WIPO Arbitration and Mediation Center



General Growth Properties, Inc. v. Paul DiCecco

Case No. D2006-0657


1. The Parties

The Complainant is General Growth Properties, Chicago, Illinois, United States of America, represented by Neal, Gerber & Eisenberg, Chicago, Illinois, United States of America.

The Respondent is Paul DiCecco, Cranston, Rhode Island, United States of America.


2. The Domain Name and Registrar

The disputed domain name <providenceplacemall.com> (the “Domain Name”) is registered with eNom.


3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 25, 2006. On May 29, 2006, the Center transmitted by e-mail to eNom a request for registrar verification in connection with the domain name at issue. On May 31, 2006, eNom transmitted by e-mail to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on June 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2006. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on July 7, 2006.

The Center appointed Robert A. Badgley as the sole panelist in this matter on July 26, 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 following facts are alleged in the Complaint and are undisputed by Respondent. Unless indicated otherwise, the facts set forth in this section are found by the Panel to be plausible and/or supported by evidence annexed to the Complaint.

Complainant is leading Real Estate Investment Trust in the United States, and has been in the real estate leasing and shopping center business for over 50 years. Among Complainant’s shopping malls is Providence Place shopping mall, a 1.3 million square foot regional mall located in Providence, Rhode Island. Since it opened to shoppers, Complainant has continuously provided shopping mall services under the PROVIDENCE PLACE service mark, and the Providence Place shopping mall has become well-known to shoppers across the region. Occupants of Providence Place mall include many well-known retailers, including Nordstrom, JC Penney, Victoria’s Secret and the Gap.

Before the mall was opened to shoppers, its planning and development were the subject of considerable local publicity and media attention. As early as September 1989, Complainant began using PROVIDENCE PLACE in connection with the planning and development of the shopping mall. Copies of numerous newspaper articles discussing the planning and development of Providence Place shopping mall, including its March 1997 groundbreaking, are attached as annexes to the Complaint.

Complainant also commenced use and promotion of the PROVIDENCE PLACE service mark in connection with the leasing of shopping mall space and facilities several years before the property opened to shoppers. Copies of newspaper articles discussing real estate leasing services provided under the PROVIDENCE PLACE service mark are annexed to the Complaint.

As a result of the foregoing pre-opening promotional activities, media attention, and Complainant’s provision of real estate leasing services under the PROVIDENCE PLACE service mark, the PROVIDENCE PLACE mark had acquired distinctiveness even before the mall opened to the public.

In March 1996, Complainant’s predecessor registered the domain name <providenceplace.com>, and Complainant continues to use that domain name to promote the Providence Place shopping mall.

On September 22, 1997, after Complainant and its predecessor had been using the PROVIDENCE PLACE mark, Respondent registered the Domain Name <providenceplacemall.com>. In January 2006, Complainant became aware of Respondent’s registration of the Domain Name, which, at that time, immediately forward Internet users to an adult website located at <exzotica.com>. On January 25, 2006, Complainant’s counsel sent a letter to Respondent via Federal Express to the address listed in the registration record for <providenceplacemall.com>, demanding that Respondent cease use of the Domain Name and immediately transfer it to Complainant. Respondent’s listed address indicates that he is located in Cranston, Rhode Island, five miles from Providence Place shopping mall.

In a February 1, 2006 e-mail, Respondent’s counsel represented that the Domain Name no longer linked to <exzotica.com>, and that the prior link to that site had been inadvertent. Respondent’s attorney further stated that he could not “guaranty that [the Domain Name] will sit idly for any extended period of time,” and suggested that Complainant contact him if it wished to purchase the Domain Name.


5. Parties’ Contentions

A. Complainant

Complainant’s factual assertions are set forth above, and its legal arguments will be taken up in the discussion below.

B. Respondent

The Respondent did not reply to Complainant’s contentions.


6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) 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

In the Panel’s view, Complainant has established common law rights to the term PROVIDENCE PLACE as an identifier of it shopping mall services, through continuous use of that mark and the widespread media publicity attending the trademarked mall even prior to its opening to the public. The mark is not inherently strong, but Complainant’s evidence of use and of widespread local media coverage referring to the mall as “Providence Place” satisfies the Panel that the mark has acquired distinctiveness.

Moreover, several prior panels applying the Policy have concluded that complainants may hold valid common law trademark rights in terms that identify and distinguish particular shopping malls. Indeed, several such decisions involve shopping malls owned by Complainant. See, e.g., General Growth Properties, Inc. v. Mr. Fred Norris, WIPO Case No. D2003-0084 (ordering the transfer of <northbrookcourt.com>); General Growth Properties, Inc. v. Scott Riddell, Nat. Arb. Forum Claim No. FA137675 (ordering the transfer of <chapelhillsmall.com>); General Growth Properties, Inc. v. Future Net (to be), WIPO Case No. D2003-0500 (ordering the transfer of <northridgefashioncenter.com>).

The Domain Name differs from the mark only insofar as it adds the descriptive word “mall.” Under the circumstances, the additional word only reinforces the confusing similarity between the mark and the Domain Name.

Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122.

Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name. Nor, in its e-mail responding to Complainant’s cease-and-desist letter, did Respondent avail himself of that opportunity to come forth with a legitimate basis for registering or using the Domain Name.

Linking the Domain Name to an erotic adult site -- even under the dubious claim that such a link had been inadvertent -- and then suggesting that Complainant purchase the Domain Name since there could be no guarantees respecting the Domain Name’s future use, falls well short of a legitimate interest in the Domain Name.

Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that 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 Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The Panel finds it more likely than not that Respondent had Complainant’s mark in mind when he registered the Domain Name. Respondent lives a mere five miles from Complainant’s mall, which had been the subject of considerable media attention before Respondent registered the Domain Name. Further, the addition of the word “mall” to the mark PROVIDENCE PLACE leaves no doubt that Respondent knew there was a mall called PROVIDENCE PLACE.

The Panel finds that Respondent has violated paragraph 4(b)(iv) of the Policy by linking the Domain Name to the website located at <exzotica.com>. The home page of that website indicates that erotic toys and devices are sold at the site. It is reasonable to infer that Respondent did not link the Domain Name to that site without pecuniary motives.

The Panel does not believe Respondent’s claim that the link to <exzotica.com> was inadvertent. It simply taxes credulity to suppose that the link of the Domain Name to a commercial erotic website just “happened” somehow.

Bad faith may be further inferred from the statement by Respondent’s counsel that the future use of the Domain Name could not be guaranteed, and, therefore, Complainant should consider buying the Domain Name from Respondent.

Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.


7. Decision

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 <providenceplacemall.com> be transferred to Complainant.

Robert A. Badgley
Sole Panelist

Dated: August 1, 2006