Archstone Communities LLC v. archstoneny.com Private Registrant / A Happy DreamHost Customer
Claim Number: FA1211001470081
Complainant is Archstone Communities LLC (“Complainant”), represented by Joan L. Long of Barnes & Thornburg LLP, Illinois USA. Respondent is archstoneny.com Private Registrant / A Happy DreamHost Customer (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <archstoneny.com>, registered with New Dream Network, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 6, 2012; the National Arbitration Forum received payment on November 8, 2012.
On November 7, 2012, New Dream Network, LLC confirmed by e-mail to the National Arbitration Forum that the <archstoneny.com> domain name is registered with New Dream Network, LLC and that Respondent is the current registrant of the name. New Dream Network, LLC has verified that Respondent is bound by the New Dream Network, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 9, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@archstoneny.com. Also on November 9, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on November 24, 2012.
Complainant submitted an Additional Submission that was received and determined to be timely on November 29, 2012.
On December 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in ARCHSTONE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
A Response was made by a Mr. Lenin Batista who states that he is the owner of the domain name. Mr. Batista also states that he is the “owner of Archstone Appraisals Inc. registered with New York State on 11/03/2009 and having ID # 3874441.”
Those statements from the Response of further relevance to the matter are included below:
The domain name … is used to conduct business for my appraisal company. I currently use the domain name in order to receive mail correspondence with my clients.
…
Due to the fact that I own an appraisal company registered in New York State with the name “ Archstone Appraisals Inc.” , the claim that I have no interest in the archstoneny.com domain name is not valid. In addition, I have no interest in offering any links to competitors of the complainant, or to mislead consumers into thinking that the website is owned or associated with the complainant.
…
The registration and use of this domain name was not made in bad faith. I registered the domain name due to the fact that I own Archstone Appraisals Inc. and perform appraisals in New York State. The use of the complainant’s Archstone mark was not deliberate and was not intended to divert consumers seeking services from the complainant. My appraisal company only offers real estate appraisals for mortgage and lending purposes to banks and large mortgage institutions and gains no benefit in advertising to the complainant’s consumers … I am not interested in selling this domain name, or benefiting from referral fees.
C. Additional Submissions - Complainant
Complainant submits that the incorporation of Archstone Appraisals Inc. is not evidence of trademark use. Complainant also points out that incorporation of Archstone Appraisals Inc. occurred after Complainant’s use and registration of its trademark.
The factual findings pertinent to the decision in this case are that:
1. Complainant’s business is the rental of multi-occupancy residential living spaces in the United States of America.
2. The disputed domain name was registered on January 26, 2010.
3. There is no commercial agreement between the parties.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
(a) There is little to commend either party in terms of their regard for the Policy or the material put forward in support of their causes. The Response carries with it no physical evidence of any of Respondent’s claims, nor in the absence of that material has a sworn statement been made instead. The Complaint might have been refused by another panelist on all of the paragraph 4(a) elements for want of sufficiency. Allowed the opportunity to remedy in part the deficiencies of its primary submissions by way of answer to a Panel Order, Complainant responded with material and submissions of little influence whilst Respondent chose not to reply at all. These shortcomings are made more apparent by the discussion which follows.
(b) Panel determines that the critical issue in this proceeding is whether it can be said that Respondent targeted Complainant’s trademark. Despite a populist view (and one, it can be later observed, shared by Complainant) that a respondent in UDRP proceedings is on constructive notice of a complainant’s trademark rights by reason of the existence of a Federal trademark registration, the predominant viewpoint of UDRP panelists has been to reject that argument and insist on a respondent’s actual knowledge of a complainant’s trademark rights.
(c) Whilst proof of trademark rights is necessary for a complainant’s success under the Policy and whilst proof of registration of the trademark with a national trademark authority is sufficient to establish those rights, the Policy makes it plain that the existence of a complainant’s trademark rights does not preclude a respondent from a legitimate interest in a domain name including the trademark or preclude a respondent from having registered such a domain name in good faith. It is against that landscape that the Panel Order should be understood.
Panel caused to be issued to the parties a Panel Order in the following terms:
Pursuant to Rule 12 of ICANN’s Uniform Domain Name Dispute Resolution Policy, the Arbitrator requests the following information no later than January 8, 2013:
From the Complainant only:
Proof of reputation and market presence of the Complainant’s business under the ARCHSTONE trademark prior to registration of the disputed domain name and preferably prior to November 3, 2009.
