WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mani Brothers, LLC v. Lincoln Gasking
Case No. D2008-0097
1. The Parties
Complainant is Mani Brothers, LLC, Los Angeles, California, United States of America, represented by the law firm Blakely, Sokoloff, Taylor & Zafman, LLP, United States of America.
Respondent is Lincoln Gasking, Los Angeles, California, United States of America, represented by the law firm Knobbe, Martens, Olson & Bear, LLP, United States of America.
2. The Domain Names and Registrar
The disputed domain names <801figueroa.com>, <9000sunset.com>, and <9200sunset.com> are registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 23, 2008. On January 24, 2008, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the disputed domain names. On January 25, 2008, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 January 29, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was February 18, 2008, and the Response was filed with the Center on that date.
The Center appointed Richard G. Lyon, David E. Sorkin, and Perry Viscounty, as panelists in this matter on March 27, 2008. The Panel finds that it was properly constituted and has jurisdiction over this proceeding. Each member of the Panel has submitted his Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The parties have filed three additional unsolicited papers with the Center. In chronological order:
March 5, 2008: Complainant’s Reply to Respondent’s Response
March 7, 2008: Respondent’s Motion to Strike Complainant’s Reply
March 7, 2008: Complainant’s Reply to Respondent’s Motion to Strike Reply
Following its customary practice the Center referred these applications to the Panel.
4. Factual Background
Complainant is a real estate company that owns, renovates, operates, manages, and leases commercial property. Among the buildings in its portfolio are three commercial buildings in the Los Angeles, California, United States of America area, located at 9000 Sunset Boulevard, 9200 Sunset Boulevard, and 801 Figueroa Street. The building at 9200 Sunset Street is named Luckman Plaza; the building at 801 Figueroa Street is 801 Tower. Complainant has no registered trademarks in any of these phrases but claims to have used each to promote its real estate services related to the applicable building.
Respondent is an individual with an address in Los Angeles. He is associated with another commercial real estate company in the Los Angeles area, the Cook + Lewis Group.1 Respondent registered the disputed domain names in November 2005.
Each of the disputed domain names resolves to a single page. These differ only in identification of the particular building that is the page’s subject. On each the disputed domain name appears in large type in the upper left corner. Immediately underneath the disputed domain name, in slightly larger type, is the name of the building at this location: Luckman Plaza at “9200sunset.com”, 801 Tower at “801figueroa.com”, and 9000 Sunset at “9000sunset.com”. Below the caption is a box through which an Internet user may register his or her name, email address, and phone number to subscribe to Respondent’s mailing list, with the following text immediately to the left:
“For real estate inquiries regarding this property, please enter your contact information, and a real estate specialist for this building will contact you to answer any questions.”
Each website has a Google® map showing the location of the building, under which is the name and logo of the Cook+Lewis Group, identified as “the exclusive real estate sponsor for this website ([e.g.] 801 ‘figueroa.com’)”. In small type at the bottom of the website is a disclaimer that reads “This website is not affiliated with the building”, a hyperlink to a website owned by Mr. Cook (of Cook+Lewis Group) at “www.[buildingaddress].com”, and an email link to this website.
5. Parties’ Contentions
Complainant contends as follows:
Complainant has trademark rights in the phrases 9000 Sunset, 9200 Sunset, and 801 Tower because for many years it has used them prominently to identify the buildings located at these addresses and prominently to promote the real estate services that Complainant offers in connection with these buildings. Complainant’s “extensive use, advertising, and promotion” of these phrases have made the marks “well known and uniquely associated with the Complainant and Complainant’s real estate services in the minds of consumers and in the trade”. Two of the disputed domain names are thus identical to marks in which Complainant has rights and the third is confusingly similar because the number 801 in 801 Tower is “the dominant portion of both the mark . . . and the disputed domain name”.
Respondent has never been known by any of the disputed domain names, either individually or in any business in which he is associated. By using each of the disputed domain names as a gateway to the Cook+Lewis Group’s real estate services, Respondent has been using them to confuse and divert to Respondent’s websites consumers looking for Complainant’s real estate services. The content of each of the websites confirms this intent, and as such it is not legitimate under paragraph 4(a)(ii) of the Policy.
That use also demonstrates registration and use in bad faith for purposes of paragraph 4(a)(iii) of the Policy. The web page content misleads internet users seeking Complainant’s services by implying that there is some “direct association” between Complainant and Respondent. The small disclaimer at the bottom of each website does not obviate this confusion; furthermore, the language quoted above about “for real estate inquiries about this property . . .” enhances the likelihood of confusion. Respondent’s bad faith is further illustrated by its refusal to respond to a cease-and-desist letter sent to it by Complainant in October 2007. Respondent has thus registered and is using the disputed domain names to create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website, and to prevent Complainant from registering domain names incorporating Complainant’s marks.
