Tejon Ranchcorp and Tejon Ranch Co. v. J
& L Enterprises
Claim Number: FA0507000524749
PARTIES
Complainants
are Tejon Ranchcorp and Tejon Ranch Co. (collectively, “Complainant”) represented by Michael S. Adler, of Gibson, Dunn &
Crutcher LLP, 333 South
Grand Avenue, Suite 4700, Los Angeles, CA 90071. Respondent is J & L
Enterprises (“Respondent”), P.O. Box 1510, Frazier Park, CA 93225.
The
domain name at issue is <tejonmountainvillage.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned certify that they have acted independently and impartially and to
the best of their knowledge they have no known conflict in serving as Panelist
in this proceeding.
Barry
Schreiber, Esq. Chair, Hon. Paul A. Dorf, (Ret), and Hon. Richard B.
Wickersham, (Ret), Panelists.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
26, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 29, 2005.
On
July 29, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the <tejonmountainvillage.com>
domain name is registered with Network Solutions, Inc. and that the Respondent is
the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
August 3, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 23,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@tejonmountainvillage.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On September 6, 2005, pursuant to Complainant’s request
to have the dispute decided by a three-member
Panel, the National Arbitration Forum
appointed Barry Schreiber, Esq. Chair, Hon. Paul A. Dorf, (Ret), and
Hon. Richard B. Wickersham, (Ret), as the three-member Panel.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum has discharged its
responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the "Rules") "to employ reasonably
available means calculated to achieve actual notice to Respondent." Therefore, the Panel has issued its decision
based on the documents submitted and in accordance with the ICANN Policy, ICANN
Rules, the National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
This
Complaint is based on the following factual and legal grounds: [Per ICANN Rule 3(b) (ix).]
[a.] Complainants
have used the TEJON RANCH name and various related TEJON marks since at least
1920. [Declaration of E. Andrew Daymude
("Daymude Decl.") ¶ 5.]
Complainants have operated a wide range of businesses under the TEJON
marks, with a concentration on business related to real estate. [Id. at ¶ 6.] Complainants' operations are based out of
the Tejon Ranch property, which covers approximately 270,000 acres in the San
Joaquin Valley, Tehachapi Mountains, and Antelope Valley areas of
California. [Id.] Complainants’ revenues over the past five
years have exceeded $15 million dollars per year. [Id.]
In
early 2000, Complainants began development and marketing of the Tejon Mountain
Village project under the TEJON MOUNTAIN VILLAGE mark. [Daymude Decl. ¶ 7.] The Tejon Mountain Village project includes
a 23,000 acre nature reserve and 5,000 acres of development, and the project is
planned to include approximately 3,450 homes, up to 160,000 square feet of
commercial and retail development, and 750 hotel/resort rooms. [Id.] Complainants also plans a number of educational and recreational
facilities, including a nature center, day camps, equestrian facilities, youth
centers, parks, play lawns, trails, swimming, boating fishing, and up to four
18-hole golf courses. [Id.]
Complainants
announced the development of the project and the TEJON MOUNTAIN VILLAGE mark no
later than April 10, 2001. [Id.
¶ 8.] The nature of the project
and the TEJON MOUNTAIN VILLAGE name were discussed at some length in
Complainants' annual report for 2000 and 2001.
[Daymude Decl. ¶ 8 and Exs. A and B.] The matter has been a source of public discussion in the region
at least since April 10, 2001, and it has been covered in various press
articles including an extensive article on the front page of the Los Angeles
Times published on September 9, 2002.
[Id. ¶¶ 9-10 and Ex. C.] Complainants have used the TEJON MOUNTAIN VILLAGE mark throughout
the development process, including the issuance of press releases, the
contracting documents for numerous environmental, geological, biological,
archeological, fiscal, traffic, landscaping, irrigation, road construction, and
other engineering studies and various public applications and environmental
impact reports. [Id.
¶ 11.]
Between
the inception of the project and September 2002, Complainants had entered into
contracts for required studies and reports on the Tejon Mountain Village
project which in total amount to contractual commitments in excess of ten
million dollars ($10,000,000.00), and Complainants have currently entered into
such contracts after September 9, 2002 in a total amount in excess of thirteen
million dollars ($13,000,000.00). [Id.
¶ 12.]
With
the exception of the generic “.com” TLD, Respondent's <tejonmountainvillage.com>
domain name is identical to Complainants’ established TEJON MOUNTAIN
VILLAGE mark. [See Daymude Decl.
¶ 13.]
