WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
At World Properties, LLC v. Whois Agent, WHOIS PRIVACY PROTECTION SERVICES, INC. / Whois Agent, PROFILE GROUP
Case No. D2016-0440
1. The Parties
The Complainant is At World Properties, LLC of Chicago, Illinois, United States of America ("USA" or "US"), represented by Partridge Partners PC, USA.
The Respondent is Whois Agent, WHOIS PRIVACY PROTECTION SERVICES, INC. of Kirkland, Washington, USA / Whois Agent, PROFILE GROUP of Wilmington, Delaware, USA, represented internally.
2. The Domain Name and Registrar
The disputed domain name <at.properties> (the "Domain Name") is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 4, 2016. On March 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 10, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 11, 2016.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), which applies to domain name disputes in the ".properties" generic Top-Level Domain ("gTLD"), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was April 3, 2016. The Response was filed with the Center on April 1, 2016.
The Complainant filed a Supplemental Filing with the Center on April 6, 2016, and the Respondent submitted a Supplemental Filing on April 9, 2016.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on April 7, 2016. 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
According to the Complaint and the online database operated by the Secretary of State of the US State of Illinois, the Complainant is a limited liability company organized under Illinois law and headquartered in Chicago, Illinois. The Complainant has provided property management and real estate brokerage services since 2000. The Complainant's website at "www.atproperties.com" (first registered in January 2000) describes its services in assisting purchasers, sellers, owners, and developers of residential and commercial properties in the Chicago metropolitan area and also in parts of the neighboring states of Indiana, Michigan, and Wisconsin.
The Complaint refers to "AT PROPERTIES" as the Complainant's trademark. However, the Complainant's actual US trademark registrations all use the "@" sign rather than the letters "at", as follows:
US Registration Number
May 18, 2010
August 14, 2012
August 14, 2012
February 12, 2013
March 19, 2013
@PROPERTIES IS CHICAGO
October 8, 2013
In each case, the trademark registration is accompanied by a Notice of Pseudo Mark displaying a variation on the mark with the word "at" in place of the "@" sign. The Notice has no legal significance; there is no statutory provision for it. The US Patent and Trademark Office allows applicants to note literal or phonetic equivalents to aid in database searches aiming to avoid confusing similarity, and the Complainant has done so. This may be relevant for a determination of confusing similarity, but to be clear, in discussing the Complainant's marks, this Decision refers to the six registered @PROPERTIES marks listed above.
The Panel notes that the "@" symbol, normally pronounced in the same way as the preposition "at" in English (see Wikipedia article, "At Sign"), is used in the Domain Name System to represent the root of a domain, as in an email address, and thus cannot be used for a website URL. This may be one reason why the domain name for the Complainant's website uses the letters "at" rather than the "@" sign that appears in its registered trademarks. The Complainant remarks that it has also registered numerous other domain names containing the string "atproperties", including <atproperties.cc>, <atproperties.co>, <atproperties.net>, <atproperties.org>, <atproperties.biz>, <atproperties.in>, <atproperties.info>, <atproperties.mobi>, <atproperties.me>, <atproperties.us.com>, <atproperties.us>, <atproperties.properties>, <atproperties.property>, <atproperties.house>, <atproperties.condos>, and <atproperties.rentals>. The Complainant suggests that this reflects an effort to protect the phonetic equivalent of its trademarks. The Panel notes, however, that at the time of this Decision none of these other domain names redirects to the Complainant's website. Instead, each of these domain names either produces an error message or resolves to a third-party, pay-per-click ("PPC") advertising landing page; the latter seems to be somewhat at odds with what otherwise would look to be a rather standard trademark protection strategy.
The Domain Name was registered on September 10, 2015 in the name of a domain privacy service, which has expressed no interest in this proceeding and has identified the Respondent Profile Group as the owner. Profile Group submitted a Response in this proceeding and will be referred to as the Respondent in this Decision.
Three entities with names including "Profile Group" are registered with the Department of State of the US State of Delaware, where the Respondent gives its postal address. The Response does not include a company designation or further identify the legal status of the Respondent. The Response describes the Respondent's business, and its motivation for registering the Domain Name, as follows:
"Respondent registers generic, descriptive, and otherwise non-infringing domain names for the purposes of deriving advertising income by the use of each such domain name in connection with a click-through service which serves as a starting point for Internet users seeking certain information. Here, Respondent registered the Domain Name due to its short second level (a factor in the value of the domain name), which is the officially assigned ISO 3166-1alpha-2 code for Austria."
The Response includes evidence that the Respondent has registered numerous domain names with short strings or geographic abbreviations, including <at.business>, <at.school>, and <at.ventures>.
The Domain Name resolves to a PPC landing page with links to third-party advertisers promoting a variety of goods and services, headed with the words, "This domain may be for sale. Contact us."
5. Parties' Contentions
The Complainant argues that the Domain Name is confusingly similar to its @PROPERTIES marks, taking account of the gTLD extension ".properties", and that the Respondent has no permission or other legitimate reason to use a confusingly similar Domain Name.
The Complainant infers that the Respondent targeted the Complainant's marks in bad faith by mimicking them in the Domain Name to misdirect Internet users for commercial gain. The Complainant contends that using the Domain Name for a PPC advertising site is itself evidence of bad faith.
The Respondent denies any intent to exploit the Complainant's marks and observes that the marks include the string @PROPERTIES, not "At Properties". The Respondent argues that the ".properties" gTLD portion of the Domain Name should be disregarded in any event, as the gTLD is usually considered immaterial in UDRP proceedings.
