Case No. D2005-1198

1. The Parties

Complainant is Richmond Associates, LLC, Arlington, Virginia, United States of America, represented by Dow, Lohnes & Albertson, PLLC, Washington, D.C., United States of America.

Respondent is hilltopmall, Georgetown, Grand Cayman GT KY, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <hilltopmall.com> (the “Domain Name”) is registered with Address Creation.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2005. On November 21, 2005, the Center transmitted by email to Address Creation a request for registrar verification in connection with the domain name at issue. On November 29, 2005, Address Creation transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative 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 November 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was December 20, 2005. Respondent did not submit any response. Accordingly, the Center notified Respondent of its default on January 5, 2006.

The Center appointed Robert A. Fashler as the Sole Panelist in this matter on February 3, 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

Complainant asserts and Respondent does not deny that:

(a) Complainant, in conjunction with The Mills Limited Partnership (“The Mills LP”), owns, operates and promotes numerous shopping centers in the United States, Canada and Europe, including the HILLTOP MALL in Richmond, California.

(b) Complainant in conjunction with The Mills LP (and/or their predecessors in interest) have used the HILLTOP and HILLTOP MALL trademarks in association with the HILLTOP MALL shopping center (the “Shopping Center”) since 1976, and have promoted the Shopping Center across the United States since then.

(c) Complainant owns the registered United States service mark HILLTOP under US Reg. No. 2,731,713, which was registered on July 1, 2003 (the “HILLTOP Mark”).

(d) Complainant filed an application on June 22, 2005 to register the United States service mark HILLTOP MALL under US Serial No. 76/641,340 (the “HILLTOP MALL Mark”).

(e) Respondent registered the Domain Name on April 7, 2002.

(f) Complainant learned of Respondent’s registration of the Domain Name in January 2005, and sent a demand letter to Respondent on March 1, 2005. When it received no response, Complainant sent a follow-up demand letter on March 23, 2005. Complainant did not receive a response to this second letter.

5. Parties’ Contentions

A. Complainant

Complainant asserts that:

(a) Complainant has rights in the HILLTOP Mark and the HILLTOP MALL Mark (collectively, the “Complainant’s Marks”).

(b) Complainant is a commercial real estate development and property management company. In conjunction with The Mills LP, Complainant owns and operates numerous shopping centers in the United States, Canada and Europe.

(c) Through its partnership with The Mills LP, Complainant undertakes substantial marketing efforts to promote each of its shopping centers.

(d) Complainant and its affiliates maintain individual websites for each of its shopping centers. These websites provide information about each property, as well as promote the shopping and services available at each property. The websites use second-level domain name registrations incorporating the name of the relevant shopping center. For example, Complainant maintains a website for the Shopping Center at “www.shophilltop.com”.

(e) Complainant has invested substantial time and resources to promote and advertise the Complainant’s Marks and the shopping services related to those marks, and has done so regionally, nationally and internationally.

(f) Complainant has developed extremely valuable goodwill and an outstanding reputation in the Complainant’s Marks. Those trademarks are associated exclusively with Complainant and/or its related entities.

(g) The Shopping Center is well-known and extremely successful.

(h) Respondent registered the Domain Name on April 7, 2002, without Complainant’s authorization, knowledge or consent. Complainant has not licensed or authorized Respondent to use the Complainant’s Marks.

(i) The Domain Name resolves to a website featuring a generic search engine and a list of sponsored links.

(j) Respondent’s true identity is “Modern Limited – Grand Cayman Development”. This entity is notorious for abusive domain name registrations.

(k) The Domain Name is identical to the HILLTOP MALL Mark and is confusingly similar to the HILLTOP Mark because:

(i) Complainant owns and has well-established rights in the Complainant’s Marks, and these trademarks are distinctive of Complainant and are associated exclusively with Complainant,

(ii) the second level of the Domain Name is identical to the HILLTOP Mall Mark,

(iii) the second level of the Domain Name is confusingly similar to the HILLTOP Mark, and the addition of the generic word “mall”, which merely describes the nature of Complainant’s business, does not distinguish the Domain Name from the HILLTOP Mark,

(iv) a domain name consisting of a well-known mark combined with a descriptive term or phrase is confusingly similar to the trademark, and

(v) the addition of a generic top-level domain name such as “.com” has no legal significance;

(l) Respondent has no rights or legitimate interests in the Domain Name because:

(i) Complainant has not licensed or authorized Respondent to use the Complainant’s Marks,

(ii) Respondent has not used or demonstrably prepared to use the Domain Name in connection with a bona fide offering of goods or services,

(iii) Respondent has used the Domain Name to point to a portal site directing visitors to various third-party commercial websites, and

(iv) Respondent is not commonly known by the Domain Name and has not acquired trademark rights in the Domain Name; and

(m) Respondent registered and is using the Domain Name in bad faith because:

(i) Respondent has engaged in a pattern of registering domain names that incorporate famous or well-known trademarks or company names, and has been the subject of at least 18 UDRP proceedings, all of which were decided against Respondent; and

(ii) Respondent is intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s Marks.

