DECISION

TM Acquisition Corp. v. DomainNames a/k/a Domain Names

Claim Number:  FA0310000205120

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, Esq., 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is DomainNames a/k/a Domain Names (“Respondent”), Miami, FL 33182.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <centuri21.com>, registered with Enom, 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 October 24, 2003; the Forum received a hard copy of the Complaint on October 27, 2003.

On October 28, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain name <centuri21.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 November 3, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 24, 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@centuri21.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 November 26, 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 <centuri21.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.

2. Respondent does not have any rights or legitimate interests in the <centuri21.com> domain name.

3. Respondent registered and used the <centuri21.com> domain name in bad faith.

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

FINDINGS

Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for its CENTURY 21 marks including Reg. No. 1,063,488 (registered on April 12, 1977), Reg. No. 1,085,039 (registered on February 7, 1978), Reg. No, 1,304,095 (registered on November 6, 1984), Reg. No. 1,429,531 (registered on February 17, 1987) and Reg. No. 2,178,970 (registered on August 4, 1998).

Complainant licenses its CENTURY 21 marks to Century 21 Real Estate Corporation (“Century 21”).  Century 21 is a franchisor of a system of businesses for the promotion and assistance of independently owned and operated real estate brokerage offices.  Century 21 has used the CENTURY 21 marks in the United States continuously in connection with the offering of real estate brokerage services since April 16, 1972.  Century 21 also operates its principal website at <century21.com>.

Century 21 sub-licenses the CENTURY 21 marks to its franchisees, allowing them to use the CENTURY 21 marks in their real estate brokerage offices throughout the United States and at least 26 other countries.  To date, there are approximately 4,100 franchised offices in the United States and approximately 2,500 franchised offices in other countries. 

On June 11, 2002, Respondent registered the <centuri21.com> domain name.  At that time, the domain name resolved to Respondent’s own webpage at which real estate services were offered.  At some point thereafter, the domain name redirected to another website located at <preconstruction.com>, which offers real estate services. 

Respondent is not a franchisee or licensee of the Century 21 System, nor has it ever been.  As a result, Complainant has never authorized Respondent to use its CENTURY 21 marks in any manner.

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 its CENTURY 21 marks through registration of the marks with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s domain name is merely a misspelled version of Complainant’s CENTURY 21 marks with the addition of the top-level domain “.com”.  The addition of the top-level domain “.com” is insignificant in the Panel’s analysis of confusing similarity under the Policy since every domain requires a top-level domain at the time of registration.  Furthermore, Respondent simply replaced the “y” in Complainant’s marks with an “i” in the <centuri21.com> domain name, which does not sufficiently distinguish Respondent’s domain name from Complainant’s mark.  The confusing similarity between the domain name and Complainant’s mark is accentuated by the fact that Respondent’s domain name resolves to a website that offers real estate services similar to those offered by Complainant.  Accordingly, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s marks pursuant to Policy ¶ 4(a)(i).  See Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference"); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark). 

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

Rights or Legitimate Interests

Respondent failed to submit a Response to the Panel in this proceeding.  Thus, Respondent has not rebutted Complainant’s allegations that it lacks rights and legitimate interests in the <centuri21.com> domain name.  As there is no evidence before the Panel suggesting otherwise, the Panel accepts as true all assertions set forth in the Complaint, and finds that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Initially, Respondent was using Complainant’s CENTURY 21 marks to redirect Internet users who misspell Complainant’s marks when searching for Complainant’s website to Respondent’s website that offered real estate services in direct competition with Complainant.  Currently, Respondent is diverting Internet users who incorrectly spell Complainant’s marks to the <preconstruction.com> website, which also offers services that compete directly with Complainant’s real estate services.  As the use of another’s trademark to attract Internet users, who misspell the mark, to a competing website is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use of a domain name, the Panel concludes that Respondent does not have rights or legitimate interests in the domain name under Policy ¶ ¶ 4(c)(i) or (iii).  See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Respondent is not now, nor has it ever been, a licensee of Century 21, nor has it ever had any affiliation with Complainant or any of its related companies.  Likewise, Respondent has not been authorized to use the CENTURY 21 marks for any purpose.  Furthermore, there have been no circumstances presented to the Panel indicating that Respondent is commonly known by the <centuri21.com> domain name.  Thus, the Panel finds that Respondent is not commonly known by the domain name pursuant to Policy ¶ 4(c)(ii).  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).     

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

Registration and Use in Bad Faith

Respondent is redirecting Internet users who misspell Complainant’s marks to a website that offers real estate services in direct competition with Complainant.  Clearly, Respondent is using Complainant’s marks in its domain name to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of its website and the services offered there.  Thus, the Panel finds that Respondent registered and used the <centuri21.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also  TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).

Furthermore, Respondent engaged in typosquatting when it registered the misspelled version of Complainant’s marks and used it to redirect Internet users, who were searching for Complainant’s website but inadvertently misspelled Complainant’s marks, to another website offering services that compete with Complainant.  The practice of typosquatting innately evidences bad faith.  Thus, the Panel concludes that Respondent’s registration and use of a typosquatted version of Complainant’s marks is evidence of bad faith pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of  Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting is the intentional misspelling of words with intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith”); see also Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (“The absence of a dot between the “www” and “canadiantire.com” in the <wwwcanadiantire.com> domain name evidences bad faith registration and use under the Policy).

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

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 <centuri21.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  December 9, 2003

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