WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Atlantic Station, LLC v. Dargan Burns III
Case No. D2010-0996
1. The Parties
Complainant is Atlantic Station, LLC of Atlanta, Georgia, United States of America, represented by DLA Piper (US) LLP, United States of America.
Respondent is Dargan Burns III of Atlanta, Georgia, United States of America.
2. The Domain Names and Registrars
The disputed domain names <atlanticstation-bars.com>, <atlanticstation-dental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstation-shops.com> (“Domain Names”) are all registered with 1&1 Internet AG.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2010. On June 17, 2010, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the Domain Names. On June 22, 2010, 1&1 Internet AG transmitted by email to the Center its verification response confirming that 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” or “UDRP”), 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 Respondent of the Complaint, and the proceedings commenced on June 24, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 14, 2010. The Response was filed with the Center on July 13, 2010.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on August 2, 2010. 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
Atlantic Station is a provider of real estate, investment, and community-related services. Atlantic Station conceived, developed, and realized the creation of a mixed-use, smart growth, and sustainable development in Atlanta, Georgia, set on 130 acres. For over a decade, since at least as early as February 2000, Atlantic Station has used the ATLANTIC STATION Marks in connection with Atlantic Station's real estate, investment, and community-related business. Atlantic Station has established and maintains standards of quality for its services and any services provided under the ATLANTIC STATION Marks by licensees subject to written licenses.
The ATLANTIC STATION Marks have been advertised to the purchasing public and to the trade throughout the United States on an extensive and frequent basis by a variety of advertising media, including newspapers, magazines, television, radio, trade publications, and the Internet.
Complainant is the owner of 3 United States (“U.S.”) trademark registrations as follows:
ATLANTIC STATION and Design, Registration No. 2,765,509, registered on September 16, 2003 for: “Real estate services, namely, real estate syndication, time sharing, trustee services, investment, listing, management, leasing, management, insurance claims processing, agencies, equity sharing, namely, managing and arranging for co-ownership, escrow services, financial investment in the field of real estate, financial valuation of real estate, brokerage services”, in International Class 36, and “real estate development, site selection”, in International Class 37;
ATLANTIC STATION, Registration No. 2,832,348 registered on April 13, 2004 for: “organizing community festivals featuring a variety of activities, namely, sporting events, art exhibitions, flea markets and the like”, in International Class 41; and
ATLANTIC STATION and Design, Registration No. 2,840,616 registered on May 11, 2004 for: “organizing community festivals featuring a variety of activities, namely sporting events, art exhibitions, flea markets, ethnic dances and the like”, in International Class 41.
Atlantic Station operates its official Internet web site at <atlanticstation.com> (the "Atlantic Station Web Site"). Consumers can access information about Atlantic Station and its services via the Atlantic Station Web Site.
The domain name <atlanticstation.com> is owned by AIG Global Real Estate Investment Corp
Respondent currently owns the following domain names that are the subject of this Complaint which domains were each registered on April 28, 2009: <atlanticstation-bars.com>, <atlanticstation-dental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstation-shops.com>.
Respondent is the Managing Member and Registered Agent for the business Corporate Housing of Atlantic Station, LLC created in 2007. Prior to becoming a Georgia Limited Liability Company the business functioned as a partnership comprised of persons that bought condominiums on 16th Street or 17th Street within zip code 30363, Atlantic Station. The domain name was selected because it incorporates both the name of the LLC, the geographical location of the business, and a distinction of the type of services that are provided. The partnership (Corporate Housing of Atlantic Station) was created in 2004 after a real estate agent advised Burns, businessmen, dentists and lawyers about opportunities in the yet to be constructed “Element” condominium building and the old Atlantic Steel brownfield.
Corporate Housing of Atlantic Station, LLC is a past member of the Atlanta Convention and Visitors Bureau and holds a City of Atlanta Business License. The business serves to provide furnished condominiums, catered in house and restaurant dining services, wine tasting, medical, and dental, travel and other related service to business travelers who seek temporary housing accommodations as an alternative to a hotel or apartment.
