomacmills.net" and "potomacmills.org" on December 1, 1998, and that Respondent is neither authorized nor licensed to use Complainantís service mark "POTOMAC MILLS" (id., para. 22).

Complainant states that "The second level domain name is identical to Complainantís POTOMAC MILLS® mark" (id. at 23) [bold in original].

Complainant indicates that "Respondent GAMBIT has registered at least approximately four dozen additional second level domain names that, upon information and belief, are identical or virtually identical to the names of and marks for shopping centers owned and/or operated by others. For example, Respondent GAMBIT has registered the domain name www.beltwayplazamall.com; the BELTWAY PLAZA MALL is located at 6100 Greenbelt Road, Greenbelt, Maryland 20770" (id., para. 24). Complainant has furnished a printout of Respondentís domain name registrations (id.).

Complainant states that Respondent has used the domain names "potomacmills.net" and "potomacmills.org", as well as other domain names, in bad faith (id., para. 25).

Complainant states that Respondent has no rights or legitimate interests in the disputed domain names (id., para. 26).

Complainant recites the history of its efforts to compel Respondent to cease and desist from use of the disputed domain names prior to the adoption of the Policy by ICANN and its implementation by Network Solutions (id., paras. 27-30).

Complainant states that its registration of the "POTOMAC MILLS" service mark establishes a prima facie presumption of its ownership of the mark, and that "the fact that the registration for the POTOMAC MILLS® and DESIGN mark is incontestable is Ďconclusive evidence of the validity of the registered mark and of . . . the registrantís ownership of the mark and of the registrantís exclusive right to use the registered mark in commerce.í 15 U.S.C. ß 1115(b) (ellipses added).Ö Further, Complainantís exclusive use of the mark for almost fifteen years firmly establishes its rights in the POTOMAC MILLS® mark" (id., para. 32).

Complainant has submitted evidence that Respondent has been administratively dissolved as a corporation by the Secretary of State of Florida (id., para. 6 and Annex B), and indicates "in light of the fact that Respondent GAMBIT has now apparently been administratively dissolved by the Florida Secretary of State, it cannot engage in any activity, furthering the conclusion that it cannot claim any rights or legitimate interests in respect of the domain names" (id., para. 34).

Complainant states that Respondent has used the disputed domain names in bad faith within the meaning of paragraph 4(b) of the Policy, and that in order to demonstrate bad faith the Complainant "need not show that there has been active web sites associated with the domain names" (id., para. 35). Complainant states "Respondentís registration of two second level domain names identical to Complainantís POTOMAC MILLS® mark, particularly when coupled with its registration of dozens of other domain names that are identical or virtually identical to the names of and marks for shopping centers across the country, establishes that it has used and registered the domain names in bad faith under the criteria set forth in subsections (i) and (ii) [of paragragh 4(b) of the Policy]" (id., para. 35). Complainant indicates that bad faith may be established by circumstantial evidence (id., para. 37).

Complainant observes that "[t]here is simply no conclusion to be drawn from the circumstantial evidence other than that Respondent GAMBIT either (i) primarily intended (or intends) to sell some of the domain names it registered to the owner of the corresponding trademarks or service marks, including the potomacmills.net and potomacmills.org domain names and/or (ii) intended to prevent Complainant POTOMAC MILLS LP from reflecting the POTOMAC MILLS® mark in a corresponding domain name. With regard to the latter, not only is there a Ďpatterní of such behavior for the numerous domain names registered to Respondent GAMBIT, there is a pattern (i.e., more than one instance) if we look only to the domain names incorporating the POTOMAC MILLS® mark of Complainant POTOMAC MILLS LP. Of course, by its actions, Respondent GAMBIT has, in fact, succeeded in preventing Complainant POTOMAC MILLS LP from reflecting the POTOMAC MILLS® mark in the corresponding .net and .org top-level domain names. This is precisely the type of bad faith behavior that is intended to be penalized under the Policy" (id. para. 38).

Complainant requests that the domain names "potomacmills.net" and "potomacmills.org" be transferred to it (id., paras. 39 and 45).

B. Respondent

Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. This sole panelist has in an earlier decision discussed the background of the administrative panel procedure, and the legal characteristics of domain names, and refers to this earlier decision for such discussion 2. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

Paragraph 4(a) of the Policy establishes three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondentís domain name is 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 name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings initiated against them, and a reasonable opportunity to respond (see, e.g., para. 2(a), Rules).