Moreover, Respondent’s domain also
infringes Complainants’ venerable TEJON / TEJON RANCH / TEJON INDUSTRIAL
COMPLEX family of marks. TEJON is the
dominant feature of these marks inasmuch as Complainants have disclaimed exclusive
rights to the terms “ranch” or “industrial complex” apart from the marks as a
whole. Complainants also hold common
law rights in, and/or have pending federal trademark applications for other
TEJON marks, including the marks TEJON FILM, THE TEJON CLUB, and CAMP
TEJON. Respondent’s domain name
consists of the dominant feature of Complainants’ TEJON family of marks, along
with generic descriptions of a real estate-related nature.
[Per ICANN Rule 3(b)(ix)(1); ICANN Policy
¶ 4(a)(i).]
[b.] Complainants
believe and allege that Respondent has engaged in no business under the TEJON
MOUNTAIN VILLAGE mark or any other mark within the TEJON family of marks. Despite apparently having registered the
domain name at issue in 2002, Respondent has not made any use of the domain
name at issue. Respondent is not
commonly known under the TEJON MOUNTAIN VILLAGE name or mark.
Complainants
further note that Respondent appears to have registered the domain name at
issue the day immediately after Los Angeles Times published a
front-page article publicizing Complainants' development efforts on the
project and the TEJON MOUNTAIN VILLAGE mark.
[See Ex. C to Daymude Decl.]
[Per ICANN Rule 3(b) (ix)
(2); ICANN Policy ¶ 4(a) (ii).]
[c.] Respondent’s
mailing address is less than ten miles from Complainants’ established Tejon
Ranch and Tejon Industrial Complex operations, and Complainants’ name could not
be unknown to Respondent. [Daymude
Decl. ¶ 14.] It is clear that
Respondent must have known of Complainants’ established marks and their
advanced development of the Tejon Mountain Village under the TEJON MOUNTAIN
VILLAGE mark at the time that it registered the domain name at issue, and such
knowledge evidences bad faith. Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration). The fact that Respondent registered the domain name the day after
the publication of the Los Angeles Times article publicizing Respondent's
development efforts for the project under the TEJON MOUNTAIN VILLAGE mark
further suggests the Respondent's knowledge of Complainants' mark and an intent
to capitalize on that mark and/or interfere with Complainants' business.
In
addition, there is no way that Respondent could use the domain name without
creating an impression that Respondent's operations were connected with
Complainants. Although Respondent has
not specifically articulated its intention, the panel must assume on these
facts that Respondent knowingly registered the name with the intent to attract
business to Respondent’s site, disrupt the business of Complainants and/or
profit from the eventual sale of the domain name. See Arab Bank for Inv. & Foreign Trade v. Akkou,
D2000-1399 (WIPO Dec. 19, 2000); see also Telstra Corp. Ltd. v.
Yellowlees, D2002-0638 (WIPO Sept. 9, 2002); see also Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it
is “inconceivable that the respondent could make any active use of the disputed
domain names without creating a false impression of association with the
Complainant”). Indeed, by registering
the domain name that reflects the exact trademark, TEJON MOUNTAIN VILLAGE,
Respondent has effectively prevented Complainants from using the domain name by
which the public would naturally expect to find Complainants. Sport Chalet, Inc. v. Ski Chalet, Inc.,
D2000-1834 (WIPO Apr. 2, 2001) (finding bad faith where registration of
<sportchalet.net> prevented Complainant from registering own name).
Moreover, Respondent has not made any
apparent use of the domain name in more than two years. As various panels have noted, "the act
of registering a domain name without developing an active website has been found
to constitute bad faith." Telstra
Corp. Ltd. v. Yellowlees, D2002-0638 (WIPO Sept. 9, 2002) (citing World
Wrestling Fed’n Entm’t Inc. (WWFE) v. de Rooij, D2000-0290 (WIPO June 20,
2000); Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb.
18, 2000); eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001)).
B. Respondent
Respondent
failed to file any Response. The National Arbitration Forum transmitted to the
parties a Notification of Respondent Default.
FINDINGS
The Panelist finds that Complainant
has proved each of the required three elements of Paragraph 4(a) of the
Policy, subsections (1), (2) and (3), to wit: (1) Respondent’s domain name, <tejonmountainvillage.com>, is identical or confusingly similar
to Complainant’s trademark; (2)
Respondent has no legitimate interests with respect to the domain name; and (3)
Respondent registered the domain name in bad faith and hence the relief
sought by Complainant should be granted.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
In
view of Respondent's failure to submit a Response, the Panel has decided this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
drew such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
Complainant
asserts that it has established rights in the TEJON RANCH mark through
registration of the mark with the Untied States Patent and Trademark Office
(“USPTO”) (Reg. Nos. 1,827,718 issued March 22, 1994; and 1,826,721 issued
March 15, 1994). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under
U.S. trademark law, registered marks hold a presumption that they are
inherently distinctive [or] have acquired secondary meaning.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the
USPTO has made a determination that a mark is registrable, by so issuing a
registration, as indeed was the case here, an ICANN panel is not empowered to
nor should it disturb that determination.”).