Complainant does not explain the legal basis on which The Mills LP uses the Complainant’s Marks. Nor does Complainant explain the obvious discrepancy between Complainant’s assertions of ownership and use that are made in the Complaint as compared to those made in the Cease and Desist Letter. In that letter, counsel asserted to Respondent that The Mills LP owns and operates the Shopping Center and uses Complainant’s Marks. The Cease and Desist Letter makes no mention of Complainant.

B. Respondent

Respondent has been duly notified of the Complaint and these proceedings, but did not submit a Response.

6. Discussion and Findings

Respondent has not submitted a Response. Paragraph 5(e) of the Rules states that, in the absence of exceptional circumstances, the panel shall decide a proceeding in which the respondent has failed to file a response on the basis of the complaint. Paragraph 15(a) of the Rules requires the panel to decide the case on the basis of statements and documents submitted in the proceeding, which in this case consist of the Complaint and its Exhibits. Paragraph 14(b) of the Rules states that when a party fails to comply with the Rules, then, in the absence of exceptional circumstances, the panel shall draw such inferences therefrom as it considers appropriate.

The Panel finds that there are no exceptional circumstances that might justify the Panel deviating from the clear directions set out in the quoted Rules. Hence: (a) the Panel will decide this case based exclusively on the Complaint and the Exhibits attached thereto; and (b) the Panel will draw negative inferences from Respondent’s failure to file a Response and to participate in this proceeding in any other manner.

To succeed in its Complaint, the Complainant must prove all of the elements set out in paragraph 4(a) of the Policy, namely:

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

(b) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(c) Respondent has registered and is using the Domain Name in bad faith.

Respondent’s default does not discharge Complainant’s burden of providing sufficient evidence relating to all three elements of paragraph 4(a) of the Policy. However, as noted above, the Panel has determined that it is appropriate to draw adverse inferences from Respondent’s default.

A. Identical or Confusingly Similar

Complainant must first establish that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

(i) Ownership of the Trademarks

Complainant asserts that it has rights and reputation in both of the Complainant’s Marks. However, Complainant’s own evidence raises questions regarding the ownership of these marks. Annex 5 of the Complaint is a March 1, 2005 cease and desist letter to Respondent. This letter identifies The Mills LP as the owner of the Shopping Center and the Complainant’s Marks rather than Complainant or Complainant in conjunction with the Mills LP. The letter suggests that it is The Mills LP who has rights and reputation built up in those marks, and who will seek redress under the UDRP – see for example the following excerpts:

The letter also cites several UDRP decisions in which the Complainant was The Mills LP or its predecessor in interest. The letter does not refer to Complainant, or explain that Complainant and not The Mills LP owns the United States registration of the HILLTOP Mark.

These circumstances present an inconsistent picture as to which party owns and uses the Complainant’s Marks. Certainly, Complainant’s other evidence shows that Complainant, and not The Mills LP, has registered the HILLTOP Mark in the United States and has applied to register the HILLTOP MALL Mark. However, there is no evidence of the legal relationship of The Mills LP to Complainant’s Marks. Was there an assignment from The Mills LP to Complainant? Has Complainant licensed The Mills LP to use the marks? Be that as it may, Respondent’s default results in the Panel drawing adverse inferences against Respondent, and Complainant’s unchallenged evidence is sufficient to establish rights in the Complainant’s Marks, as discussed below.

(ii) Common LawTrademark Rights: the HILLTOP MALL Mark

Complainant does not hold a registration for the HILLTOP MALL Mark, but asserts that it has common law trademark rights in that mark. Although Complainant asserts common law trademark rights, it does not clearly specify the legal context in which Complainant’s common law trademark rights are supposed to exist.

Complainant’s business is headquartered in the United States, Complainant’s documentary evidence relates to the United States, and Complainant holds a United States registration for the HILLTOP Mark and has applied to register the HILLTOP MALL Mark in the United States. Accordingly, the Panel infers that Complainant is claiming common law rights only under the laws of the United States and not every common law jurisdiction in North America and Europe.

The Policy recognizes and affords protection to common law trademarks, but it does not establish the existence or legal characteristics of common law trademarks. Rather, common law trademarks are the creature of the national laws of particular counties. Common law rights do not exist in every country. A complainant cannot rely on common law trademark rights in countries that do not recognize such rights at law. Even among countries that do recognize common law trademarks, it would be very surprising if the relevant law of each such country was identical to all the others.

