almadenvalleyathleticclub.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Almaden Valley Athletic Club v. Texas International Property Associates - NA NA

Case No. D2008-0600

1. The Parties

The Complainant is Almaden Valley Athletic Club, of United States of America, represented by Idell & Seitel LLP, United States of America.

The Respondent is Texas International Property Associates - NA NA, of United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.

2. The Domain Name and Registrar

The disputed domain name <almadenvalleyathleticclub.com> is registered with Compana LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 17, 2008. On April 17, 2008, the Center transmitted by email to Compana LLC a request for registrar verification in connection with the domain name(s) at issue. On April 17, 2008, Compana LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 18, 2008. The Response was filed with the Center on May 18, 2008.

The Center appointed Angela Fox as the sole panelist in this matter on May 28, 2008. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a California limited partnership that has owned and operated a health and fitness membership club under the name Almaden Valley Athletic Club in San Jose, California since 1974.

According to a witness statement by Joseph M. Shank, the Complainant’s co-founder, General Partner and CEO, the Almaden Valley Athletic Club has been known and marketed under that name since 1974, even before the construction of its facilities was completed in 1976. As a result of pre-launch marketing, the club had 400 dues-paying memberships upon opening, increasing to 1,200 in 1980, 2,200 in 1990, 3,000 in 2000 and 3,394 today. The actual number of individual members is more than double these figures because many memberships extend to couples and families.

The Complainant has assiduously promoted its business under the club’s name over the last three decades. Its CEO quotes the club’s 2007 marketing and advertising budget, which included extensive direct mail, public relations and paper and web-based advertising, all prominently displaying the name of the club, as exceeding $200,000. The club has played host to numerous tennis tournaments of national significance and has enjoyed a high profile in local community charitable fundraising efforts. The Complainant annexed photographs of the club premises over the years showing the prominent use of its name, as well as copies of newspaper articles referring to the club, and a newspaper advertising supplement.

The Complainant owns pending U.S. federal trademark application No. 77434925 for ALMADEN VALLEY ATHLETIC CLUB, filed on March 28, 2008.

The Respondent registered the disputed domain name on December 6, 2005. It is in use for a website offering a variety of sponsored links, including to competitors of the Complainant.

The Complainant’s attorneys sent a cease and desist letter to the Respondent on March 25, 2008, to which it received no substantive reply. This Complaint was filed on April 16, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it owns common law rights in the trademark ALMADEN VALLEY ATHLETIC CLUB and that the disputed domain name is identical to its common law trademark.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain name. Use of the disputed domain name to offer sponsored links, including to competitors of the Complainant, does not constitute a bona fide offering of goods or services through the site, nor is it a legitimate non-commercial or fair use. The Respondent is not commonly known by the disputed domain name and is using the Complainant’s common law trademark to divert Internet users looking for the Complainant, thus taking unfair advantage of the substantial goodwill accruing to the Complainant as a result of many years of investment in use and promotion of its common law trademark.

Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. In the Complainant’s submission, the Respondent registered the disputed domain name for the sole purpose of selling, renting or otherwise transferring the domain name to the Complainant, or for the purpose of disrupting the Complainant’s business. The Complainant further submits that the Respondent has used the disputed domain name in an intentional attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement.

B. Respondent

The Respondent states that it does not admit the Complainant’s case against it, but nonetheless agrees to the relief requested and will, upon order of the Panel, transfer the disputed domain name to the Complainant.

The Respondent submits that the correct course is for the Panel to proceed immediately to an order for transfer, without considering whether the elements required under paragraph 4(a) of the Policy are met.

6. Discussion and Findings

Numerous panels have held that in cases where a respondent consents fully and unequivocally to the relief sought, that relief should be granted without analysing whether the requirements of paragraph 4(a) of the Policy have been met (see inter aliaWilliams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207). The Rules do not expressly provide for such cases, but Rule 10 (a) empowers the panel to conduct the proceedings in the manner that it deems appropriate under the Policy and Rules, and Rule 10(c) requires the panel to ensure that the proceedings are conducted with due expedition.

Some panels have regarded a respondent’s consent to the relief sought as enabling the panel to deem that the paragraph 4(a) tests have been met (DESOTEC N.V. v. JACOBI CARBONS AB, WIPO Case No. D2000-1398; Deutsche Bank v. Carl Siegler, WIPO Case No. D2000-0984; Juventus F.C. S.p.a. v. Sergio Brangança, WIPO Case No. D2000-1466; and Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620).

Still other panels have regarded respondents who consent to relief without admitting the paragraph 4(a) elements as effectively in default, and have examined the merits before making a decision.

As a general approach, the Panel agrees that the most expeditious approach where a respondent consents fully and unequivocally to the relief requested is for that relief to be granted without examination of the merits. The Panel itself has followed that approach in one other case involving this Respondent (Medallion Cabinetry Inc. v. Texas International Property Associates, WIPO Case No. D2007-1015). It has become apparent, however, that the Respondent has been challenged in numerous prior UDRP cases, the vast majority of which have resulted in transfer. It is, moreover, clear that the Respondent has developed a strategy of registering third-party trademarks as domain names and clinging to them until complainants have invested time and money in filing a formal complaint, and then seeks to avoid decisions on the merits by simply consenting to the relief requested.