From both parties:
Evidence of any common meaning or common significance of the word “Archstone” as a surname, placename, descriptor, or otherwise.
On December 19, 2012 and in response to that Panel Order the Complainant’s attorney wrote to the Forum:
In response to the Order for Additional Submissions … Archstone attaches for submission examples of press releases and other promotion and use of the ARCHSTONE mark (an incontestable registered mark under US law). Many of these uses precede the 2009 date noted by the Arbitrator. Archstone owns and uses it mark ARCHSTONE throughout the US, but has limited its ample supply of marketing and promotion uses to examples within New York, the state targeted by the domain name use of NY with the ARCHSTONE name. For the national scope of use of the ARCHSTONE name with properties and related serves throughout the US, we direct the Arbitrator to http://www.archstoneapartments.com/.
It is hard to understand how Archstone, with incontestable trademark rights and registrations (which under US law provides constructive notice to subsequent users, (such as the Registrant of the domain name) and documents use since 1998 has the burden to show use, but it is nonetheless provided.
…
ARCHSTONE has no meaning beyond what has been established by Complainant through its years of use, registration and the good will generated therein, representing years of promotion and quality known to consumer -- the very reason registrant is attempting to use it in bad faith, confuse consumers and unfairly capitalize on the rights of Complainant.
Respondent did not respond to the Panel Order.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. As already noted, a trademark registered with a national authority is evidence of trademark rights[i].
Annexed to the Complaint are copies of three Federal trademark registrations with the USPTO. Panel observes that none is registered to Complainant. Panel further observes that all are in different names and that none shares even the same address as Complainant. There is no mention in the Complaint of assignment of rights and no proof of transfer document from the USPTO has been provided in evidence.
Another panelist may have dismissed the Complaint at this point and certainly that has happened in similar circumstances many times in the past[ii]. Nevertheless, Panel is prepared in this instance to find it more likely than not that United States Trademark Reg. No. 2,527,794 for the word mark ARCHSTONE in the name of Archstone Communities Trust is controlled by trustees accountable to Complainant and that for all intents Complainant is the beneficial owner of the trademark registration.
Panel is also satisfied that the disputed domain name is confusingly similar to Complainant’s trademark. The disputed domain name takes the trademark and adds non-distinctive elements – namely, the gTLD, “.com” and the geographical designator “ny”, neither being additions which distinguish the domain name from the trademark in any significant way so as to avoid confusion[iii].
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Whilst in no way detracting from that finding, Panel regards this as a convenient point to make certain additional comments on the nature of the trademark which are of relevance to the later analysis.
In reply to the Panel Order, Complainant stated that, to its knowledge, the word “archstone” had no meaning other than its acquired meaning as a trademark associated with Complainant.
Panel is permitted to make its own enquiries into matters of material relevance and takes notice of the fact that “archstone” (or “arch stone” albeit that nothing turns on the difference) is a dictionary word. Although not a common term, it is the name for the wedge-shaped stones or bricks used to construct an arch or vault. It can be contrasted with the “keystone”, being the masonry piece at the apex of the vault or arch which locks the archstones into position.
The word “keystone” is of course commonly used in a broader sense as a term for anything providing a pivotal function. Whether or not the word “archstone” enjoys the same broader popularity might be questioned but even the most cursory internet search of the term shows it to have been adopted by quite different businesses. In the United States alone, Panel notes a legal practice in Waltham, MA, using the name “Archstone Law” (www.archstonelaw.com), a nursing facility located in Chandler, AZ, established in 1986, “Archstone Care Center” (www.archstonecare.com) and featuring an archstone on the homepage, a SEC-registered investment consulting firm in Lutherville, MD, “Archstone Portfolio Solutions” (www.archstoneportfolio.com) showing on its homepage several images of stone archways and archstones and using one such image as its corporate logo, and a grantmaking organization, “The Archstone Foundation” (http://www.archstone.org), which has operated from Long Beach, CA, since 1996.
Panel need not speculate on why the word “archstone” carries with it an appeal to businesses of different kinds; it is enough to observe that use of the term is not unique to Complainant’s business and that many of the examples of third party use of the word predate its adoption by Complainant.
