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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Nationwide Realty Investors, Ltd. v. Chip Regis

Case No. D2006-1014

 

1. The Parties

The Complainant is Nationwide Realty Investors, Ltd. of Columbus, Ohio, United States of America, represented by Frost Brown Todd LLC, United States of America.

The Respondent is Chip Regis of Galloway, Ohio, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <arenadistrict.com> is registered with BulkRegister.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9, 2006. On August 11, 2006, the Center transmitted by email to BulkRegister.com a request for registrar verification in connection with the domain name at issue. Also on August 11, 2006, BulkRegister.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 August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2006.

The Center appointed Dennis A. Foster as the sole panelist in this matter on September 19, 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 subsidiary company of a large, well-known United States insurance company that has been in business for about eighty years. The Complainant was created in 1997 to plan, construct and manage a site in the United States city of Columbus, Ohio, on which the Complainant ultimately built many buildings, including a sports arena under the name “Arena District.” The Complainant has obtained and owns trademark registrations in the state of Ohio and three contiguous states in the United States for the mark “Arena District” (i.e., Indiana Registration, File ID No. 2001-0605; Michigan Registration No. M05-151; Ohio Registration, Document No. 200122201954; and Pennsylvania Registration, Entity No. 3035536).

- The record of registration of the disputed domain name was created on July 7, 2001. Shortly thereafter, ownership of that name was transferred to the Respondent. The website found at the disputed domain name refers to future development with respect to the Pittsburgh, Pennsylvania area in the United States but, as of now, merely offers connections to other websites about businesses located in the Columbus, Ohio area where the Respondent is domiciled.

 

5. Parties’ Contentions

A. Complainant

- Founded in 1926, Nationwide Mutual Insurance Company is a large insurance and financial services company with over 160,000 exclusive and non-exclusive agents and representatives who sell Nationwide products throughout the United States. Nationwide has spent over $240 million advertising and promoting its products and services, including sponsorship of a professional golf tour in the United States.

- The Complainant is a subsidiary of Nationwide and, like its parent, is headquartered in the city of Columbus, Ohio, United States of America.

- In 1997, the Complainant began the planning and construction of a real estate development project in downtown Columbus, adjacent to its headquarters. The centerpiece of the project is a $160 million arena, which was completed in 2000 and is currently home to the National Hockey League’s Columbus Blue Jackets team. The total project has costs in excess of $547 million and covers 95 acres, including over 800,000 square feet of office space, over 230,000 square feet of retail space and 350 residential units.

- In connection with the development project, the Complainant adopted the mark “Arena District” for its real estate development services. Since 2001, the Complainant has spent more than $2.3 million to promote the project and related activities, including the use of websites found at the domain names <arena-district.com> (registered January 8, 2001) and <arenadistictliving.com>, both of which it owns.

- The Complainant has registered and owns trademarks of the “Arena District” mark in the states of Indiana, Ohio, Michigan and Pennsylvania, and the mark has become associated exclusively with the Complainant in the minds of consumers with respect to real estate development in Columbus, Ohio.

- The disputed domain name was registered on July 7, 2001 by an individual living in the Columbus, Ohio area only one month after the much-publicized launch of the Complainant’s website at <arena-district.com>. The website at the disputed domain name read “Welcome to the future home of Pittsburgh’s Civic Arena fan district” along with pictures of the Mellon Center in Pittsburgh, Pennsylvania.

- After sending the initial registrant of the domain name in question a cease and desist letter, the Complainant and registrant agreed to a transfer of the name for reimbursement of expenses. However, the registrant reneged on that deal, and instead transferred the name to the Respondent.

- On October 25, 2001, the Complainant also sent the Respondent a cease and desist letter relative to the disputed domain name, but the Respondent claimed that he was not infringing on the Complainant’s rights.

- While the website maintained by the Respondent at the disputed domain name continues to refer to itself as the “future home of the Pittsburgh’s Civic Arena fan district” and contains images related to professional sports teams, the Pittsburgh Penguins and Steelers, the site actually serves to direct Internet traffic to two website development companies, ecFactory, Inc. and Trader’s Edge, LLC, that are located in or near Columbus, Ohio.

- The Complainant asserts that the Respondent is thus using the disputed domain name, which is identical to the Complainant’s mark, to capitalize on that mark to misdirect Internet users to the Respondent’s websites.

- The Complainant states the Respondent has no legitimate interest in or any clear intention to make a legitimate use of the disputed domain name. Moreover, the Respondent is neither a licensee of nor otherwise currently affiliated with the Complainant. Respondent’s name does not include the words “Arena” or “District,” and the disputed domain name is not being used in connection with a bona fide offering of goods or services.

- The Complainant claims that since the Respondent is located in Columbus, Ohio, the Respondent, is well aware of Complainant’s project and mark, and registered the disputed domain name long after the Arena District mark had become well known in Columbus and throughout the United States. As a result, the Respondent is engaged in bad faith use of the disputed domain name by creating confusion with the Complainant’s mark to intentionally attract, for commercial gain, Internet users to other websites.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to Paragraph 4(a) of the Policy, in order for the Complainant to succeed in this proceeding and have the disputed domain name <arenadistrict.com> transferred, the Complainant must demonstrate the following:

- the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- the disputed domain name was registered and is being used by the Respondent in bad faith.