Respondent owns a condominium in Atlanta, Georgia. Corporate Housing of Atlantic Station, LLC also maintains its corporate office in Atlanta, Georgia. The addresses are within the geographical area, neighborhood, and destination known as Atlantic Station.
Complainant and Respondent were involved in a prior domain name dispute. On March 13, 2009, Complainant submitted a UDRP complaint, requesting that Respondent's domain name <atlanticstation-condo.com> be transferred to Complainant. On April 13, 2009, a single-member panel denied Complainant's requested relief. See Atlantic Station, LLC v. Dargan Burns III (NAF Claim No. FA0903001250592).
5. Parties’ Contentions
Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has established nationwide and federally registered rights in its well-known ATLANTIC STATION Marks. The Domain Names are confusingly similar to and wholly incorporate the ATLANTIC STATION Marks.
The addition of the .COM suffix to the Domain Names in no way distinguishes it from Complainant's ATLANTIC STATION Marks. It is well-established that the presence or absence of punctuation or spacing and the addition of a top level domain suffix are of no consequence when establishing the identity of marks.
Furthermore, the mere inclusion of <.com> in Respondent's Domain Names does not serve to distinguish that name from Complainant's ATLANTIC STATION Marks in any way because <atlanticstation-bars.com>, <atlanticstation-dental.com>, <atlanticstation-food.com>, <atlanticstationrestaurants.com> and <atlanticstation-shops.com> are logical locations for Complainant's website for its ATLANTIC STATION brand real estate, investment, and community-related services.
Finally, the addition of the descriptive terms "bars," "dental," "food," "restaurants," and "shops," to the Domain Names does not serve to distinguish the Domain Names from Complainant's ATLANTIC STATION Marks, particularly as services related to those terms are afforded by Complainant or its licensees. Thus, it is clear that the Domain Names are confusingly similar to Complainant's ATLANTIC STATION Marks.
Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Complainant has no business relationship whatsoever with Respondent. Complainant has not licensed or otherwise permitted Respondent to use the ATLANTIC STATION Marks or to apply for any domain name incorporating the ATLANTIC STATION Marks. Moreover, because Complainant owns the nationwide exclusive rights in the names and marks ATLANTIC STATION, and has United States federal registrations therefore, Respondent cannot establish rights or legitimate interests in the Domain Names.
Unlike the domain name <atlanticstation-condo.com>, Respondent has no clear need for the Domain Names, <atlanticstation-bars.com>, <atlanticstation-dental.com>, <atlanticstation-food. com>, <atlanticstation-restaurants.com> and <atlanticstation-shops.com>, as they cannot be said to refer to any goods or services that Respondent offers or provides.
Registration and Use in Bad Faith
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
Respondent is using the Domain Names to disrupt Complainant's business.
Complainant is a well-known provider of real estate, investment, and community-related services, for which ATLANTIC STATION Marks, and therefore the Domain Names, serve as a source identifier. By creating confusion through its registration and use of Domain Names incorporating the ATLANTIC STATION Marks, Respondent "is attempting to disrupt the business of a competitor . . . [which] is evidence of bad faith registration and use pursuant to Policy.”
Respondent has used the Domain Names to attract Internet users for commercial gain.
The evidence detailed above establishes that Respondent registered and used the Domain Names, which consist entirely of a modification of Complainant's well-known ATLANTIC STATION Marks, for the sole purpose of misdirecting consumers who are attempting to locate the website for the ATLANTIC STATION brand real estate, investment, and community-related services and "to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation or endorsement of its website. Specifically, as noted above, the Domain Names, <atlanticstation-bars.com>, <atlanticstationdental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstationshops.com>, are confusingly similar, if not nearly identical, to Complainant's domain name, <atlanticstation.com>, and the ATLANTIC STATION Marks. As a result, the Domain Names attract Internet users who are looking for the website associated with the services provided by Complainant under the Marks.
Once an Internet user entered the Domain Names into their browser, as late as April 30, 2010, they were directed to a website offering the real estate services of a competitor. Respondent uses the Domain Names to misdirect consumers to Respondent's infringing website where Respondent is offering confusingly similar real estate services, namely condominium listings. Respondent seeks to attract and misdirect Internet users through its use of the Domain Names to competing services, which are clearly aimed at Complainant's potential consumers.