Something, too, needs to be said of Complainant’s reputation and its possible common law entitlement to the trademark as it has been presented to Panel.
There is nothing in the Complaint to show a reputation in the trademark associated with Complainant or to prove common law rights to the trademark. There is a simple claim that “Respondent is intentionally invoking Archstone’s goodwill in connection with multi-family properties” but there is no evidence to underpin that claimed reputation. At one level that is no surprise to the Panel since, at least as far as paragraph 4(a)(i) of the Policy is concerned, the Federal registration of the trademark stood in the place of proof of common law rights. Nevertheless, given the facts that “archstone” has a dictionary meaning and that it has been used by other businesses over some time, Complainant is confronted with the reality that its use of the name is not necessarily the reason for adoption of the same term by Respondent.
In reply to the Panel Order asking for proof of reputation, Complainant provided what it described as examples of press releases and other promotion and use of the mark, many predating 2009 (NB: being the year in which Respondent alleges that it incorporated its company by the name of Archstone Appraisals Inc.).
That material consists of promotional flyers for individual properties. None of those are dated. It further consists of press releases dated March 8, 2004, June 2005, and January 2006. In each case Panel observes that the press release is on notepaper headed “ARCHSTONE SMITH”, the references in the body of the text are to “Archstone-Smith” and the email contact point for further information is an address using the name “archstone-smith”.
Complainant further responded to the Panel Order, stating that “for the national scope of use of the ARCHSTONE name with properties and related serves throughout the US, we direct the Arbitrator to http://www.archstoneapartments.com/.” Once more, another panelist might not have regarded that as evidence at all, however, this Panel has followed that direction and made a study of that website. In doing so, Panel made two observations. First, there is nothing there to prove reputation. Secondly, the website further underscores what was apparent from the flyers and press releases, specifically, that Complainant “redefines apartment living by providing uniquely stylish apartments for rent in remarkable locations blended with exclusive service guarantees.” In simple terms, Complainant’s business is the rental of prestige apartments.
Complainant wrote that “[I]t is hard to understand how Archstone, with incontestable trademark rights and registrations … and documents use since 1998 has the burden to show use, but it is nonetheless provided.”
In answer to that protestation, Panel summarises the evidence as follows:
· For the purposes of paragraph 4(a)(i) of the Policy, Complainant has trademark rights in ARCHSTONE by reason of United States Trademark Reg. No. 2,527,794.
· On a proper application of paragraph 4(a)(i), the disputed domain name is confusingly similar to the trademark.
· The word “archstone” is a dictionary word and there are clear indications it is not only Complainant which desires to use the term in commerce.
· Applying the standards of the Policy[iv], Complainant has not shown a reputation in the trademark prior to the claimed date of incorporation of Respondent’s company, or prior to registration of the disputed domain name, or at all.
· The evidence shows that whatever reputation Complainant might enjoy (and which might have been established by better information) is potentially directed to a different trademark “ARCHSTONE-SMITH”.
· In any case, that reputation is limited to services in the nature of apartment rental.
Complainant is required to make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[v].
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you 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 (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 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 trade mark or service mark at issue.
The Complaint simply reads:
“None of the circumstances that could establish such rights or legitimate interest are present in this case. Respondent will likely uses (sic.) the confusingly similar domain name to offer links to competitors of the trademark owner, or consumers will believe this site to be owned or associated with Complainant.”
Panel considers that these statements are virtually non-responsive to the requirements of paragraph 4(a)(ii) of the Policy. At best, they are unreasoned apprehensions of Respondent’s possible future conduct. Once more, it would not be unusual in these circumstances for a panelist to find that Complainant had failed to establish a prima facie case and to conclude that Complainant had not satisfied the second limb of the Policy and so dismiss the Complaint.
Nevertheless, Panel’s findings in relation to bad faith render further consideration of this second element of the Policy unnecessary and Panel makes no finding on the question of rights or legitimate interests[vi].
Complainant must prove, on the balance of probabilities, both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance can be found in paragraph 4(b) of the Policy, however, Panel has already indicated that the critical issue in this case is whether on application of the relevant standard of proof, namely, on the balance of probabilities, it can be said that it was more likely than not that Respondent registered the disputed domain name in bad faith on January 26, 2010.
