WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laramar Group, L.L.C. v. XC2
Case No. D2006-0617
1. The Parties
The Complainant is Laramar Group, L.L.C., Chicago, United States of America, represented by Neal, Gerber & Eisenberg, United States of America.
The Respondent is XC2, Central, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <laramar.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2006. On May 18, 2006, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On May 18, 2006, eNom 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 May 24, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 14, 2006
The Center appointed Adam Samuel as the sole panelist in this matter on June 20, 2006. 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
The Complainant is a real estate investment, development and management company based and registered in Chicago, Illinois, USA. It has a real estate portfolio of over $1 billion across the USA. The Complainant and its predecessor have been in the real estate business for over 16 years. It targets investment opportunities for multi-family, mixed-use and senior housing properties, and then seeks to enhance them through redevelopment, renovation, management and repositioning. The Complainant also provides real estate management services to third-party property owners who range from local owners with a few properties in a specific market to institutional owners with large national portfolios.
The Complainant has obtained federal trademark registrations in the United States Patent and Trademark Office for its “LARAMAR” mark for use in connection with real estate development services and real estate investment and management services. On July 16, 2001, the Complainant registered the domain name <laramargroup.com>, and since that time, has used that domain name in connection with its official website. On July 31, 2003, the Respondent registered the domain name in issue <laramar.com>.
5. Parties’ Contentions
Except for the irrelevant addition of the “.com” suffix, the domain name in issue, <laramar.com> is identical to Laramar’s federally-registered Service Mark, under which Laramar has provided real estate investment, development and management services for many years. The Respondent cannot establish a legitimate right to, or interest in, <laramar.com>. The Respondent has no legal relationship with Laramar or its predecessor through which the Respondent can claim any rights to the Domain Name, nor has Laramar consented to the Respondent’s registration of the Service Mark as a domain name. The Respondent also has no legitimate rights or interest in the Domain Name because it is not referred to or commonly known by the name <laramar.com>. Such rights can arise only through the bona fide offering of goods or services.
The Respondent has not made and is not making any legitimate, noncommercial or fair use of the Domain Name. The Respondent has used the Domain Name as a portal to house real-estate-related links, some of which ultimately resolve at the websites of real estate leasing and management companies other than Laramar.
The Respondent would not have chosen the Domain Name unless it was seeking to trade on the LARAMAR mark.
By registering and maintaining a domain name registration that is identical and confusingly similar to the LARAMAR mark, the Respondent has prevented Laramar from registering its Service Mark as a “.com” domain name. Respondent’s bad faith registration of the Domain Name is further demonstrated by the pattern of abusive and preclusive domain name registrations in which it has engaged.
The Respondent also appears to have provided false information in its registration for the Domain Name, including a false facsimile number, constituting further evidence of its bad faith. The Respondent’s failure to provide complete and correct contact information has not only served to further frustrate Laramar’s attempts to resolve this matter, but it is also a breach of eNom’s Registration Agreement and constitutes further evidence of bad faith. The Respondent’s failure to assert a legitimate interest in the Domain Name or to reply in any way to Laramar’s counsel’s demand letter or subsequent communications constitutes further evidence of Respondent’s bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The domain name in issue is identical to the Complainant’s service mark except for the addition of the “.com” suffix. Since without that addition, the domain name simply would not work, it would be hard to imagine a clearer example of a domain name being identical or confusingly similar to a service mark.
B. Rights or Legitimate Interests
The Respondent is not called ‘Laramar’ and does not appear to trade under that name. There is no evidence that the owner of the trademark in question, the Complainant, has authorized it to use the trademark. The Respondent has never asserted any rights or legitimate interests in the name. For these reasons, on the basis of the case file, and in view of the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The domain name in question ultimately resolves to websites offering apartments and real estate management services for landlords in Denver and Chicago.
The Complainant’s service mark is distinctive and has no ordinary meaning in the English language away from the Complainant’s use of it in its business. When it registered the domain name, the Respondent must have known of the Complainant’s position in the real estate market and at the very least closed its eyes as to whether it was infringing the Complainant’s registered service mark or its common law rights in this area. Otherwise, it is impossible to explain its registration of the domain name.
The Respondent seems to have chosen the domain name in question in order to exploit the Complainant’s service mark either to disrupt the Complainant’s business or to benefit from the service mark through earning revenue by means of payments that it might be able to earn from sites to which users of its website might click through. It is not relevant to the question of bad faith as to whether these attempts have been successful.
The fact that the Respondent is using the domain name in issue to divert customers to competitors of the Complainant is further evidence of bad faith.
The Panel in Banca di Roma S.p.A. v. Unasi Inc. a/k/a Domaincar, WIPO Case No. D2006-0068, agreed that this type of behaviour constituted bad faith. It said:
“The Respondent is linking the disputed domain name to a portal site offering sponsored links. There, Internet users have access to a variety of goods and services, among them websites of the Complainant’s competitors. As described by the panelist in Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584, such websites offer a revenue program which pays domain name owners (in the particular case) “50% of all revenues generated from searches, popunders, popups, and exit popups” in respect of users directed to its website through the participants domain name.
This leads the Panel to the conclusion that the Respondent registered the domain name at issue to divert Internet users seeking information about the Complainant’s products to a portal site offering sponsored links and to share in revenues obtained from the diverted traffic. Even if internet users would realize that the Respondent’s website is not connected with the trademark owner, the Respondent is liable to profit from their initial confusion, since they may still be tempted to click on sponsored links. In many previous UDRP decisions, in some of them the Respondent was involved as a respondent party as well, such exploitation of trademarks to obtain click-through commissions from the diversion of internet users was held of use in bad faith (see e.g. Deloitte Touche Tohmatsu v. Henry Chan, WIPO Case No. D2003-0584; Mizuno Kabushiki Kaisha Corporation and Mizuno USA, Inc. v. Henry Chan, WIPO Case No. D2004-0255; Future Brands LLC v. Mario Dolzer, WIPO Case No. D2004-0718; ACCOR v. Mr. Young Gyoon Nah, WIPO Case No. D2004-0681; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984 Members Equity PTY Limited v. Unasi Management Inc., WIPO Case No. D2005-0383; Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. La Porte Holdings, WIPO Case No. D2005-0589); Gianfranco Ferre’ S.p.A. v. Unasi Inc., WIPO Case No. D2005-0622; L’Oreal, Biotherm, Lancome Parfums et Beauté & Cie v. Unasi, Inc., WIPO Case No. D2005-0623). In the absence of any reply of the Respondent, the Panel can make a reasonable inference that the Respondent’s website generates revenue for the Respondent in that manner.”
For these reasons, the Panel concludes that the Respondent has both registered and used the domain name in issue in 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 <laramar.com> be transferred to the Complainant.
Date: June 29, 2006