Further, the facts show that Respondent knew of Complainant and its well-known ATLANTIC STATION Marks at the time Respondent registered the Domain Names and that Respondent intended to use the Domain Names to trade off this fame and associated goodwill. First, the Domain Names are nearly identical to Complainant's well-known ATLANTIC STATION Marks. Second, the Domain Names link to a website with real estate services that are competitive with Complainant's business. Third, the website hosted at the Domain Names incorporates Complainant's tag-line LIVE WORK PLAY, demonstrating that Respondent is aware of and intends to trade off Complainant's fame and associated goodwill. (As referred to in representative screenshots, attached as Annex E to the Complaint, with a representative screenshot of <atlanticstation.com>, attached as Annex J.) As further stated by Complainant, lastly, but most importantly, after a favorable decision with the National Arbitration Forum on April 13, 2009, Respondent registered the Domain Names on April 28, 2009, which further demonstrates deliberate bad faith, abusive registration of the Domain Names with knowledge that they infringe on Complainant's marks. Such abusive registrations constitute the excessive cyber squatting that the UDRP seeks to combat.
Identical or Confusingly Similar
With respect to paragraph 4(a)(i) of the Policy, Respondent alleges that:
The service mark ATLANTIC STATION is composed of the generic word "Atlantic"
and the generic word "Station" which, when put together constitute two generic words. The words "Atlantic" and "Station" are descriptive and generic terms and used within thousands of other domain names not owned by Complainant. Complainant does not have exclusive rights to the phrase "Atlantic Station," which is not a "coined" or unique phrase, but rather is a common merely descriptive term widely used by numerous parties. Respondent contends that the Domain Names are comprised of generic and/or descriptive terms, and, in any event, are not associated with Complainant's business.
Rights or Legitimate Interests
With respect to paragraph 4(a)(ii) of the Policy, Respondent alleges that:
Atlantic Station is a descriptive geographical term with its own zip code that describes a place. Descriptive geographical terms are in the public domain in the sense that every seller should have the right to inform customers of the geographical origin of his goods and services. The fact that the condominiums that Corporate Housing of Atlantic Station, LLC markets and manages are physically located within Atlantic Station renders it unable to divorce its geographical location and destination point from Atlantic Station. Atlantic Station is generally recognized as municipality/neighborhood destination. Respondent regularly receives mail with an Atlantic Station destination.
It should be noted that the Lanham Act expressly permits others to use even the registered and incontestable trademark of another where it is shown that the use is a use of a term which is descriptive of and used fairly and in good faith only to describe to users the goods or services of such party, or their geographical origin.
Respondent is commonly known by Corporate Housing of Atlantic Station, LLC a State of Georgia charted business.
Registration and Use in Bad Faith
With respect to paragraph 4(a)(iii) of the Policy, Respondent alleges that:
Respondent has not acted in bad faith and is entitled to "Fair Use" of the term “Atlantic Station” in that Respondent is the incorporator of Corporate Housing of Atlantic, LLC (A Georgia Limited Liability Company) and both Respondent and Corporate Housing of Atlantic Station, LLC are commonly know as such. Respondent has rights and legitimate interests in the Domain Names because it incorporates both its name and physical location. Respondent did not register the disputed domain name with Complainant's mark in mind and had no knowledge of the mark when it registered it. Prior to the notice of dispute, Respondent had prominently displayed a disclaimer that Corporate Housing of Atlantic Station, LLC, its business and its domain address was different and distinct from that of Atlantic Station, LLC and its business and website.
Respondent's website is not similar to Complainant's service mark in that the inclusion of the words "dental, bars, food, shops, and restaurants" to two generic words gives each Domain Name new meaning and definition to what otherwise are two generic words. When small differences exist in terms that are descriptive, the differences may be sufficient to distinguish the Domain Names.
Respondent is a "reseller" that has benefited Complainant by bringing patrons to the neighborhood that otherwise would not have come.