Complainant alleges that Respondent adopted the trademark deliberately and registered the domain name in bad faith in order to “divert consumers seeking Complainant’s properties to [Respondent’s] website and whatever non-Archstone use it has planned for the site or to hold the site hostage from its true owner.”
There is no direct evidence of those allegations. Indeed, there is no evidence at all of the use of a website corresponding with the disputed domain name. Complainant merely expresses its apprehensions about what could be abusive use of the domain name and, from those apprehensions about possible future misconduct, reasons back that the domain name must have been registered in bad faith.
Of itself, there is nothing illegitimate in that type of reasoning. It has been applied time and again for the simple reason that it is only in a small minority of cases that there is direct evidence of a respondent’s intentions and mental state at the time of registration of the domain name. Intentions are thus frequently imputed to a respondent but there must be sufficient signs of bad faith use or bad faith motivation that a backward reaching shadow can be cast over a respondent’s actions.
In this case Mr. Batista states that he has no interest in offering links to competitors of Complainant, or misleading consumers into thinking that the website associated with the disputed domain name is owned or associated with Complainant. He goes on to state that registration of the domain name was not made in bad faith because he did not deliberately adopt Complainant’s name and did not intend to divert consumers seeking Complainant’s services. He states that his company, Archstone Appraisals Inc., offers New York state real estate appraisals for mortgage and lending purposes to banks and large mortgage institutions.
It is lamentable that these are unsworn, uncorroborated statements, but the factors which have influence on the Panel are that (i) Respondent formed a New York company by a similar name a year before the domain name was registered; (ii) Respondent offers his services in relation to properties located in New York state; (iii) the services are for real estate lending approvals; (iv) there is no evidence Respondent has offered the domain name for sale; (v) there is no evidence that Respondent has a history of domain name abuse.
Taking the evidence as a whole, Panel finds that it would need to be persuaded that Respondent selected the name “archstone” because of its knowledge of Complainant’s business rather than because of any ordinary dictionary significance of the word and did so because it sought to trade on the goodwill of Complainant’s name albeit that Complainant’s business is in apartment rental whereas Respondent’s offering is ancillary to real estate purchase.
There is no clear evidence of bad faith action on the part of Respondent. There is nothing before the Panel which might insinuate Respondent’s bad faith intentions. Panel finds it counterintuitive that if Respondent were to have sought to give its business a “free ride” on the coat tails of a known trademark, it would have chosen Complainant’s trademark with its single association with apartment rental services.
Panel finds that the disputed domain name was not registered in bad faith and so finds that Complainant has failed to establish the third element of the Policy.
Having failed to establish at least one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <archstoneny.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: January 9, 2013
[i] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[ii] See, for example, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") at https://c--www-wipo-int.ssl.wipo.int/amc/en/domains/search/overview/index.html, where it is asked at Question 1.8: Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case? in answer to which the Consensus view is: In most circumstances, a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP. For the purpose of filing under the UDRP, evidence of such license and/or authorization of the principal trademark holder to the bringing of the UDRP complaint would tend to support such a finding. Panels have in certain cases been prepared to infer the existence of a license and/or authorization from the particular facts, but in general, relevant evidence is desirable. Although not a requirement, panels have on occasion found it helpful, where a complaint relies on a common source of trademark rights, for all relevant rights holders to be included as co-complainants.
[iii] See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar; see also InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003) dealing with the disputed domain name <dogpileuk.com> where the integer “uk” was added to the DOGPILE trademark.
[iv] See, for example, WIPO Overview 2.0, op.cit., at Question 1.7: What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights? Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods or services. Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographical area does not limit the complainant's rights in a common law trademark. For a number of reasons, including the nature of the Internet, the availability of trademark-like protection under passing-off laws, and considerations of parity, unregistered rights can arise for the purposes of the UDRP even when the complainant is based in a civil law jurisdiction. However, a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness. Some panels have noted that the more obvious the viability of a complainant's claim to common law or unregistered trademark rights, the less onus there tends to be on that complainant to present the panel with extensive supporting evidence. However, unless such status is objectively clear, panels will be unlikely to take bald claims of trademark fame for granted.
[v] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000); see also Hanna‑Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006).
[vi] See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary; see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) deciding not to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i).
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