DECISION

 

Glimcher Lloyd Venture, LLC v. Gilberts Communications

Claim Number: FA0104000097046

 

PARTIES

Complainant is Glimcher Lloyd Venture, LLC, Columbus, OH, USA (“Complainant”) represented by Randolph W. Alden, of Alden, Taylor & Durkin, LLC.  Respondent is Gilberts Communications, El Segundo, CA, USA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lloydcenter.com> registered with BulkRegister.com, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 9, 2001; the Forum received a hard copy of the Complaint on April 11, 2001.

 

On April 10, 2001, BulkRegister.com, Inc. confirmed by e-mail to the Forum that the domain name <lloydcenter.com> is registered with BulkRegister.com, Inc. and that Respondent is the current registrant of the name.  BulkRegister.com, Inc. has verified that Respondent is bound by the BulkRegister.com, 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”).

 

A Joint Stay of Administrative Proceeding was requested and granted in this proceeding. On June 6, 2001 the Stay was removed.

 

On June 6, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 26, 2001 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@lloydcenter.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 Forum transmitted to the parties a Notification of Respondent Default.

 

On July 2, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Ralph Yachnin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 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

Respondent’s domain name <lloydcenter.com> and Complainant’s common law service marks, LLOYD CENTER and LLOYD SHOPPING CENTER, are confusingly similar.

 

Before any notice to the Respondent of the dispute, Respondent did not use, or demonstrably prepare to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

 

Respondent (either as an individual, business, or other organization) has not been commonly known by the domain name.

 

Respondent is not making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.  In fact, Respondent is making no use whatsoever of the domain name.

 

Complainant asserts that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.

 

B. Respondent

Respondent submitted no Response.

 

FINDINGS

Complainant, through Glimcher Realty Trust, its parent company, purchased Lloyd Center from its predecessors in interest in 1998.  Complainant’s predecessor in interest registered both Lloyd Center and Lloyd Shopping Center as assumed business names in the state of Oregon.  Complainant’s predecessors in interest first used the LLOYD CENTER mark in commerce as early as 1960.

 

Complainant has acquired common law trademark rights in LLOYD CENTER and LLOYD SHOPPING CENTER marks through its extensive use of the marks in connection with its retail mall thereby giving Complainant exclusive rights to use these marks on and in connection with its products and services.  As a result of the extensive and long-standing advertising, promotion, and use of these marks by Complainant, Complainants marks have developed substantial goodwill and name brand recognition.  These marks are well-known in Portland, Oregon and in other areas of Oregon and beyond, as uniquely identifying Complainant’s exclusive LLOYD CENTER development.

 

Respondent registered the <lloydcenter.com> domain name on September 9, 1996 more than 36 years after Complainant’s predecessors in interest first used the LLOYD CENTER mark in commerce.

 

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

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.

 

Identical and/or Confusingly Similar

Under the Policy, Complainant must show that it has rights in the mark, and that the disputed domain name is identical or confusingly similar to that mark.

 

Complainant’s rights are evidenced by its common law mark LLOYD CENTER.  See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the Complainant have rights in a registered trademark and that it is sufficient to show common law rights); see also Smart Design LLC v. Carolyn Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy 4(a)(i) does not require Complainant to demonstrate ‘exclusive rights,’ but only that Complainant has a bona fide basis for making the complaint in the first place).

 

The Panel finds that Respondent’s <lloydcenter.com> domain name is identical to Complainant’s well-established common law mark.  See Dr. Karl Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (Finding Respondent’s domain name <karlalbrecht.com> identical to Complainant’s common law mark); see also Football Ass’n Ltd. v. UKIP, D2000-1359 (WIPO Dec. 15, 2000) (finding that domain name <facup.com> is clearly identical to the FA CUP trademark belonging to Complainant).

 

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

Respondent is not commonly known by the disputed domain name, nor has Respondent used the domain name in connection with a legitimate noncommercial or fair use.  See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

 

Moreover, Respondent asserted no rights or legitimate interests in the disputed domain name, which entitles the Panel to conclude Respondent has no such rights or legitimate interests in the domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names"); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under certain circumstances the mere assertion by the Complainant that the Respondent has no right or legitimate interest is sufficient to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest does exist).

 

Therefore, Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

Respondent has not used the disputed domain name since its registration, which demonstrates Respondent’s bad faith.  See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) it is clear that Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant).

 

In addition, there is no way for Respondent to legitimately use the disputed domain name without inferring some misguided association with Complainant’s mark.  See Sony Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that 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").

 

Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Having established all three elements required under ICANN Policy, this Panel concludes that the requested relief shall be and is hereby granted.

 

It is Ordered that the domain name, <lloydcenter.com>, be transferred from Respondent to Complainant.

 

 

Honorable Ralph Yachnin (Ret), Panelist

 

Dated: July 3, 2001