In such cases, proceeding to a decision without examining the merits may allow known cybersquatters to escape findings of bad faith that could otherwise assist complainants in future cases where it is necessary to prove a pattern of behaviour under paragraph 4(b)(ii) of the Policy. As noted by the panel in another case involving the same Respondent, “If panels simply comply with respondents’ surrender when a complaint is filed, and refrain from making factual findings that are open to them which would otherwise be evidence of a pattern, inappropriate ‘cybersquatting’ conduct might be perpetuated” (Usborne Publishing Limited v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1913).

There is therefore a public interest in examining the merits in such cases, both for potential future complainants and in general to discourage repeated attempts by respondents, such as this one, to manipulate the panel’s powers under paragraphs 10(a) and 10 (c) to evade adverse factual findings under the Policy. This interest has been recognized by other panels, who have commented inter alia that, “[T]here is a wider interest in the activities of those that have registered domain names contrary to the terms of the Policy, becoming publicly known. The relevant facts may be relevant to future proceedings involving different complainants” (Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909; see also Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007–1211; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144; and ChoicePoint Asset Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0395).

In the Panel’s view, the Respondent’s past conduct and the facts as presented in the Complaint, which the Respondent does not seek to deny, renders this case appropriate for examination of the merits. The Panel will proceed accordingly.

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant does not own a trademark registration for ALMADEN VALLEY ATHLETIC CLUB, but it claims to own common law rights in it. Such rights would, if proved, constitute an acceptable basis for a claim to rights under paragraph 4(a)(i) of the Policy.

In order to make out a claim to common law rights under the Policy, the Complainant must establish that ALMADEN VALLEY ATHLETIC CLUB has come to denote the Complainant’s services as a distinctive identifier (see inter aliaUniversal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784 and UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575). Length and scale of use, extent of advertising and consumer recognition are all relevant factors in assessing whether a mark has acquired such secondary meaning.

In this case, the Complainant has proved over three decades of continuous and substantial use of its name in the San Jose area. It is apparent from the evidence that the Complainant has invested heavily in the promotion of its business under the name, including through the hosting and sponsorship of high-profile national sporting events. The press coverage annexed to the Complaint demonstrates that the name has indeed come to denote the Complainant and its club at least in the San Jose area. It is well-established under the Policy that common law rights may exist even where a mark has only come to denote a complainant’s goods or services in a limited field or geographic area (Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786 and Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322).

The Panel is satisfied that the Complainant has made out its case to ownership of common law rights in ALMADEN VALLEY ATHLETIC CLUB.

The disputed domain name is identical to the Complainant’s common law trademark, omitting only the spaces between the words and adding only the nondistinctive domain name suffix, “.com”. Both changes are minor modifications of the type essential to the process of converting an ordinary set of words to an Internet domain name and do nothing to distinguish the disputed domain name from the Complainant’s common law trademark.

The Panel finds that the disputed domain name is identical to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Despite filing a response, the Respondent has offered no basis on which it could be said to have a right or legitimate interest in the disputed domain name.

There is no evidence that the Respondent is itself commonly known by a name corresponding to the disputed domain name, and it is well-established that use of a domain name to provide links to a complainant’s commercial competitors is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use (see e.g., F. Hoffmann-La Roche AG v. Web Marketing Limited., WIPO Case No. D2006-0005, Robert Bosch GmbH v. Asia Ventures, Inc., WIPO Case No. D2005-0946 and F. Hoffmann-La Roche AG v. Andrey Radashkevich / Domain Admin, PrivacyProtect.org, WIPO Case No. D2008-0149).

The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Respondent is no stranger to UDRP proceedings. To date, the Respondent has been named in approximately 100 actions before WIPO and the National Arbitration Forum. In most of these cases transfers have been ordered, with multiple findings that the Respondent acted in bad faith in registering and using domain names that were identical or confusingly similar to third-party trademarks (see inter aliaAzar International Inc. v. Texas International Property Associates, NAF Case No. FA0712001122600; Brownells, Inc. v. Texas International Property Associates, WIPO Case No. D2007-1211; ChoicePoint Asset Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0395; Chicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144; and Usborne Publishing Limited v. Texas International Property Associates – NA NA, WIPO Case No. D2007-1913).

It is obvious from these cases and others that the Respondent has engaged in an extensive and well-documented pattern of cybersquatting behaviour, registering third-party trademarks and variants of them as domain names in order to prevent their owners from reflecting the marks in corresponding domain names.

The Respondent has advanced no case as to why the Panel should interpret its behaviour differently in this case. The Panel is satisfied that the Respondent registered and used the disputed domain name in bad faith under para. 4(b)(ii) of the Policy.

It is, moreover, clear that by using the disputed domain name to host sponsored links to commercial entities including the Complainant’s competitors, the Respondent has attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation or endorsement of the linked site. Such conduct is further evidence of the registration and use of the disputed domain name in bad faith under Para. 4(b)(iii) of the Policy (see inter aliaChicago Pneumatic Tool Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0144 and ChoicePoint Asset Company LLC v. Texas International Property Associates – NA NA, WIPO Case No. D2008-0395).

The Panel concludes that the Respondent registered and is using the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <almadenvalleyathleticclub.com> be transferred to the Complainant.

Angela Fox
Sole Panelist

Dated: June 11, 2008