Respondent contends as follows:
Complainant has no registered rights in any of the marks that it claims; indeed geographically descriptive terms such as street addresses are rarely protectable under trademark law. The three combinations “are merely building designations or common street addresses”. Complainant uses them solely to describe a geographic location rather than as a trademark. Complainant has not shown secondary meaning in the three phrases that it claims as marks. Complainant has provided no evidence that it had common law rights in any of its claimed marks in November 2005, when Respondent registered the disputed domain names. The phrase “801 Figueroa” is not confusingly similar to “801 Tower”. Numbers in street addresses are reused frequently and there is nothing unique about use of the number 801 in Complainant’s claimed “801 Tower” mark.
Respondent claims a number of rights or legitimate interest in the disputed domain names. It uses the disputed domain names as street addresses, which each one of them is, to display information about the relevant geographical area. Respondent and others have a pending patent application captioned “System and Method of Virtualizing Physical Locations” that they intend to exploit through a business of providing geographical information at websites having street addresses; in furtherance of this business Respondent has registered many other domain names that consist entirely of street addresses. Some of these other sites provide information about businesses in the applicable geographic area; someday perhaps the disputed domain names will be used for the same purpose though they are now “in an earlier stage of development”.
None of the evidence submitted by Complainant proves registration or use of the disputed domain names in bad faith; furthermore, Complainant has provided no evidence that the current activities took place at or shortly after the time Respondent registered the disputed domain names. The text of the advertisements and other content of the websites at the disputed domain names are not intended to divert business from Complainant. They state merely “that Cook+Lewis Group is the exclusive real estate sponsor for the website”, not the building. No diversion has occurred. The Cook+Lewis Group’s advertisement does not have a link, phone number, or mailing address of the Cook+Lewis Group and “Respondent does not intend to use the websites to exclusively advertise” that company. Any possible confusion is obviated by the disclaimer at the bottom of each of the web pages. Respondent’s election not to reply to the cease-and-desist letter does not demonstrate bad faith because that letter does not set forth a valid legal claim.
6. Discussion and Findings
A. The Parties’ Supplemental Filings
As a preliminary matter the Panel must decide whether to consider the three supplemental filings made by the parties.
Paragraph 12 of the Rules provides “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties”. Panels have almost universally held that such unsolicited filings should be considered, if at all, only in exceptional circumstances. Paragraph 10(c) of the Rules expressly authorizes a panel to extend the deadlines set by the Rules only “in exceptional cases” and no lower a threshold ought to apply to pleadings and evidence beyond the one filing per party authorized by the Rules. Panels that have allowed additional pleadings generally do so only when the response includes a matter that the complainant could not reasonably have anticipated when the complaint was filed. Examples of cases in which additional materials have been allowed under this principle illustrate just how rarely such pleadings are appropriate: alleged forgery and manufactured evidence,2 alleged perjury,3 objective evidence disproving a factual assertion in the response that the complainant could not have anticipated.4 Some panels have stated that absent exceptional circumstances additional filings should not be allowed even if their content might alter the outcome of the proceeding.5
In this proceeding the Response contains no factual material or argument that Complainant should not reasonably have anticipated, and the proposed Reply consists entirely of additional evidence in Complainant’s possession when the Complaint was filed or re-argument of contentions advanced in the Complaint. Leave to submit the Reply is denied and the Panel will not consider any of the parties’ supplemental filings in reaching its decision.
As the Panel’s analysis differs for each of the disputed domain names, they are considered separately.
At the outset the Panel dispenses with Respondent’s contention that a street address is not susceptible of common law trademark rights sufficient to invoke the Policy. Panels have consistently held that any word or phrase used to identify the source of goods or services will suffice under paragraph 4(a)(i). The identifier need not be a registered trademark or may even be a word or phrase that is not subject to registration under applicable national law. See, e.g., Edward G. Linskey v. Brian Valentine, WIPO Case No. D2006-0706 (<finances.com>); James Good o/a Pornreports.com v. Mark Anderson, WIPO Case No. D2004-0391 (<pornreports.com>). There is no reason why the identifying word or phrase cannot be a street address.
The evidence here does not show any use of the phrase “801 Figueroa” in connection with Complainant’s marketing of its real estate services for the building that it manages at that street address. Rather Complainant markets that building using the building’s name “801 Tower”. Complainant does not contend otherwise, but argues that incorporating the street address of this building as a domain name Respondent has rendered his disputed domain name confusingly similar to the phrase in which Complainant claims trademark rights. While using the dominant feature of a mark with extra words, or modifying the dominant feature slightly, may create confusing similarity with the mark, as Complainant argues, this approach fails as to 801 Tower for the simple reason that the street number 801 is not the dominant feature of Complainant’s mark. By itself, without the word “tower”, that number has no obvious connection with the building beyond its street number. This disputed domain name is not confusingly similar to a mark in which Complainant has rights, so as to it the Complaint fails.
