WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The Mills Limited Partnership v. This-Domain-For-Sale
Case No. D2001-0747
1. The Parties
The Complainant, The Mills Limited Partnership, is a Delaware limited partnership, with a principal place of business at 1300 Wilson Boulevard, Suite 400, Arlington, Virginia 22209, USA, whose general partner is The Mills Corporation, a Delaware corporation.
The Respondent is This-Domain-For-Sale, a Russian company, with its principal place of business at 340, 24 Lenin Street, Omsk, Siberia 644024, Russian Federation.
2. The Domain Name and Registrar
The Domain Name that is the subject of this dispute is <potomac-mills.com>.
The Domain Name was registered with Tucows.com, Inc., at the time that this Complaint is filed.
3. Procedural History
3.1 The Complaint, was filed electronically and by hard copy on June 5, 2001.
3.2 The Complainant elected to have the dispute decided by a single-member Administrative Panel.
3.3 In accordance with Paragraph 3(b)(xiii), the Complainant agrees to submit, only with respect to any challenge that may be made by the Respondent to a decision by the Administrative Panel to transfer or cancel the Domain Name that is the subject of this Complaint, to the jurisdiction of the courts where the location of the principal office of the concerned registrar may be found, which Complaint believes is Toronto, Canada.
3.4 No legal proceedings have been initiated, as yet. (Rules, paragraph 3(b)(xi))
3.5 As required by the Rules and the WIPO Supplemental Rules, payment in the amount of USD 1,500.00 has been made by Check, payable to World Intellectual Property Organization
3.6 The Complainant agreed that its claim and remedies concerning the registration of the Domain Name, the dispute, or the disputeís resolution shall be solely against the Domain Name holder and waives all such claims and remedies against (a) the WIPO Arbitration and Mediation Center and Panelists, except in the case of deliberate wrongdoing, (b) the concerned registrar, (c) the registry administrator, (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
3.7 A copy of this Complaint, together with the cover sheet as prescribed by the Supplemental Rules, has been sent or transmitted to the Respondent on June 28, 2001, by e-mail, facsimile and courier, in accordance with Rules, para. 2(b).
3.8 A copy of this Complaint, has been sent or transmitted to the concerned registrar Tucows.com, Inc. on June 28, 2001.
3.9 On June 28, 2001, Respondent received a Notification of Complaint and Commencement of Administrative Proceeding from the WIPO Arbitration and Mediation Center (the Center) informing the Respondent that an administrative proceeding had been commenced by Complainant in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (the Policy), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 (the Rules) and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On July 18, 2001, the Respondent was determined to be in default for failing to submit a Response.
3.10 The single Panel member, Cecil O.D. Branson, Q.C. submitted a Statement of Acceptance and Declaration of Impartiality and Independence and was duly appointed on July 27, 2001, in accordance with paragraph 15 of the Rules. The Panel was required to forward its decision to the Center by August 10, 2001.
3.11 The Panel finds that it was properly constituted and appointed in accordance with the Uniform Rules and WIPOís Supplemental Rules.
4. Factual Background
4.1 Complainant is THE MILLS, a Delaware limited partnership, located in Arlington, Virginia, whose general partner is The Mills Corporation, a Delaware corporation.
4.2 Complainantís predecessor in interest, POTOMAC MILLS LIMITED PARTNERSHIP, registered the mark with United States Patent and Trademark Office, both as a word mark, U.S. Registration No. 2,172,821, and as part of the POTOMAC MILLS® and DESIGN mark, U.S. Registration No. 1,442,419. On February 22, 2001, assignments of the POTOMAC MILLS® and POTOMAC MILLS® and DESIGN marks, the registration there for, and the goodwill associated therewith, were recorded with the United States Patent and Trademark Office.
4.3 The Complainant operates a family of "Mills" shopping centers throughout the United States with centers in the States of Florida, Pennsylvania, Illinois, Arizona, California, Texas, North Carolina, Tennessee, and Maryland, which malls attracted approximately 130 million visitors in 1998. Since January 1995, Complainant (and/or its predecessor(s) in interest including POTOMAC MILLS LP, a Virginia limited partnership, whose general partners are Potomac Mills, L.L.C., a Delaware limited liability company) has used the POTOMAC MILLS® service mark to identify and promote its shopping center located in Prince William County, Virginia.