Complainant has failed to prove a single instance that Respondent was “attempting to disrupt the business of a competitor".
Complainant has failed to show that Respondent has acted in bad faith. Respondent has not attempted to sell the Domain Names for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of Complainant seeking to disrupt Complainant's business, and is not using the Domain Names to divert Internet users for commercial gain.
Complainant has failed to prove that Respondent is using the Domain Names to divert consumers away from its website.
Complainant has contradicted itself in claiming that Respondent has no rights or legitimate interests in Atlantic Station while at the same time being aware of “www.atlanticstation-condo.com” and the previously decided case. See Atlantic Station, LLC v. Dargan Burns III, supra.
Complainant has contradicted itself in claiming that Respondent has no rights or legitimate interest in Atlantic Station while ignoring the fact that Respondent's physical and mailing address and Complainant's physical and mailing address are both within the Atlantic Station exclusive zip code 30363 and are literally 2 blocks from each other.
Complainant has failed to prove that Respondent’s website is competitive with Complainant's business.
Complainant has provided no evidence showing that consumers are likely to be confused by the concurrent use of Respondent's domain names and Complainant's mark, or that Respondent's use of its Domain Names created any disruption to Complainant’s business.
Respondent contends that he has not made any attempt to pass himself off as Complainant, and has no interest in selling the Domain Names to Complainant or to any other party.
Complainant's mark is descriptive only and has not acquired distinctiveness or secondary meaning.
6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. (Policy, paragraph 4(a).)
A. Identical or Confusingly Similar
Given the United States Federal trademark Registration Nos. 2,765,509, 2,832,348 and 2,840,616 for the mark ATLANTIC STATION and Complainant’s continued use of the mark for over 10 years, the Panel finds that Complainant has trademark rights in the mark ATLANTIC STATION.
The Panel also finds that that the disputed domain names <atlanticstation-bars.com>, <atlanticstation-dental.com>, <atlanticstation-food.com>, <atlanticstation-restaurants.com> and <atlanticstation-shops.com> are confusingly similar to the registered trademarks in which Complainant has rights. The Domain Names differ from Complainant’s registered trademarks only in that they contain the gTLD domain name suffix “.com” and the descriptive wording “bars”, “dental”, “food”, “restaurants” and “shops”. Neither the descriptive wording contained in each of the Domain Names nor the “.com” is enough to distinguish the Domain Names from Complainant’s marks. In the present action, the Domain Names incorporate the whole of Complainant's trademarks and add the generic terms: bars, restaurants, food, dentists and shops. These terms are not sufficient to avoid a finding of confusion. Atlantic Station, LLC v. Dargan Burns III, NAF Claim Number FA0903001250592, (addition of “condo” did not avoid finding of confusion.); Busy Body, Inc. v. Fitness Outlet Inc., WIPO Case No. D2000-0127 (“the addition of the generic top-level domain (gTLD) name ‘.com’ is … without legal significance since use of a gTLD is required of domain name registrants”); Hoffman-La Roche, Inc. v. Thomas Morgensterns, WIPO Case No. D2010-0194 (the addition of the word “buy” does nothing to dispel the connection in the public mind between the trademark and Complainant); Martha Stewart Living Omnimedia, Inc. Domain Deals, WIPO Case No. D2007-0289, (the panel found that the addition of a generic word to a strong trademark within a domain name does not make it any less confusingly similar to the complaint’s mark).
In the circumstances, the Panel finds that the first requirement of paragraph 4(a)(i) of the Policy is, therefore, satisfied.
B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the Domain Names, it must show
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain names, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Although Respondent may have made a bona fide offering of “condo” apartments or related real estate services and thereby earned the result in Atlantic Station, LLC v. Dargan Burns III, supra, Respondent has not submitted any evidence that it is presently operating any bona fide businesses under the subject Domain Names. It has not offered any evidence that it operates bars or restaurants, that it offers food products or services or dentistry services. Complainant’s evidence shows that all of the Domain Names resolve to Respondent’s “condo” domain. On this page, there are no descriptions of any services relating to restaurants, bars, food or dentists. Respondent alleges without supporting evidence that Respondent has “expanded into the restaurants and medical/dental lines of business. The members of Corporate Housing of Atlantic Station, LLC includes accountants, physicians, dentist, lawyers, businesswomen and restaurant owners.” (Response, p. 4). There is no evidence offered to support these allegations. Moreover, the activities of “members” are irrelevant to the question of whether Respondent is making a bona fide offering of goods and services.