The Complaint also fails as to <9200sunset.com> because Complainant has not carried its burden of proof of under paragraph 4(a)(i) of the Policy. Complainant has not shown that it uses the street address as its identifier for the goods or services it provides in connection with the building. All of the materials submitted by the parties, and the additional material in the archives viewed by the Panel, identify this building and promote Complainant’s services using the name “Luckman Plaza”. More than mere identification with the product or service is needed; Complainant must show – and here has not shown – that an identifiable segment of its target audience associates the building’s street address with Complainant’s goods and services.
(i) Identical or Confusingly Similar
The evidence does, however, demonstrate that 9000 Sunset is sufficiently identified with Complainant’s goods and services to make out Complainant’s common law rights in that phrase sufficient to invoke the Policy. Complainant in its advertising and Respondent on its web page identify this building by its street address. Naming and marketing a building after a street address is not an uncommon occurrence with commercial real estate, as the header on Respondent’s web page illustrates. The disputed domain name is identical to this mark except for deleting the space between the number and street name and addition of the top level domain “.com”, two changes required by Internet protocols, satisfying paragraph 4(a)(i) of the Policy.
(ii) Rights or Legitimate Interests
Respondent has never been known by the name 9000 Sunset, and Complainant has never authorized Respondent to use any of its marks, so Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the domain name <9000sunset.com> one. The content of each of Respondent’s sites demonstrates that the use to which Respondent has put this domain name is not bona fide or legitimate under the Policy. The most prominent text, in the largest type, on each page is the name of the building at the address incorporated into the domain name: 9000 Sunset, Luckman Plaza, and 801 Tower – Complainant’s marks. The text quoted in Section 4 above appears to the Panel to imply affiliation with the building, and, the Panel believes, was intended to do so. In these circumstances, providing the address of and email inquiry link to The Cook+Lewis Group, a competing provider of real estate services, and identifying that entity as the “exclusive real-estate sponsor” of the website, further demonstrate use that under the Policy is not legitimate.6
There is no mention on the site of Respondent’s business process that is the subject of its pending patent application; no inclusion on the website of anything to suggest that this process was, is, or will someday be the website’s purpose; and no evidence of “demonstrable preparations” beyond registration to use the disputed domain names for that purpose.7 Whatever Respondent or his associates may have done to promote this process elsewhere, the record offers no connection between the business process and these websites, which appear not to have changed from when they were established, as Respondent more or less acknowledges.
Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy as to <9000sunset.com>.
(iii) Registered and Used in Bad Faith
For the reasons set forth in the preceding subsection Complaint has demonstrated that Respondent has used the disputed domain name <9000sunset.com> in bad faith.
Registration in bad faith is a closer question, but a majority of the Panel believes that this too has been established. Respondent cites his registration of many other street addresses as demonstrating that he registered this domain name because it was a street address, not because Complainant used it as a trademark. That argument misses the point. Whatever the subjective reasons for registering the domain name, which no one but Respondent will ever know for certain, the record demonstrates that Respondent knew of Complainant and its mark when the disputed domain name was registered. As an active participant in the commercial real estate business in the same city as Complainant, Respondent could not credibly deny that he was aware of Complainant and its mark when he registered the disputed domain name.8
The use to which Respondent has put the disputed domain name – which Respondent does not deny9 – provides objective evidence that he targeted Complainant. The site makes prominent use of Complainant’s mark and includes content the Panel has found misleadingly to imply an affiliation with Complainant. From this evidence it is reasonable to believe that Respondent registered the disputed domain name “intentionally [to] attempt to attract, for commercial gain, Internet users to [Respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement”, as proscribed in paragraph 4(b)(iv) of the Policy.
For the foregoing reasons,
(a) By majority vote (see Rules, paragraph 15(c)), in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <9000sunset.com> be transferred to the Complainant; and
(b) The Complaint is denied as to the domain names <801figueroa.com> and <9200sunset.com>.
Richard G. Lyon
David E. Sorkin
Dated: April 10, 2008
Opinion Dissenting As To the Disputed Domain Name <9000sunset.com>
I respectfully dissent in part from the Panel’s decision.
I concur in the Panel’s decision to deny the Complaint as to the domain names <801figueroa.com> and <9200sunset.com>.
As to <9000sunset.com>, however, I do not believe that Complainant has sustained its burden of proof on the element of bad faith registration. I would decide the matter on that basis without reaching the questions of rights or legitimate interests and bad faith use.