4.4 The Complainantís POTOMAC MILLS® shopping center includes more than 220 stores, twenty eateries, and fifteen movie theatres, and purports to offer the best selection of designer and name brand merchandise sold from outlets owned by leading apparel names include Laura Ashley, J.C. Penney Outlet, Guess, Nordstrom Rack, Off 5th - Saks Fifth Avenue, and Spiegel Outlet. In 1999, Complainantís POTOMAC MILLS® shopping center attracted approximately 24 million visitors.
4.5 In the year 2000, Complainant THE MILLS spent approximately $1,900,000.00 in marketing expenditures for the POTOMAC MILLS® shopping center. It uses its POTOMAC MILLS® service mark on signage, in written advertisements, on shopping bags, on coupon books, and on its Internet web site located at http://www.millscorp.com/index2.html.
4.6 On or about September 21, 2000, the Domain Name <potomac-mills.com> was registered to Macros-Telecom Corp., a company with the same address and telephone number as the Respondent THIS-DOMAIN-FOR-SALE. On December 5, 2000, the Domain Name was registered to THIS-DOMAIN-FOR-SALE, with an address in Israel. As of March 19, 2001, the Domain Name was registered to Respondent, THIS-DOMAIN-FOR-SALE, however, the address is identified as 340, 24 Lenin Street, Omsk, Siberia 644024, Russia, the same address as Macros-Telecom Corp. There is, therefore, some question as to whether the present registrant and its predecessor in interest are conducted or, even, one and the same person.
4.7 Respondent (or its predecessor in interest) registered the Domain Name <potomac-mills.com> on May 10, 2000.
4.8 The Respondent is the current registrant of the Domain Name <potomac-mills.com>.
5. Partiesí Contentions
5.1 Complainant contends that the Domain Name <potomac-mills.com> is virtually identical to its registered marks as set out above in paragraph 4.2 and that the Respondentís use of the Domain Name in question infringes on Complainantís rights, confusing the public as to the origins of the <potomac-mills.com> web site, and is contrary to the Policy para. 4(a)(i).
5.2 Complainant says that it has never authorized Respondent to use the POTOMAC MILLS® mark in any way, shape or form, much less as part of the Domain Name <potomac-mills.com>. Further, Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, para. 4(a)(ii).
5.3 Complainant contends that Respondent registered and used the Domain Name <potomac-mills.com> in bad faith in violation of the Policy para. 4(a)(iii), based on the following evidence:
(i) the Respondent registered the domain name primarily for the purpose of selling the domain name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name;
(ii) the Respondent has never used the Domain Name in connection with a bona fide good or service and has not developed any reputation or goodwill in connection with the Domain Name;
(iii) Respondent owns numerous registrations, most for which Respondent has not made a bona fide use;
(iv) By registering the Domain Name, Respondent intentionally prevents Complainant from registering its mark in the .com TLD;
(v) Respondentís pattern of conduct prevents others from making bona fide use of desirable domain names that may correspond to their trademarks.
5.4 The Respondent has not filed a Response to the Complaint. Under para. 5(e) of the Rules, it is provided that if a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. As no exceptional circumstances have been brought to the Panelís attention, it proceeds to make the findings below on the basis of the material contained in the Complaint.
C. No Other Submissions
5.5 The Panel has not received any other requests from Complainant or Respondent regarding further submissions, beyond the Complaint, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the Parties.
6. Discussion and Findings
6.1 Para. 4(a) of the Policy states that the Complainant must prove each of the following requirements:
(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 rights or legitimate interests in respect of the domain name; and
(iii) that the Domain Name has been registered and used in bad faith.
These matters are considered in turn below.
(i) The domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
6.2 This first factor contains two elements:
First, does Complainant have rights in a relevant mark, and second, is the Domain Name identical or confusingly similar to that mark.. Plaza Operating Partners, Ltd. v. POP Data Technologies and Joseph Pillus, WIPO Case No. D2000-0166.
6.3 This Panel accepts that the Complainant is the holder of the registration for the marks referred to in para. 4.2.
6.4 The only difference between the Domain Name, <potomac-mills.com> and the marks in which Complainant has rights, as above, is the insertion of a hyphen [-] between the word "potomac" and the word "mills".
6.5 "Essential" or "virtual" identity is sufficient for the purposes of the Policy: The Stanley Works and Stanley Logistics Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113, Nokia Corp. v. Nokiagirls.com a.k.a IBCC, WIPO Case No. D2000-0102, and America Online, Inc. v. Anson Chan, WIPO Case No. D2001-0004.