Panelists appointed to decide UDRP cases reside in many different jurisdictions. No complainant or respondent should presume that a panelist will be familiar with the law of any particular jurisdiction.

Complainant has not taken any steps to bring to the Panel’s attention the national laws that would determine the existence and strength of the common law rights claimed by Complainant. It would have been most helpful if Complainant had done so.

Complainant asserts that it has well-established common law rights in the HILLTOP MALL Mark. Common law rights may be demonstrated in UDRP proceedings by evidence showing reputation and actual distinctiveness and, as Complainant asserts, by demonstrating long and substantial use of the mark in question: See, for example, Keppel TatLee Bank Limited v. Lars Taylor, WIPO Case No. D2001-0168 (March 28, 2001). That approach is consistent with normal litigation practice.

Without sufficient evidence of reputation and actual distinctiveness, the Panel has no factual basis for finding that Complainant has common law rights in the HILLTOP MALL Mark. The type of evidence generally required to support a finding of common law rights in a mark includes business sales figures, revenues, advertising expenditures, number of consumers served, and evidence that there is strong customer identification of the mark with Complainant’s goods or services: See, for example, Weatherford International, Inc. v. Paul Wells, FA 153626 (National Arbitration Forum, May 19, 2003) and Cyberimprints.com, Inc. v. Mike Alberga, FA 100608 (National Arbitration Forum, December 11, 2001).

The Panel notes that in Potomac Mills Limited Partnership v. Gambit Capital Management, WIPO Case No. D2000-0062 (March 28, 2000) (cited by Complainant’s counsel in the cease and desist letter as an example of The Mills LP’s success in various UDRP proceedings), the Complainant presented evidence regarding the number of visitors to another of its shopping malls, the amount of advertising expenditures related to that mall, and the scope of promotion relating to that mall. Such evidence would have aided the Panel in this proceeding with respect to Complainant’s alleged common law trademark rights.

Complainant merely asserts, without any supporting evidence, that it and its predecessors have used the HILLTOP MALL Mark in association with a shopping center since 1976, and that it has invested substantial time and resources to promote and advertise the HILLTOP MALL Mark.

However, given Respondent’s failure to participate in this proceeding, the Panel infers that Respondent admits Complainant’s assertion of common law rights in the HILLTOP MALL Mark. Accordingly, by virtue of such implied admission, Complainant has established common law rights in the HILLTOP MALL Mark.

The Domain Name consists solely of the HILLTOP MALL Mark plus the generic top-level domain “.com”. The addition of a generic top-level domain is not sufficient to distinguish otherwise identical terms: See Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493 (July 7, 2000). The Domain Name is therefore identical to the HILLTOP MALL Mark for the purposes of paragraph 4(a)(i) of the Policy.

(iii) Registered Trademark Rights: the HILLTOP Mark

Complainant has provided evidence that it owns a United States service mark registration for the HILLTOP Mark; such registration demonstrates Complainant’s prima facie rights in the HILLTOP Mark. The question then becomes whether Complainant’s HILLTOP trademark is confusingly similar to the <hilltopmall.com> Domain Name.

The Domain Name consists of the HILLTOP Mark, followed by the word MALL and the generic top-level domain “.com”. Despite Complainant’s failure to provide detailed evidence relating to the Shopping Center, the Panel accepts that Complainant has used the HILLTOP Mark in the United States in association with the operation of a shopping mall. Therefore, the word “mall” in the Domain Name is descriptive of Complainant’s business. A descriptive term such as this is not sufficient to distinguish the Domain Name from the HILLTOP Mark: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441 (July 13, 2000). Similarly, the presence of a generic top-level domain is without legal significance in terms of distinguishing the Domain Name from the HILLTOP Mark.

Given that the dominant portion of the Domain Name is “hilltop”, and that the other portions of the Domain Name do not distinguish the Domain Name from the HILLTOP Mark, the Panel finds that the Domain Name <hilltopmall.com> is confusingly similar to the HILLTOP Mark for the purposes of paragraph 4(a)(i) of the Policy.

(iv) Conclusion: Identical or Confusingly Similar

The Panel finds that Complainant has established rights in the Complainant’s Marks, and that the Domain Name is identical to the HILLTOP MALL Mark and is confusingly similar to the HILLTOP Mark. Complainant has therefore met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant must establish that Respondent has no rights or legitimate interests in the Domain Name. It is relatively difficult for any complainant to prove that a respondent has no rights or legitimate interests in a domain name, as for the most part that evidence is known to and within the control of the respondent. Accordingly, the burden on a complainant with respect to paragraph 4(a)(ii) must be relatively light. Nonetheless, a complainant must still produce some evidence tending to show that a respondent has no rights or legitimate interests in a domain name: see Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796 (October 25, 2001).

