DECISION

Elk Retail Investors, LLC c/o Kravco Company v. Peter Fritz

Claim Number:  FA0307000167916

PARTIES

Complainant is Elk Retail Investors, LLC c/o Kravco Company, King of Prussia, PA (“Complainant”) represented by Vito Petretti, of Wolf, Block, Schorr and Solis-Cohen LLP. Respondent is Peter Fritz, Prague, Czech Republic (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <shopconcordmall.com>, registered with Onlinenic, 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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 3, 2003; the Forum received a hard copy of the Complaint on July 7, 2003.

On July 7, 2003, Onlinenic, Inc. confirmed by e-mail to the Forum that the domain name <shopconcordmall.com> is registered with Onlinenic, Inc. and that Respondent is the current registrant of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic, 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 July 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 2003 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@shopconcordmall.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 August 1, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 makes the following assertions:

1. Respondent’s <shopconcordmall.com> domain name is confusingly similar to Complainant’s CONCORD MALL mark.

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

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

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

FINDINGS

Complainant, Elk Retail Investors, LLC c/o Kravco Company, has been using the service mark CONCORD MALL in commerce since approximately 1972 in connection with the leasing and management of retail space at a shopping mall. After decades of use of the mark in commerce, Complainant applied for registration of the mark on the Principal Register of the U.S. Patent and Trademark Office on March 21, 2003 (Ser. No. 76/501,369). Since 1995, Complainant and its affiliates have spent roughly $700,000 in advertising and marketing expenses related to its services under the CONCORD MALL mark.

Complainant has also registered many domain names incorporating its CONCORD MALL mark, including the <shopconcordmall.biz>, <shopconcordmall.info>, <shopconcordmall.net>, <shopconcordmall.org> and <shopconcordmall.us> domain names, each being registered on either July 23 or July 24, 2002. In addition to these domain names, Complainant had previously operated a website at the <shopconcordmall.com> domain name, until its domain name registration was inadvertently permitted to lapse by its advertising agency. Although the Complaint is contradictory on this point, it appears that Complainant’s registration of the disputed domain name lapsed on December 22, 2002, and was subsequently registered by Respondent, Peter Fritz, on December 24, 2002. Respondent uses the disputed domain name, without authorization or consent by Complainant, to host an adult-oriented website entitled “Japanese Schoolgirl.”

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.

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 CONCORD MALL mark through use of the mark in commerce, both through its brick-and-mortal operations and online. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the Policy); see also American Anti-Vivisection Soc'y. v. "Infa dot Net" Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that the fact that Complainant held the domain name prior to Respondent’s registration, as well held a pending trademark application in the mark, evidences rights in the domain name and the mark therein contained).

Respondent’s <shopconcordmall.com> domain name is confusingly similar to Complainant’s CONCORD MALL mark. It only differs from Complainant’s mark in that it includes the word “shop,” which has an obvious relationship to the services offered by Complainant under its mark. The fact that Complainant itself decided that the word “shop” made a suitable pairing with its mark when it registered its series of domain names (including the disputed domain name) further underscores the fact that the disputed domain name is confusingly similar to the CONCORD MALL mark. See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that the <shopconcordmall.com> domain name is confusingly similar to Complainant’s CONCORD MALL mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent registered the <shopconcordmall.com> domain name almost immediately after Complainant inadvertently permitted its domain name registration to lapse. While there is nothing inherently wrong with such a practice, what separates this situation from those where a clever domain name registrant legitimately registers a domain name that was released into the public domain is that Respondent registered this domain name because of the goodwill Complainant had built-up around its CONCORD MALL mark and the Internet traffic it had attracted to the <shopconcordmall.com> domain name while it was in Complainant’s possession. Nothing about the disputed domain name itself would legitimize a connection with an adult-oriented website about “Japanese Schoolgirls,” evidence that it was Complainant’s accrued goodwill, and not the disputed domain name, that Respondent was after at registration. Such use of the domain name cannot be considered sufficient to vest rights or legitimate interests in Respondent. See American Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that Complainant’s prior registration of the same domain name is a factor in considering Respondent’s rights or legitimate interest in the domain name); see also McClatchy Mgmt. Serv., Inc. v. Carrington a/k/a Party Night Inc., FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that Respondent’s use of the disputed domain names to divert Internet users to a website that features pornographic material, had been “consistently held” to be neither a bona fide offering of goods or services . . . nor a legitimate noncommercial or fair use).

In this dispute, the Panel also chooses to view Respondent’s decision to leave the Complaint uncontested as evidence that Respondent admits that it has no rights or legitimate interests in the disputed 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <shopconcordmall.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the <shopconcordmall.com> domain name in bad faith. Respondent registered a domain name that completely contains Complainant’s CONCORD MALL mark in order to redirect Internet users to an adult-oriented website. Traditionally, this has been considered evidence of bad faith use and registration of a domain name pursuant to Policy ¶ 4(a)(iii). What strengthens this conclusion in the present dispute is that the disputed domain name is not only confusingly similar to Complainant’s mark, but was in fact previously registered by Complainant itself, intimately tying the domain name to the goodwill surrounding Complainant’s CONCORD MALL mark. Under these circumstances, Respondent registered and used the disputed domain name in bad faith. See Nat’l Ass’n of Stock Car Auto Racing, Inc. v. RMG Inc – BUY or LEASE by E-MAIL, D2001-1387 (WIPO Jan. 23, 2002) (stating that “it is now well known that pornographers rely on misleading domain names to attract users by confusion, in order to generate revenue from click-through advertising, mouse-trapping, and other pernicious online marketing techniques”); see also InTest Corp. v. Servicepoint, FA 95291 (Nat. Arb. Forum Aug. 30, 2000) (finding that where the domain name has been previously used by Complainant, subsequent registration of the domain name by anyone else indicates bad faith, absent evidence to the contrary).

The Panel thus finds that Respondent registered and used the <shopconcordmall.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <shopconcordmall.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: August 15, 2003

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