6.6 The use of a hyphen between two words is so de minimus as not to constitute a material difference between the mark in which Complainant holds rights and the Domain Name registered to the Respondent: Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038; Pep Boys Manny, Moe and Jack of California v. E-Commerce Today, Ltd. eResolution Case No. AF-0145.
6.7 This Panel finds that the Domain Name <potomac-mills.com> is identical or confusingly similar to the POTOMAC MILLS® mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect of the domain name.
6.8 Respondent is not a licensee of Complainant THE MILLS nor is it authorized to use Complainantís POTOMAC MILLS® mark. Respondent registered the <potomac-mills.com> Domain Name without the authorization, knowledge or consent of Complainant.
6.9 Once a Complainant makes a prima facie showing that a Respondent lacks rights in the Domain Name, the burden of proof shifts to the Respondent to come forward with demonstrable evidence proving a legitimate interest in the Domain Name. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0207; Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416; Drexel University v. David Broude, WIPO Case No. D2001-0067. This is consistent with the Policy in para. 4(c)(iii), which speaks in terms of the Respondent demonstrating his rights or legitimate interests to the Domain Name for legitimate non-commercial or fair use purposes. The Policy strikes a fair relationship between the overall onus of proof in regard to an issue in a case as contrasted with the proof of a fact material to that issue. This Panel finds that the Complainant has made a prima facie showing, as above.
6.10 This Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name <potomac-mills.com>
(iii) The domain name has been registered and is being used in bad faith.
6.11 Para. 4(b)(ii) of the Policy states that registration of 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, shall be evidence of the registration and use of a Domain Name in bad faith.
6.12 In this case there is evidence that this Panel accepts showing that the Respondent THIS-DOMAIN-FOR-SALE has offered the Domain Name in question for sale and, in addition, offers for sale more than 250 additional second-level Domain Names via the <potomac-mills.com> web site.
6.13 The fact of placing Domain Names on the Internet for sale has been regarded in a number of cases as being evidence of abuse and bad faith: Wal-Mart Stores Inc. v. Lars Stork, WIPO Case No. D2000-0628. Placing Domain Names for sale by auction on the Internet is evidence of bad faith: Harrods Ltd. v. Robert Boyd, WIPO Case No. D2000-0060. Offering a Domain Name for sale to the owner of a competitor is one avenue for establishing bad faith: Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044. Offering to sell a Domain Name to the Complainant in excess of its out-of-pocket costs to the Respondent plus any excess value for which the Respondent has been responsible has been held to be evidence of bad faith: World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO Case No. D99-0001; The British Broadcasting Corp. v. Jaime Renteria, WIPO Case No. D2000-0050; Capcom Co.Ltd. & Capcom USA Inc. v. Dan Walker ["Namesale"], WIPO Case No. D2000-0200.
6.14 Para. 4(b)(ii) of the Policy says that it is evidence of bad faith if the 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 such Respondent has engaged in a pattern of such conduct. With respect to the application of this sub-para., it has been held that 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: Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056.
6.15 In this case the Respondent in response to a cease and desist letter from the Complainantís lawyer, first indicated that it had changed the registration of <potomac-mills.com> domain "in the way that the company already got it into its ownership (you may see the Whois db). We are going to supply you with the password for the access to it for the rather moderate fee which is suitable for your clients." Then, in response to a follow-up query on behalf of the Complainant, the Respondent replied "youíve asked me about the price of the domain name potomac-mills.com . Our company can transfer this domain into the possession of the Potomac Mills mark in exchange for payment of $5,000." As stated in Petland, Inc. v. COM.sortium, LLC, WIPO Case. No. D2001-0430, "Few domain name registrants in violation of the Policy nowadays are willing explicitly to commit their intentions to paper as they were several years ago."
6.16 Given the evidence put forward by the Complainant, and the lack of any Response from the Respondent, this Panel finds that the Domain Name <potomac-mills.com> has been registered and is being used in bad faith.
7.1 This Panel finds and decides that:
(a) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(b) the Complainant has established that Respondent has no rights or legitimate interests in respect of the Domain Name <potomac-mills.com> ;
(c) the Complainant has established that the Domain Name has been registered, and is being used in bad faith.
7.2 The ruling of this Panel is that the registration of the Domain Name <potomac-mills.com> be transferred to the Complainant.
Cecil O.D. Branson, QC
Dated: July 31, 2001