DECISION

TM Acquisition Corp. v. Internet and Mail Order Marketing

Claim Number: FA0307000169053

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib. Respondent is Internet and Mail Order Marketing, Costa Mesa, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <century21homesforsale.com> registered with Dotster.

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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 15, 2003; the Forum received a hard copy of the Complaint on July 16, 2003.

On July 15, 2003, Dotster confirmed by e-mail to the Forum that the domain name <century21homesforsale.com> is registered with Dotster and that Respondent is the current registrant of the name. Dotster has verified that Respondent is bound by the Dotster 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 16, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 5, 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@century21homesforsale.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 7, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. 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 makes the following assertions:

1. Respondent’s <century21homesforsale.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.

2. Respondent does not have any rights or legitimate interests in the <century21homesforsale.com> domain name.

3. Respondent registered and used the <century21homesforsale.com> domain name in bad faith.

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

FINDINGS

Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CENTURY 21 mark, including Reg. No. 1,063,488 (registered on April 12, 1977) related to real estate brokerage services. Complainant also holds trademark registrations in a number of countries outside of the U.S. Complainant operates its principal website at the <century21.com> domain name where Internet users may buy, sell or finance real estate property.

Respondent registered the <century21homesforsale.com> domain name on April 27, 2002. Respondent is using the disputed domain name to provide real estate services that are the same as those services offered by Complainant.

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 that it has rights in the CENTURY 21 mark through registration with the USPTO and continuous use in commerce since April 16, 1972.

Respondent’s <century21homesforsale.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the generic terms “homes,” “for” and “sale” to the end of the mark. The addition of generic terms to Complainant’s famous mark does not significantly distinguish Respondent’s domain name from the mark under Policy ¶ 4(a)(i). The fact that the generic terms Respondent has added to Complainant’s mark are directly related to Complainant’s real estate services exacerbates the confusing similarity between the <century21homesforsale.com> domain name and the CENTURY 21 mark. See Caterpillar Inc. v. Quin, D2000-0314 (WIPO June 12, 2000) (finding that the disputed domain names <caterpillarparts.com> and <caterpillarspares.com> were confusingly similar to the registered trademarks CATERPILLAR and CATERPILLER DESIGN because “the idea suggested by the disputed domain names and the trademarks was that the goods and services offered in association with the domain name are manufactured by or sold by the Complainant or one of the Complainant’s approved distributors. The disputed trademarks contain one distinct component, the word Caterpillar”); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has neglected to favor the Panel with a Response in this proceeding. Thus, the Panel accepts all reasonable allegations and inferences contained in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence).

Furthermore, once Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to demonstrate that it has rights to or legitimate interests in the <century21homesforsale.com> domain name. By neglecting to respond, Respondent has failed to invoke any circumstances that could manifest rights to or legitimate interests in the disputed domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”); 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).

Respondent is using the <century21homesforsale.com> domain name to redirect Internet users to a website that offers the same real estate services as those provided by Complainant under its mark. The use of a domain name confusingly similar to a registered trademark to offer services that compete with the mark holder’s business is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(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 Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website).

Complainant asserts that Respondent has not now, nor has it ever been, a licensee of Complainant, nor has Respondent ever had any affiliation with Complainant. Moreover, Respondent has produced no evidence and there is nothing in the record that indicates Respondent is commonly known by CENTURY 21 HOMES FOR SALE or <century21homesforsale.com>. Therefore, the Panel finds that Respondent has failed to demonstrate any rights to or legitimate interests in the disputed domain name with regard to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also 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").

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Policy ¶ 4(b) lists four circumstances that, if found by the Panel to be present, shall evidence bad faith registration and use of a domain name. However, this list was not meant to be exclusive. Under certain facts, the Panel is permitted to consider the totality of the circumstances when deciding whether a particular domain name has been registered and used in bad faith in accordance with the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).

Complainant has shown that its mark is well-known both in the U.S. and abroad, especially in the real estate service industry. The Panel presumes Respondent had actual or constructive knowledge of Complainant’s rights in its CENTURY 21 mark because of Respondent’s use of the <century21homesforsale.com> domain name to offer the same services as those provided by Complainant. The registration and use of a domain name confusingly similar to a trademark despite actual or constructive knowledge of the mark holder’s rights in its mark is evidence of registration and use in bad faith pursuant to Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith[2002] USCA9 115; , 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, Respondent is using the <century21homesforsale.com> domain name to divert Internet traffic to a website that offers services that compete with Complainant for commercial gain. Respondent’s use demonstrates that it is attempting to attract Internet users to Respondent’s website at the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark, which evidences bad faith registration and use under Policy ¶ 4(b)(iv). See America 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 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).

The Panel finds that Policy ¶ 4(a)(iii) has been established.

DECISION

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

Accordingly, it is Ordered that the <century21homesforsale.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court (Ret.)

Dated:  August 21, 2003

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