WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
General Growth Properties, Inc. v. Future Net (to be)
Case No. D2003-0500
1. The Parties
The Complainant is General Growth Properties, Inc. of Chicago, Illinois, United States of America, represented by Neal, Gerber & Eisenberg of United States of America.
The Respondent is Future Net (to be) of Mission Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <northridgefashioncenter.com> is registered with Alldomains.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 24, 2003. On June 25, 2003, the Center transmitted by email to Alldomains.com a request for registrar verification in connection with the domain name(s) at issue. On June 26, 2003, Alldomains.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 on July 1, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2003. The Response was filed with the Center on July 16, 2003.
The Center appointed Andrew Mansfield as the sole panelist in this matter on July 23, 2003. 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.
The language of the proceeding is English.
4. Factual Background
Complainant is a corporation organized under the laws of the state of Delaware. The corporation develops, owns, operates and manages shopping malls in forty-one states in the United States. It is what is referred to as a Real Estate Investment Trust, a form of mutual ownership that uses the pooled capital of many investors to purchase and manage income property.
One of the shopping malls that Complainant owns is referred to as the "Northridge Fashion Center." It is located in Northridge, California, a neighborhood in the northern part of the city of Los Angeles. The mall consists of over one hundred and seventy shops and restaurants.
Northridge Fashion Center has been in operation since 1971. It has continually advertised and promoted the shopping mall under the service mark "Northridge Fashion Center" during the past thirty two years.
Respondent is an individual who operates several related Internet websites that sell low-cost holiday decorations. The name of the business operated by Respondent is "Seasons LA, LLC." Respondent describes Seasons LA, LLC as the "nets plastics warehouse." Respondent sells such items as life-size plastic illuminated outdoor Christmas figurines and small plastic religious devotional statues. Respondent states that he founded Seasons LA, LLC in 1995.
Respondent states that he obtained and maintained the domain name so that he may expand into selling "knick-knack items" fulfilled by another company called Specialty Merchandise Corporation.
Complainant registered <northridgefashion.com> on February 7, 2000, and has used that domain to promote and advertise the Northridge Fashion Center. Respondent registered the domain name, <northridgefashioncenter.com>, on June 12, 2000.
Respondentís address registered with the Registrar is only 10.05 miles from the Northridge Fashion Center shopping mall. The distance between the two locations may be covered by approximately a fourteen-minute drive by automobile.
5. Partiesí Contentions
Complainant states that the domain name is identical to its common law service mark, "Northridge Fashion Center." Complainant also states that Respondent has no rights or legitimate interests in the domain name.
Complainant alleges that Respondent registered the domain name to divert web traffic from those seeking the website for the Northridge Fashion Center shopping mall and deliver those web users to Seasons LA, LLC. Respondent hoped that those individuals diverted might purchase items advertised by Seasons LA, LLC.
Complainant believes that Respondentís behavior after being contacted by Complainant further evidences Respondentís bad faith. Between February 11, 2003, when Complainant first contacted Respondent, and the filing of the Complaint with the Center, Respondent changed the content and contact information for the domain name on several occasions. Respondent listed the domain name for sale on March 21, 2003. On April 21, 2003, the domain name again forwarded users to Seasons LA, LLCís website. Finally, on June 12, 2003, Respondent renewed its registration of the domain name for two additional years.
Respondent states that it acquired and has maintained the domain name as a location at which to launch an on-line store selling knick-knacks. Those plans have been put on hold because of the economic slowdown.
Respondent argues that Complainant could have acquired the domain name in February 2000, but chose instead to acquire and use <northridgefashion.com>. In addition, Respondent states that Complainant does not have rights that may be protected because it did not register "Northridge Fashion Center" as a trademark.
Finally, Respondent argues that its geographic proximity to the Northridge Fashion Center mall is a mere coincidence. No evidence of bad faith may be inferred from that coincidence.
6. Discussion and Findings
Trademark rights arise in the United States from the actual use of a trademark or service mark. If a service is provided under a brand, common law trademark rights are automatically created. This is especially true once consumers view the brand name as an indicator of the serviceís source.
Complainant began to use the Northridge Fashion Center service mark in 1971. The service mark has been widely promoted and advertised in Los Angeles since that date. Although Complainant never registered the service mark with the United States Patent and Trademark Office, Complainant has the exclusive right to use this mark to describe a shopping mall in Los Angeles and perhaps the greater Southern California area.
A. Identical or Confusingly Similar
The Policy protects common law trademarks and service marks. Numerous decisions of prior Panels make this clear. See, e.g., Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210; Jeanette Winterson.v. Mark Hogarth, WIPO Case No. D2000-0235; Giampaolo Matteucci v. Webmaster, AWG, WIPO Case No. D2001-1135.
Complainant has a common law service mark for Northridge Fashion Center. The domain name is identical to that service mark. For purposes of such comparison, the addition of the three letter suffixes known as gTLDs are not significant. Thus, the addition of ".com" to the service mark does not lessen the identity of the service mark and domain name.
B. Rights or Legitimate Interests
Complainant states that Respondent has no rights or legitimate interests in the domain name. Respondent proffers no information concerning rights or legitimate interests he might have in the domain name in his Response. The Panel therefore finds that Respondent has no rights or legitimate interests in the domain name.
C. Registered and Used in Bad Faith
The Policy provides illustrative circumstances evidencing bad faith in the registration or use of a domain name. Paragraph 4(b)(iv) provides that bad faith may be found where:
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 of your website or location or of a product or service on your website or location.
The evidence indicates that Respondent registered and used the domain name in order to attract those seeking the Northridge Fashion Center shopping mall. Once drawn to the domain name, Respondent utilized the confusion between the domain name and Complainantís service mark to sell his plastic products.
The finding of bad faith is strengthened considerably by the geographic proximity of Respondent and the Northridge Fashion Center. The Panel finds that Respondentís claim that he did not know of Complainantís mark non-credible. The Panel also finds that Respondentís claim that the identity of Complainantís service mark and the domain name is merely coincidental equally non-credible.
Because the findings above conclusively indicate that Respondent registered and used the domain name in bad faith, this Panel need not address whether the attempt to sell the domain name to third parties or the renewal of the domain name after notification from Complainant is further evidence of bad faith.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complaint.
Dated: July 25, 2003