The
Panel finds that Respondent’s <tejonmountainvillage.com> domain
name is confusingly similar to Complainant’s TEJON RANCH mark, as the domain
name incorporates the dominant and distinctive feature of Complainant’s mark,
the term “tejon,” and adds the term “mountain village,” which has a clear
relationship to Complainant’s housing development. The Panel has concluded that Respondent’s changes to
Complainant’s mark are insufficient to negate a finding of confusing similarity
pursuant to Policy ¶ 4(a) (i). See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001)
(finding the domain name <ms-office-2000.com> to be confusingly similar
even though the mark MICROSOFT is abbreviated); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Alternatively,
Complainant asserts that it has established rights in the TEJON MOUNTAIN
VILLAGE mark through continuous use of the mark in commerce in connection with
its housing development. The Panel
finds that Complainant’s TEJON MOUNTAIN VILLAGE mark has gained secondary
meaning as a source identifier, and hence concludes that Complainant has
established common law rights in the mark pursuant to Policy ¶ 4(a) (i). See SeekAmerica Networks Inc.
v. Masood, D2000-0131
(WIPO Apr. 13, 2000) (finding that the Rules do not require that the
complainant's trademark or service mark be registered by a government authority
or agency for such rights to exist); see
also Tuxedos By Rose v. Nunez,
FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark
where its use was continuous and ongoing, and secondary meaning was
established); see also Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini,
D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided
evidence that it had valuable goodwill in the <minorleaguebaseball.com>
domain name, establishing common law rights in the MINOR LEAGUE BASEBALL
mark).
The Panel,
having found that Complainant has rights in the TEJON MOUNTAIN VILLAGE mark,
determines that Respondent’s <tejonmountainvillage.com> domain
name is identical to Complainant’s TEJON MOUNTAIN VILLAGE mark, as the addition
of the generic top-level domain “.com” and omission of the spaces between the
terms of the mark are insufficient to distinguish Respondent’s domain name from
Complainant’s common law mark. See
Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May
27, 2003) (“The addition of a top-level domain is irrelevant when establishing
whether or not a mark is identical or confusingly similar, because top-level
domains are a required element of every domain name.”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
for Complainant.
The Panel is aware that once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent to
show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)
(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(holding that, where the complainant has asserted that the respondent has no
rights or legitimate interests with respect to the domain name, it is incumbent
on the respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent.”).
The
Panel has interpreted Respondent’s failure to respond to the Complaint as
evidence that Respondent lacks rights and legitimate interests in the <tejonmountainvillage.com>
domain name pursuant to Policy ¶ 4(a) (ii).
See Parfums Christian Dior
v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not
submitting a response, the respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Pavillion Agency, Inc. v.
Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the
respondents’ failure to respond can be construed as an admission that they have
no legitimate interest in the domain names).
Complainant
asserts that Respondent has not made any active use of the disputed domain name
since registering it nearly three years ago.
The Panel thus finds that Respondent’s nonuse of the domain name
constitutes passive holding and, as such, is neither a use in connection with a
bona fide offering of goods or services pursuant to Policy ¶ 4(c) (i)
nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)
(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where the respondent failed to
submit a response to the complaint and had made no use of the domain name in
question); see also Chanel, Inc.
v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
The Panel finds
for Complainant.
The Panel
clearly finds that Respondent’s long-term non-use of the <tejonmountainvillage.com>
domain name is evidence of bad faith registration and use pursuant to Policy ¶
4(a) (iii). See DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive
holding of the domain name satisfies the requirement of ¶ 4(a) (iii) of the
Policy); see also Mondich v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that the respondent’s failure to
develop its website in a two year period raises the inference of registration
in bad faith).
Furthermore, the
Panel finds that Respondent registered the disputed domain name with actual or
constructive knowledge of Complainant’s rights in the TEJON RANCH mark due to
Complainant’s registration of the mark with the USPTO. In addition, the Panel inferred that
Respondent had actual knowledge of Complainant’s TEJON MOUNTAIN VILLAGE mark,
as Respondent’s home address, as reflected in the WHOIS information, is located
ten miles from Complainant’s development and Respondent registered the disputed
domain name one day after the Los Angeles Times published a prominent
article about Complainant’s development.
The Panel concludes that registration of a domain name that is identical
or confusingly similar to another’s mark, despite actual or constructive knowledge
of the mark holder’s rights, is evidence of bad faith registration and use
pursuant to Policy ¶ 4(a) (iii). See
Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse."); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds for Complainant.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <tejonmountainvillage.com>
domain name be TRANSFERRED from Respondent to Complainant.
Barry Schreiber, Esq. Chair, Hon. Paul A.
Dorf, (Ret), and Hon. Richard B. Wickersham, (Ret) Panelist
Dated: September 20, 2005
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