A. Identical or Confusingly Similar

It is apparent to the Panel that the disputed domain name <arenadistrict.com> is at least confusingly similar if not identical to the mark “Arena District,” of which the Complainant claims ownership. It has been well established in countless prior Policy decisions that the lack of a space between words in a domain name and the addition of the gTLD, “.com,” are inconsequential differences for purposes of Policy proceedings.

The Panel must now determine whether the Complainant has sufficient rights in its mark to prevail under the requirements of the Policy. The Complainant has presented the Panel with valid trademark registrations of the mark filed with various states in the United States but, while these registrations must be weighed in favor of the Complainant’s claim, they are not conclusive as to ownership because trademark registration is unexamined in such cases. See, e.g., Jet Marques v. Vertical Axis, Inc., WIPO Case No. D2006-0250.

The Panel must determine whether the Complainant has used the “Arena District” mark – composed of two descriptive words – to establish a secondary meaning in those words which is linked exclusively to the products and/or services provided by the Complainant under the mark, and which merits protection under the Policy. The Panel is guided in its determination by the prior Policy decision Realmark Cape Harbour L.L.C. v. Lawrence S. Lewis, WIPO Case No. D2000-1435, where the panel noted that “[t]he name of a real estate development is capable of trademark or service mark protection if it is inherently distinctive or has acquired secondary meaning in a relevant market.” In that case, the Panel found that the complainant did have common law trademark rights in the name of a real estate development, begun in 1996 or 1997, relative to a respondent operating in the same geographical area (i.e., Coral Gables, Florida, USA and the surrounding area) who had registered identical or confusingly similar domain names in 1999.

In this case the Complainant has provided uncontested evidence that it spent considerable sums of money in constructing and promoting a large real estate development starting in 1997 under the mark “Arena District” in the Columbus, Ohio area of the United States. The Respondent’s predecessor, domiciled like the Respondent in the same Columbus area, registered the disputed domain name in 2001. Following the reasoning found in Realmark, supra, the Panel concludes that the Complainant’s activities created a secondary meaning in its mark sufficient to establish its common law trademark rights for that limited geographical region (i.e., the Columbus, Ohio area) prior to the Respondent’s registration of the disputed domain name. Also in line with Realmark, supra, the Panel dismisses as irrelevant the fact that there are arenas in many cities throughout the United States, as well as the world, which have nearby land which could be considered within the “district” of those respective arenas, since it is relevant only to consider whether territorial scope of the Complainant’s protection includes the area substantially co-extensive with the Respondent’s and his predecessor-in-interest’s operations.

In view of the above, the Panel determines that the Complainant has met its burden to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

B. Rights or Legitimate Interests

Though the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name, once the Complainant has presented a prima facie case for that proposition, the burden shifts to the Respondent to supply a rebuttal. See, e.g., Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110; and Go Daddy Software, Inc. v. Daniel Hadani, WIPO Case No. D2002-0568. Since the Complainant has established its rights in a trademark identical or confusingly similar to the disputed domain name, asserts without contradiction that it has not licensed or otherwise authorized the Respondent to use that trademark and claims reasonably that it knows of no other way in which the Respondent could assert rights or legitimate interests in the name, the Panel finds that such a prima facie case has been made.

The absence of a response to the Complaint provides the Panel little room to find for the Respondent with respect to this issue. In examining Paragraph 4(c) of the Policy for guidance, the Panel finds that the Respondent fails to satisfy any of the methods cited there to establish rights and legitimate interests in a domain name. There is no discernible similarity between the name of Respondent and the disputed domain name, nor any suggestion from the record that the Respondent is commonly known by that name. There is no evidence that the Respondent is making noncommercial or fair use of the domain name in dispute. Moreover, the mere posting of a website that alludes to future services, without evidence of actual expenditure or effort toward provision of those services, does not satisfy the paragraph 4(c)(i) of the Policy requirement of “demonstrable [emphasis added] 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.” Lastly, many prior panels have concluded that the simple redirection to other websites fails to constitute such a “bona fide offering” for purposes of 4(c)(i) of the Policy. See, e.g., Owens Corning Fiberglass Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903; and Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc, NAF Case No. FA154527.

Accordingly, the Panel rules that the Complainant has sustained its burden to demonstrate that the Respondent possesses no rights or legitimate interests with respect to the disputed domain name.

C. Registered and Used in Bad Faith

The Panel notes that the mere fact that the Respondent resides in the same area where the Complainant has established exclusive rights in a trademark that is all but identical to the disputed domain name is sufficient evidence to conclude that the Respondent was aware of the bad faith registration of the name. Other previous Policy panels have agreed that proximity to the central locus of a complainant’s mark can typify bad faith registration. See, e.g., Grand Central Limited Partnership v. Robert Runion II, NAF Case No. 97039, where the panel, in upholding the charge of bad faith registration, stated that “…given the proximity of Respondent’s address to Complainant’s shopping mall…, Respondent knew or should have known of Complainant’s mark prior to registering the disputed domain name.” Furthermore, despite the promise of future developments found on the Respondent’s website at the disputed domain name, the actual use of the site as a mere springboard to other websites is the sort of circumstance that compels the Panel toward a finding of bad faith usage pursuant to Paragraph 4(b)(iv) of the Policy, i.e., “by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s website or location or of a product or service on its website or location.”

As a result of the above, the Panel rules that the Complainant has satisfied the requirement of showing that the disputed domain name was registered and used by the Respondent in bad faith.

 

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, <arenadistrict.com>, be transferred to the Complainant.

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Dennis A. Foster
Sole Panelist

Dated: October 13, 2006