Accordingly, the Panel finds that Respondent has failed to rebut Complainant’s prima facie case that it has a right or legitimate interest in the Domain Names.
C. Registered and Used in Bad Faith
Although the question is close, the Panel concludes that Complainant has failed to prove that Respondent registered and used the Domain Names in bad faith.
The record shows that Respondent registered the Domain Names a few days after learning of the decision in Atlantic Station, LLC v. Dargan Burns III, supra. The proceedings in that case gave Respondent actual knowledge of Complainant’s relevant trademark rights. It is therefore wholely incredible in this Panel’s view for Respondent to assert in its Response that it “had no knowledge of the mark when it registered it.” (Respondent’s response, p. 6). The Panel finds that Respondent had actual knowledge of Complainant’s trademark rights.
However, Complainant has failed to prove that Respondent acted in bad faith when registering and using the Domain Names. Additionally, Complainant has not to the satisfaction of the Panel disproved plausible good faith explanations for Respondent’s actions.
Complainant alleges that Respondent registered the Domain Names to disrupt the business of a competitor. But there is no evidence to support this allegation and no explanation of how registration of the Domain Names would disrupt Complainant’s business.
Complainant says that Respondent’s “sole purpose” was “misdirecting consumers who are attempting to locate the website for the Atlantic Station brand real estate, investment and community related services” and to attract Internet users to Respondent’s site for commercial gain by exploiting confusion. Complainant’s evidence of this bad faith use is that the Domain Names are likely to be confused with Complainant’s marks and “[a]s a result Internet users who are looking for the website associated with the services provided by Complainant under the Marks” will be misdirected to Respondent’s site.
These assertions are not persuasive in this Panel’s view. It is not self evident (especially taking into account the geographically descriptive nature of the Domain Names) that an Internet user who was “attempting to locate the website for the ATLANTIC STATION brand real estate , investment and community related services” (Complaint, p. 7) would be confused by Respondent’s Domain Names, which include the terms shops, bars, restaurants, food and dental. It may well be that, when looking for Complainant, these terms would discourage rather than encourage an Internet user from thinking that the services emanate from the same source.
Complainant says that users are redirected to Respondent’s website where “Respondent is offering confusingly similar real estate services, namely condominium listings.” These allegations are not persuasive in this Panel’s view. To begin with, to prove bad faith under the Policy a general assertion that the domain names are confusingly similar to the complainant’s marks is insufficient. The Policy, paragraph 4(a)(i) requirement that Complainant prove bad faith use and registration is separate and distinct from the requirement in Policy, paragraph 4(a)(i) that the Domain Names be confusingly similar to Complainant’s mark. Consequently, it is not enough to prove confusing similarity, since allowing such proof to indicate bad faith would collapse the requirements of paragraphs 4(a)(i) and 4(a)(iii) into a single requirement.
Furthermore, there is little basis for asserting that Respondent’s <atlanticstation-condo.com> is an “infringing website.” On the contrary, the previous decision held that the use of <atlanticstation-condo.com> in connection with those services was legitimate under the Policy. Atlantic Station, LLC v. Dargan Burns, III, supra. Moreover, there is no indication that Complainant has sought to challenge this decision in a United States court or to otherwise enforce its trademark rights via Lanham Act litigation. With this in mind, the Panel cannot presume on the given record (nor would it be typically speaking appropriate to do so in an administrative proceeding under the Policy) that it is trademark infringement for Respondent to use “Atlantic Station” in conjunction with its real estate services. That being said, and in light of the present record, the Panel finds that the mere redirection of the Domain Names to Respondent’s <atlanticstation-condo.com> page (at which Respondent appears to be offering its services) does not tip the finely balanced scales towards a finding of bad faith under the Policy.