The Respondent claims a legitimate, good faith interest in using for general advertising purposes a Domain Name with a simple two-letter string, "at".
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a
complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules, "A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
A. Supplemental Filings
The Complainant submitted a "Reply" as a Supplemental Filing in reply to the Response, disputing the Respondent's arguments concerning the materiality of the ".properties" gTLD portion of the Domain Name, the legitimacy of using the Domain Name for PPC advertising, and the Respondent's interest in Austrian-related domain names. The Respondent then submitted a provisional objection to the Complainant's Supplemental Filing, arguing against the Complainant's conclusions and furnishing additional examples from the Respondent's portfolio of generic domain names.
As the Respondent observes, neither the Rules nor the Supplemental Rules make provision for supplemental filings, except at the request of the panel (see Rules, paragraph 12). Paragraph 10 of the Rules enjoins the panel to conduct the proceeding "with due expedition". Therefore, UDRP panels are typically reluctant to countenance delay through additional rounds of pleading and normally accept supplemental filings only to consider material new evidence or provide a fair opportunity to respond to arguments that could not reasonably have been anticipated. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 4.2, and cases cited therein.
In this instance, the Panel considers the supplemental filings for the limited purpose of addressing the Respondent's claims concerning the value of the Domain Name as a geographic signifier.
B. Identical or Confusingly Similar
The Complainant has not established registered or common law trademark rights in "AT PROPERTIES". Instead, its registered trademarks consist of, or include, @PROPERTIES, and these are the marks that must be compared with the Domain Name.
The first element of the UDRP is "essentially a standing requirement" requiring "a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name." WIPO Overview 2.0, paragraph 1.2. Noting also that the Domain Name and associated content are in the English language, the Panel relies on the fact that the "@" sign is commonly pronounced in English in the same way as the preposition "at" found in the Domain Name. Thus, the Panel finds that the Domain Name, taken as a whole with the gTLD ".properties", is phonetically identical to the Complainant's @PROPERTIES mark and therefore confusingly similar for purposes of the first element of the Policy.
The Respondent argues that the gTLD ".properties" should be disregarded, but this would ignore the overall impact of the Domain Name. As with ".com", ".net", and many other gTLDs, the ".properties" gTLD portion of the Domain Name would not normally be considered material for Policy purposes, as the ".properties" gTLD is not restricted in a manner that would avoid confusion with trademarks in any particular industry or geography. However, where the gTLD is identical or confusingly similar to a portion of the trademark, it may be perceived as such by Internet users and is therefore relevant in considering the elements of a UDRP complaint. As explained in WIPO Overview 2.0, paragraph 1.2, "The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark." This is such a case, as "properties" is part of the Complainant's @PROPERTIES marks.
The Panel concludes that the first element of the Complaint has been established.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:
(i) before any notice to it of the dispute, the Respondent's 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is 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.
Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this issue shifts to the respondent. See WIPO Overview 2.0, paragraph 2.1.
Here, the Complainant has made a prima facie case by establishing trademark rights, not in "AT PROPERTIES" but in @PROPERTIES, and showing that the Respondent used a confusingly similar Domain Name for PPC advertising unrelated to any known business pursued by the Respondent. The Respondent claims an interest in the Domain Name for its possible reference to Austria, but the Respondent has not used the Domain Name for such purpose, nor has the Respondent produced persuasive evidence of demonstrable preparations for such use. Thus, on this record, the Panel concludes that the Respondent has not met its burden of production on the issue of demonstrating rights or legitimate interests in the Domain Name. The Complainant prevails on the second element of the Complaint.
D. Registered and Used in Bad Faith
The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that "shall be evidence of the registration and use of a domain name in bad faith", including the following:
"(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 Panel simply does not find compelling evidence in this proceeding of an intent to create a likelihood of confusion for commercial gain (or of an intent to engage in any other bad faith activity). The Complainant's @PROPERTIES marks are comprised of the "@" sign and generic English words relating to the real estate industry. The Complainant makes the conclusory statement that the "AT PROPERTIES mark" (which is not technically the Complainant's mark) has become "well known" through "extensive advertising, sale[s] and public acceptance". The Complaint includes no information, however, concerning the volume of advertising or sales under the Complainant's @PROPERTIES marks. Such a showing is paramount when there are conceivable good faith uses of a mark such as the one @ issue here. While the Complaint refers to "national" services, the Complainant's website indicates that these are focused on the Chicago area and parts of adjacent Midwestern states. The record does not establish that the Complainant's marks are highly distinctive and widely known, like the TELSTRA and VEUVE CLIQUOT marks in decisions cited by the Complainant, such that good faith reasons for registering the Domain Name cannot be conceived. The Respondent plausibly argues for the generic value of "at" as a short string (whether or not used for specifically Austrian content) and points out that the Respondent registered other domain names consisting of "at" in other new gTLDs not specifically related to the Complainant's field of activity (such as <at.business> and <at.school>) around the same time, supporting its contention that it was not targeting the Complainant's @PROPERTIES marks.
The record does not support a persuasive inference that the Respondent (not active in the real estate industry) was likely aware of the Complainant and a potentially confusingly similarity with the Complainant's @PROPERTIES trademarks. The Respondent denies any intent to trade on the Complainant's reputation, and on the existing record the Panel cannot conclude that the Respondent is likely prevaricating.
The Complaint fails on the third Policy element, not having established bad faith by a preponderance of the evidence.
For the foregoing reasons, the Complaint is denied.
W. Scott Blackmer
Date: April 21, 2016