Respondent and his associates have registered numerous domain names comprised of street addresses. In this case, Respondent claims to have registered <9000sunset.com> because it contains the phrase “9000 Sunset”, which corresponds to the street address of the building located at 9000 Sunset Boulevard in Los Angeles.
The question of Respondent’s true motivation for registering the disputed domain name is, in large part, a subjective one. As the majority correctly notes, only Respondent himself can know for certain what his true intentions were at the relevant time. Domain name registrants accused of cybersquatting often disavow any bad faith intentions, claiming instead that a particular domain name was selected for obviously contrived or otherwise implausible reasons, and panels frequently reject such claims based upon circumstantial evidence. See, e.g., Philip Morris USA Inc. v. Prophet Partners Inc., WIPO Case No. D2007-1614 (Feb. 8, 2008) (finding that the respondent likely registered <marlboro.biz> because of its correspondence to the complainant’s mark rather than because it is an obscure place name, in part based upon the fame of the mark and the respondent’s failure to use the domain name in the latter sense); Hertz System, Inc. v. Jeff Park, WIPO Case No. D2007-1120 (Nov. 9, 2007) (similar finding as to <herts.com>); Michelman, Inc. v. Internet Design, WIPO Case No. D2007-1369 (WIPO Nov. 26, 2007) (finding that the respondent likely registered <michelman.com> because of its correspondence to a registered mark rather than because Michelman is a surname, given the rarity of the name and the respondent’s failure to use the domain name in its sense as a surname). But in this particular case, there is substantial circumstantial evidence to corroborate Respondent’s claim as to his intentions. On balance, I am left with little doubt that Respondent registered the disputed domain name <9000sunset.com> because it contains a street address, and not because it contains a trademark. The fact that Complainant has attempted to promote its building using 9000 SUNSET as a trademark does not entitle Complainant to prevent others, including Respondent, from using the street address to refer to the building. For these reasons I decline to find bad faith registration.
Furthermore, even if Respondent had selected the domain name because of the meaning or notoriety it acquired as a result of Complainant’s claimed trademark use, it is still not clear to me that this would constitute bad faith. One who markets properties within a building commonly known by a trademark may well be entitled to use that mark for that purpose, just as a dealer in second-hand (but genuine) trademarked goods may legitimately describe the goods using that mark. The law regarding such nominative use rights is unsettled, and in my view a domain name registration that is based upon a plausible and reasonable interpretation of trademark law cannot be said to be in bad faith, even if that interpretation ultimately is determined to be incorrect. See Nextel Communications Inc. v. Jason Geer, NAF Case No. FA477183 (July 15, 2005) (dissenting opinion), and the authorities cited therein. The Policy was never intended to apply to cases involving legitimate trademark disputes; such disputes are to be relegated to the courts. See id.; see also Second Staff Report on Implementation Documents for the Uniform Domain Dispute Resolution Policy (Oct. 24, 1999), “http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm”, ¶ 4.1(c). At best Complainant’s case rests upon a legitimate trademark dispute, one to which the Policy ought not apply.
David E. Sorkin
1 Respondent and Mr. Cook of Cook+Lewis, among others, are co-inventors on the patent application discussed below.
2 Interactive Study Systems Inc. v. BFQ, WIPO Case No. D2008-0205; Edward G. Linsky v. Brian Valentine, WIPO Case No. D2006-0706.
3 Music Plus Television Network, Inc. v. Dennis Tzeng, WIPO Case No. D2007-1486.
4 Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447.
5 Align Technology, Inc v. Web Reg/ Rarenames/ Aligntechnology.Com, WIPO Case No. D2008-0103; Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Administrator, WIPO Case No. D2007-0856 (dissenting opinion); Rudy Rojas v. Gary Davis, WIPO Case No. D2004-1081.
6 Respondent’s disclaimer does not alter this conclusion. Panels look at the content of a web page as a whole and evaluate the effect of disclaimer in its context. The disclaimer on Respondent’s web pages is so small it is difficult to read, unlike the text of the advertisement and language inviting an email link to contact “a real estate specialist for this building.”
7 See Policy, paragraph 4(c)(i).
8 See Salt River Community Gaming Enterprises (d/b/a Casino Arizona) v. Fort McDowell Casino, WIPO Case No. D2007-0416. As noted, each of his websites at issue in this proceeding prominently features the name used by Complainant to promote its building.
9 Respondent similarly does not deny that Complainant had used 9000 Sunset to market the building at the time he registered the disputed domain name, and use of that phrase as a header (comparable to Luckman Plaza for the <9200sunset.com> domain name) strongly suggests otherwise.