national arbitration forum

 

DECISION

 

Concord Adex Developments Corp. v. Jeff Lenglet c/o Alien Elite

Claim Number: FA0702000915556

 

PARTIES

 

Complainant is Concord Adex Developments Corp. (“Complainant”), represented by R. Grant Cansfield, 181 Bay Street, Suite 1800, Toronto, ON M5J 2T9, Canada.  Respondent is Jeff Lenglet c/o Alien Elite (“Respondent”), 5 Mariner TERR, ATTN: cityplacetoronto.com, Toronto, ON M5V 3V6, CA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <cityplacetoronto.com>, registered with Schlund+Partner Ag.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 13, 2007.

 

On February 16, 2007, Schlund+Partner Ag confirmed by e-mail to the National Arbitration Forum that the <cityplacetoronto.com> domain name is registered with Schlund+Partner Ag and that Respondent is the current registrant of the name.  Schlund+Partner Ag has verified that Respondent is bound by the Schlund+Partner Ag 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 February 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 13, 2007, 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@cityplacetoronto.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On March 16, 2007, pursuant to Complaintant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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 may issue 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 makes the following assertions:

 

1.      Respondent’s <cityplacetoronto.com> domain name is confusingly similar to Complainant’s CITYPLACE mark.

 

2.      Respondent does not have any rights or legitimate interests in the <cityplacetoronto.com> domain name.

 

3.      Respondent registered and used the <cityplacetoronto.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

 

Complainant, Concord Adex Developments Corp., has continuously used the CITYPLACE mark in connection with commercial and residential real estate developments in Canada since 1987, including a multiple tower real estate development in Toronto.  Complainant maintains a website at the <cityplace.ca> domain name promoting this particular development.

 

Complainant holds several trademark registrations with the Canadian Intellectual Property Office for the CITYPLACE mark (Reg. No. TMA345,511 issued September 30, 1988; Reg. No. TMA345,514 issued September 30, 1988; Reg. No. TMA578,751 issued April 2, 2003; Reg. No. TMA544,549 issued May 4, 2001).

 

Respondent’s <cityplacetoronto.com> domain name, which it registered on August 18, 2006, resolves to a website providing criticism of Complainant’s real estate development and displaying links that redirect Internet users to third-party websites.

 

DISCUSSION

 

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."

 

In view of Respondent's failure to submit a response, the Panel shall decide 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 draw 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 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.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the CITYPLACE mark pursuant to Policy ¶ 4(a)(i) through registration of the mark in Canada.  See Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  Respondent has merely added the geographic identifier “toronto” to Complainant’s registered CITYPLACE mark in the <cityplacetoronto.com> domain name.  As Complainant owns a real estate development in the Canadian city of Toronto under this name, the disputed domain name has an obvious relationship to Complainant’s business. In American  Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003), the panel found that the respondent’s addition of the term “assurance” to the complainant’s AIG mark did not sufficiently differentiate the domain name from the mark because the appended term related directly to the complainant’s business.  Likewise, in Reed Elsevier Inc. v. Christodoulou, FA 97321 (Nat. Arb. Forum June 26, 2001), the panel found that the <legallexis.com> and <legallexus.com> domain names were confusingly similar to the complainant’s LEXIS mark because the term “legal” described the type of services the complainant offered under the LEXIS mark.

 

Because Respondent’s conduct in the present case is similar to these previous panel decisions, the Panel finds that Respondent has failed to sufficiently distinguish the <cityplacetoronto.com> domain name from its mark by adding the term “toronto” and the generic-top level domain “.com” and as a result, the <cityplacetoronto.com> domain name is confusingly similar to the CITYPLACE mark under Policy ¶ 4(a)(i).  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).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant maintains that Respondent does not have rights to or legitimate interests in the disputed domain name.  Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).

 

Respondent’s failure to answer the Complaint raises a presumption that Respondent has no rights or legitimate interests in the <cityplacetoronto.com> domain name.  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) (failure to respond can be construed as an admission that a respondent has no legitimate interest in the domain names).  However, the Panel will now examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Because the WHOIS information lists the domain name registrant as “Jeff Lenglet c/o Alien Elite,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain name, the Panel finds that Respondent has not established rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii).   M. Shanken Communications, Inc. v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent is using the disputed domain name to maintain a website displaying information critical of Complainant, as well as links to third-party websites unrelated to Complainant.  In Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001), the panel found that the establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name was confusingly similar to the complainant's DAVID WEEKLEY HOMES mark.   Thus, Respondent is also not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) by operating a complaint site.  See Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is using the disputed domain name to criticize Complainant’s business practices.  The Panel finds that such conduct illustrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Nw. Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (“Respondent registered the domain name for the purpose of bringing Internet users desiring to learn more about Complainant to Respondent's site for the intended purpose of publishing contrary and critical views of Complainant thus disrupting the business of Complainant. Registering a domain name identical with the mark of Complainant, for this purpose, is bad faith.”); see also Robo Enters., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (“Respondent choose the domain name to cause persons seeking information on ROBO ENTERPRISES to be drawn to Respondent’s website for the purpose of exposing the user to negative and critical views of Complainant. Choosing and operating the domain name for such a purpose in this case is bad faith.”).

 

Moreover, Respondent’s website also contains links to third-party websites providing products and services unrelated to Complainant.  The Panel infers that these are sponsored links and that Respondent is earning click-through fees for each consumer it diverts to other websites.  As a result, Respondent has registered and is using the disputed domain name in bad faith according to Policy ¶ 4(b)(iv).  See The Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also  Association of Junior Leagues Int’l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent’s use of the disputed domain names to maintain pay-per-click sites displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).

 

The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <cityplacetoronto.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Bruce E. Meyerson, Panelist

Dated:  March 23, 2007

 

 

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