Complainant also alleges that bad faith can be inferred from Respondent’s use on one of its webpages of the phrase “live work play”, which it says is a slogan of Complainant. But there is no proof in the record that the slogan “live work play” has become a source identifier for Complainant such that the mere use of the phrase (especially in a descriptive manner) on a website would support a finding of bad faith use of the Domain Names. .
While indeed noting that Respondent registered the Domain Names after winning the previous above-mentioned UDRP case, there is little basis for presuming that this alone evidences bad faith. Certainly, the timing indicates that Respondent had knowledge of Complainant’s trademark rights. However, Complainant must also prove that Respondent registered and used the Domain Names in bad faith to take advantage of the value of its trademark. Noting the record and the Response, Respondent could very well have registered the Domain Names believing, based on the previous favorable decision, that he was within his rights in doing so, especially given that the previous decision had validated Respondent’s contentions.
The geographic connotations of the “Atlantic Station” make it all the more difficult to presume that Respondent acted in bad faith. This is not to ignore Complainant’s trademark rights, but it is in the difficult position faced by any owner of a mark that has dual meaning. On the one hand ATLANTIC STATION is a trademark; on the other it is a geographic place. Which connotation Respondent exploits depends on the context of the use. Here, Complainant has not offered evidence to prove that Respondent uses “Atlantic Station” in a context that suggest trademark usage instead of descriptive geographic usage. Complainant has not proved by a preponderance of the evidence that Respondent was not likely relying on the geographic connotations of ”Atlantic Station” when it registered the Domain Names.
The Panel emphasizes that the present finding of bad faith is based on the current record and the failure of Complainant’s to show that the Domain Names were registered and used in a bad faith attempt to trade of Complainant’s goodwill (instead of in line with their geographically descriptive nature). The decision here does not mean that the Panel finds in favor of Respondent having rights or legitimate interests in the Domain Names. And the Panel notes in passing that it is of course possible that Complainant may discover evidence at some later time time that Respondent is not restricting the content of pages associated with the Domain Names to descriptive or fair use of the geographic terms. But nevertheless, the Panel notes that its decision is restricted to a determination of bad faith under the Policy and has so done. Naturally, this decsion under the Policy in no way prevents the parties from pursuing the court through a court of competent jurisdiction should they chose to do so.
In short, the Panel finds that Complainant has failed in these proceedings under the Policy to prove bad faith registration and use. Respondent undoubtedly knew of Complainant’s trademark rights when it registered the Domain Names. But knowledge of the mark does not per se establish intention to target Complainant’s marks in particular in the rather unusual circumstances of this present case. Complainant did not prove that Respondent was specifically targetting Complainant’s trademark (as opposed to the descriptive utility) when it registered them.
Reverse Domain Name Hijacking
Respondent has asked for a finding of Reverse Domain Name Hijacking alleging that Complainant abused the UDRP process when it failed to contact Respondent prior to filing the Complaint. If Complainant had done so, it would have learned that Corporate Housing of Atlantic Station, LLC had expanded into the restaurants and medical/dental lines of business. Respondent also alleges that Complainant is harassing Respondent and attempting to "Reverse Hijack" the Domain Names because Complainant filed a Complaint even though Respondent provided Complainant with a reasonable explanation for why Respondent registered the Domain Names.
Reverse Domain Name Hijacking is defined as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rules, paragraph 1. A finding of Reverse Domain Name Hijacking is appropriate if Complainant knew of Respondent's unassailable right or legitimate interest in the Domain Names or the clear lack of bad faith registration and use and nevertheless brought the Complaint in bad faith. Intellogy Solutions, LLC v. Craig Schmidt and IntelliGolf, Inc., WIPO Case No. D2009-1244.
Even though Complainant did not prevail, the Panel finds that Complainant did not bring the Complaint in bad faith. Accordingly, the Panel denies Respondent's request that the Panel find Complainant guilty of Reverse Domain Name Hijacking.
For all the foregoing reasons, the Complaint is denied.
Lawrence K. Nodine
Dated: September 14, 2010