The domain name WorldTradeCenter.com, was lost in a UDRP along with WorldTradeCenter.net.
The one member panel decision was handed down by the On-line ADR Center of the Czech Arbitration Court (CAC).
The complainant is the World Trade Centers Association, Inc, who was represented by RODENBAUGH LAW.
The domain WorldTradeCenter.com was registered on November 2, 1996 and owned is Earth Plaza of Ft. Lauderdale, Florida who has owned the domain name since at least 2002 according to DomainTools.com but may have been the original registrant.
In 2011 the domain was listed for sale by Aftermarket.com as we reported.
The Complainant is the holder of trademark registrations consisting of the sign WORLD TRADE CENTER in multiple countries, including U.S. trademark registration no. 1469489 for the word mark “WORLD TRADE CENTER”, registered with the USPTO on December 15, 1987, in class 42 (hereinafter, the “WORLD TRADE CENTER trademarks”.
The Complainant is a not-for-profit corporation, incorporated in the State of Delaware on August 22, 1969. It aims at the stimulation of trade and investment opportunities for commercial property developers, economic development agencies, and international businesses looking to connect globally and prosper locally.
The disputed domain name was registered on May 12, 1998.
The disputed domain names currently do not resolve to an active webpage but according to screenshots.com had an active page (or parked page) since June 2014.
For an undefined period of time, the first disputed domain name worldtradecenter.com was used to link to a memorial page for the 9/11 attacks in 2001.
It is uncontested that the disputed domain name has also been used as a parking page containing pay-per-click advertisements and that the second disputed domain name redirected immediately to the first disputed domain name.
The one member panel concluded:
The Complainant has, to the satisfaction of the Panel, shown the Domain Names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
Then in discussing the case the panel said:
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:
1. The domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interests in respect of the domain names; and
3. The domain names have been registered and are being used in bad faith.
The Panel has therefore dealt with each of these requirements in turn.
Confusing similarity of the Domain Name with existing rights
The Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the WORLD TRADE CENTER trademarks, which are used in connection with its business, it is established that there is a trademark in which Complainant has rights.
The Panel considers the disputed domain names and to be composed of a name identical to the WORLD TRADE CENTER trademarks.
Accordingly, the Complainant has made out the first of the three elements that it must establish.
No legitimate rights
Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent.
The Panel notes that the Respondent has not been commonly known by the domain names and that the Respondent has not acquired trademark or service mark rights. Respondent’s use and registration of the disputed domain names was not authorized by the Complainant. There are no indications that a connection between Complainant and Respondent existed.
The Respondent states that the disputed domain names were used for non-profit, humanitarian purposes only. While the Panel notes that the disputed domain name has indeed been used to refer to a humanitarian web page and to a non-profit memorial tribute site, the Respondent does not contest the fact that it recently referred to a parking page containing sponsored links. Moreover, it appears from previous correspondence between the parties that the Respondent was aware of the Complainant’s trademark rights since 1996.
In the circumstances of this case, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the disputed domain names. The Panel therefore concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
Bad faith
Complainant must prove on the balance of probabilities that the disputed domain name was registered in bad faith and that it is being used in bad faith
According to the Panel, the awareness of a respondent of the complainant and/or the complainant’s trademark rights at the time of registration can evidence bad faith
In the present case, the Respondent claims to have discovered the Complainant’s trademark rights shortly after having registered the disputed domain name . In view of the fact that the Complainant’s U.S. trademark was registered almost ten years before the disputed domain name , the Panel finds that the Respondent must have known the Complainant’s trademarks before registering this domain name.
The Respondent was unquestionably aware of the Complainant’s trademarks when registering the second disputed domain name more than one year later.
Moreover, the Respondent’s subsequent use of the disputed domain names has clearly been targeting the Complainant’s WORLD TRADE CENTER trademarks. The Respondent does not contest that the disputed domain names recently referred to a parking page containing sponsored links, including links to websites which promotes third party services that compete with those of Complainant.
The Panel considers that the Respondent is using the domain names in bad faith, as the Respondent is using the Complainant’s WORLD TRADE CENTER trademarks in an attempt to attract Internet users with an apparent intent of commercial gain.
The panel did not discuss why it took the Complainant some 20 years to raise the issue and file the UDRP even though it was actively marketed for sale in 2011.