In this case, the Panel is satisfied that WIPO took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondent to furnish a reply is not due to any omission by WIPO. There is ample evidence in the form of air courier receipts and confirmations of the sending of e-mail transmissions that the party designated as the Administrative Contact for the Respondent was notified of the complaint and initiation of the proceedings (see Procedural History, supra).

Because the Respondent, Gambit Capital Management, has defaulted in providing a response to the allegations of Complainant, Potomac Mills Limited Partnership ("Potomac LP"), certain factual conclusions may be drawn by the Panel on the basis of Complainantís undisputed representations (Rules, para. 14(b)).

Complainant is the holder of a registered service mark for "POTOMAC MILLS" and is using that name in commerce (see Factual Background, supra). Complainantís registration of the service mark on the Principal Register at the PTO establishes a presumption of validity of the mark in U.S. law 3, and Respondent has not challenged this presumption. The Panel determines that Complainant has rights in the service mark "POTOMAC MILLS" 4. Based on the July 14, 1998, date of Complainantís registration of the service mark "POTOMAC MILLS", and evidence of earlier use of that mark in commerce, the Panel determines that Complainantís rights in the service mark arose prior to Respondentís registration on December 1, 1998, of the disputed domain names 5.

Respondent has registered the domain names "potomacmills.net" and "potomacmills.org". These names are identical to Complainantís service mark "POTOMAC MILLS" 6, except that (1) the domain names each eliminate the space between the two words constituting the mark, (2) the domain names add the generic top-level domain names ".net" and ".org" respectively, and (3) the domain names employ lower case letters, while the trademarks are generally used with an initial capital letter on each word (see Complaint, Annex D). For purposes of this proceeding, it is unnecessary to decide whether, in light of these factors, Respondentís domain names are "identical" to Complainantís service mark, since Respondentís domain names "potomacmills.net" and "potomacmills.org" are without doubt confusingly similar to Complainantís service mark "POTOMAC MILLS".

Complainant has met the burden of proving that Respondent is the registrant of domain names that are identical or confusingly similar to a service mark in which the Complainant has rights, and it has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

There is no evidence on the record that would indicate that Respondent has any rights or legitimate interests in respect of the domain names "potomacmills.net" and "potomacmills.org", other than that it has registered these domain names. If mere registration of the domain names were sufficient to establish rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy, then all registrants would have such rights or interests, and no complainant could succeed on a claim of abusive registration. Construing the Policy so as to avoid an illogical result, the Panel concludes that mere registration does not establish rights or legitimate interests in a domain name so as to avoid the application of paragraph 4(a)(ii) of the Policy.

Respondent has furnished no evidence of any legitimate use or preparation to use the disputed domain names. There is no evidence on the record of this proceeding of any such legitimate use or preparation to use by Respondent. On the record of this proceeding, the only arguable use of the domain names by Respondent involves circumstances that are hereafter determined to be in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. Such use does not, standing alone, establish rights or legitimate interests in the domain names.

The Panel determines that Respondent has no rights or legitimate interests in the disputed domain names. Thus, the Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The third element that must be proven by Complainant to establish Respondentís abusive domain name registration is that Respondent has registered and is using the disputed domain names in bad faith. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, para. 4(b)). Most relevant to the current proceedings: a respondent has 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 [the respondent has] engaged in a pattern of such conduct" (id., para. 4(b)(ii)).

Respondent has registered the domain names "potomacmills.net" and "potomacmills.org". Absent any contrary indication from Respondent, the Panel infers that Respondent intended the logical consequences of its acts, and that it registered the disputed domain names "in order to prevent" Complainant from using its service mark in corresponding domain names. The Panel notes that, although not mentioned in its complaint, Complainant has successfully registered the domain name "potomacmills.com" 7. Complainant nevertheless has legitimate interests in reflecting its service mark in more than one generic top-level domain, and in the circumstances of this case Ė in which there is no suggestion of a legitimate use or preparation for use by the Respondent in the ".net" or ".org" generic top-level domains Ė the Panel does not consider that Respondentís acts of preclusion are made less abusive as a matter of law by their limitation to the ".net" and ".org" domains 8. As a consequence of Respondentís acts, Complainant is unable to reflect its service mark "POTOMAC MILLS" in corresponding domain names.