Complainant has put forward little evidence that: Complainant has rights in the Complainant’s Marks, and has used those marks in association with a shopping mall; Complainant has not licensed or authorized Respondent to use the Complainant’s Marks; and Respondent has only used the Domain Name in association with a portal site that directs visitors to third-party commercial websites.

Because Respondent has not participated in this proceeding, there is no evidence before the Panel to show that Respondent has rights or legitimate interests in the Domain Name. In particular, Respondent has not shown that it has made use of, or has made demonstrable preparations to use, the Domain Name in association with a bona fide offering of goods and services, or that Respondent is commonly known by the Domain Name.

Further, Respondent’s default can be construed as an admission that Respondent has no rights or legitimate interests in the Domain Name: Government Employees Insurance Company (GEICO) v. Gico, WIPO Case No. D2004-0545 (September 7, 2004).

The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Pursuant to paragraph 4(a)(iii) of the Policy, Complainant must also establish that Respondent registered and is using the Domain Name in bad faith.

(i) Respondent’s Identity and Background

Respondent is identified as “hilltopmall”, Administrator Domain, General Delivery, Georgetown, Grand Cayman.

Complainant asserts that Respondent’s true identity is “Modern Limited – Grand Cayman Development”. Complainant cites various other UDRP decisions noting that “Modern Limited” and “[domain identifier], Administrator Domain” are the same entity. For example: Scanomat A/S v. Scanomat Administrator Domain, WIPO Case No. D2004-0932 (January 4, 2005); Pelmorex Communications Inc. v. weathernetwork, WIPO Case No. D2004-0898 (December 28, 2004); Carte Blanche Greetings Limited v. metoyou, WIPO Case No. D2004-0946 (December 22, 2004); W.W. Grainger, Inc. v. wwgranger/Administrator Domain, WIPO Case No. D2004-0762 (November 29, 2004); Government Employees Insurance Company (GEICO) v. Gico, WIPO Case No. D2004-0545 (September 7, 2004); and Nevada State Bank v. Modern Limited - Cayman Web Development a/k/a Administrator Domain, No. FA204063 (National Arbitration Forum, December 6, 2003).

Respondent has elected not to participate in this proceeding. Accordingly, the Panel infers that Respondent admits all of the allegations made by Complainant. The Panel concludes that Respondent’s true identity is as asserted by Complainant, namely, “Modern Limited – Grand Cayman Development”.

This finding is significant, as it means that Respondent has engaged in a pattern of registering domain names incorporating famous or well-known trademarks, company names and individual’s names. UDRP decisions featuring Respondent are legion, and Respondent is almost universally described as a cybersquatter with a long history and pattern of abusive domain name registrations. See for example, National Football League Players Association, Inc. v. Cayman Trademark Trust d/b/a/ Trademark, WIPO Case No. D2005-0234 (May 13, 2005), which lists 32 UDRP decisions holding that Respondent has registered and used domain names in bad faith.

(ii) Respondent’s Registration and Use

Complainant’s undisputed evidence shows that Respondent has repeatedly registered domain names that are identical to or confusingly similar with existing trademarks, business names, and individual’s names. The Panel has found that Respondent has not established any rights or legitimate interests in the Domain Name. These circumstances suggest bad faith registration and use.

Further, Complainant has provided evidence that appears to show that Respondent is using the Domain Name to misdirect potential visitors from the Complainant’s website to the Respondent’s website and to other third-party commercial websites. Complainant asserts that Respondent receives compensation for these activities. Indeed, various links on Respondent’s website are labeled “sponsored links”, suggesting that Respondent receives compensation for traffic directed to those links). Complainant also contends that these circumstances demonstrate that Respondent registered the Domain Name to attract and mislead Internet users for Respondent’s own commercial gain. Respondent has not challenged these allegations.

Based on the record before it, the Panel finds that: Respondent registered a domain name that is identical to Complainant’s HILLTOP MALL Mark and confusingly similar to Complainant’s HILLTOP Mark; Respondent’s website redirects Internet users to other sites for Respondent’s commercial gain; Respondent’s website has no connection with Complainant’s Shopping Center; and Respondent has a long and well-documented history of cybersquatting and abusive domain name registrations.

In these circumstances, the Panel finds that Respondent registered and is using the Domain Name in bad faith.

7. Decision

For all the foregoing reasons, the Panel orders that the domain name <hilltopmall.com> be transferred to the Complainant.

Robert A. Fashler
Sole Panelist

Dated: February 17, 2006