Complainant has provided evidence that Respondent has registered a large number of domain names, and it alleges, upon information and belief, that many of these are identical or confusingly similar to "names of and marks for shopping centers owned/and or operated by others" (Complaint, para. 24). For example, Complainant has indicated that "Beltway Plaza Mall" is located and operating in Greenbelt, Maryland, and that Respondent has registered the domain name "beltwayplazamall.com" (Complaint, para. 24 and Annex F). The Panel notes that Respondent has registered "dadelandmall.org" (id., Annex F), and that a physical location for the Dadeland Mall can be found in a directory of shopping malls in the Miami, Florida area 9.

Respondent, by its default, has not attempted to assert any rights or legitimate interests in the domain names that are identical or confusingly similar to Complainantís service mark, and it has not attempted to assert any justification for its apparent pattern of registering domain names that are identical or confusingly similar to names used by other shopping mall service providers. Respondent has not contested Complainantís assertion that the domain names it has registered are identical or confusingly similar to trademarks or service marks of third parties. The Panel is satisfied that, for the limited purpose of demonstrating that the Respondentís conduct regarding the Complainant is not an isolated event, but rather is part of a pattern of conduct in the sense of paragraph 4(b)(ii) of the Policy, Respondent has engaged in a pattern of conduct of registering domain names identical or confusingly similar to service marks of others in order to prevent the owners of such marks from registering corresponding domain names.

The Panel determines that Respondent has registered and used the domain names "potomacmills.net" and "potomacmills.org" in bad faith within the meaning of paragraph 4(b)(ii) of the Policy. Complainant has thus established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration.

The Panel will therefore request the registrar to transfer the domain names "potomacmills.net" and "potomacmills.org" to the Complainant.

 

7. Decision

Based on its finding that the Respondent, Gambit Capital Management, has engaged in an abusive registration of the domain names "potomacmills.net" and "potomacmills.org" within the meaning of paragraph 4(a) of the Policy, the Panel determines that the domain names should be transferred to the Complainant, Potomac Mills Limited Partnership.

 


 

Frederick M. Abbott
Sole Panelist

Dated: March 28, 2000

 


Footnotes:

1. Paragraphs 2(a) and 4(c) of the Rules for Uniform Domain Name Dispute Resolution Policy require that the Provider send the complaint to the Respondent via postal-mail, facsimile and e-mail to commence the proceeding. Although the courier mail from WIPO did not originate until February 21, 2000 (per its Fedex waybill), the Complainant had on February 14 sent a copy of the complaint to Respondent, also by Fedex courier. Under these circumstances, the panel considers it reasonable for WIPO to have considered the date on which it transmitted the complaint to Respondent by e-mail and fax as the date on which these proceedings commenced.

2. See Educational Testing Service v. TOEFL, Case No. D2000-0044, decided March 16, 2000.

3. 15 USCS ß 1057(b). See, e.g., Avery Dennison v. Sumpton, (9th Cir. 1999), 1999 U.S. App. LEXIS 19954.

4. Complainant has furnished evidence of registration of a combination word and design mark, including "POTOMAC MILLS", and suggests that this mark has become "incontestable" as a consequence of its duration of registration at the PTO. In light of the undisputed fact of its registration of "POTOMAC MILLS", standing alone, as a service mark, the Panel does not consider it necessary to inquire into the legal significance of the earlier composite mark registration, including any issues that might arise in connection with comparing that composite mark to the disputed domain names.

5. The Panel neither determines nor implies that Complainantís rights in the service mark "POTOMAC MILLS" arose only at the date the word mark was registered on the Principal Register. A determination as to an earlier date is not necessary to resolve these proceedings.

6. The Panel is making this determination solely on the basis of Complainantís word mark "POTOMAC MILLS" (note 4, supra).

7. The Panel first became aware of the Complainantís use of the domain name "potomacmills.com" when viewing a video provided by the Complainant as part of its Annex D (to evidence its advertising and references by news organizations to it). The Panelís Network Solutionsí WHOIS database search of March 26, 2000, indicated a record creation date of August 12, 1997 for "potomacmills.com" in the name of Complainant. The Panel on March 26, 2000, also located Complainantís "Potomac Mills" website on the Internet using the "potomacmills.com" domain name.

8. The Panel notes that commonly-used Internet search engines will identify addresses for each of the open top-level generic domains, ".com", ".net" and ".org". For discussion of the distinction between "open" and "restricted" generic top-level domains, see WIPO, The Management of Internet Names and Addresses: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process, http://wipo2.wipo.int, Apr. 30, 1999, WIPO Pub. No. 439 (E), at, e.g., para. 6.

9. The Panelís independent Internet search of March 26, 2000, found on address listing for Dadeland Mall at http://www.usshoppingmallsdir.com/Florida.html.