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Generic Top Level Domain Name (gTLD) Decisions |
Opus Northwest Construction Corporation
v. Opus Realty and Eldon Chan
Claim Number: FA0408000318960
PARTIES
Complainant
is Opus Northwest Construction
Corporation (“Complainant”), represented by Michael M. Lafeber, of Briggs & Morgan P.A., 2200 IDS Center, 80 South 8th
Street, Minneapolis, MN 55402-2157.
Respondent is Opus Realty and
Eldon Chan (“Respondent”), represented by Robert J. Mitchell, of Lobb & Cliff, LLP, 1650 Spruce Street, Suite 404,
Riverside, CA 92507.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <opusrealty.com>,
registered with Register.com.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 30, 2004; the Forum received
a hard copy of the
Complaint on August 31, 2004.
On
August 31, 2004, Register.com confirmed by e-mail to the Forum that the domain
name <opusrealty.com> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified Respondent
is bound by the Register.com
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
September 7, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of September 27, 2004 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@opusrealty.com by
e-mail.
A
timely Response was received and determined to be complete on or about
September 27, 2004.
An
additional submission was made by the Complainant on October 4, 2004.
On October 5, 2004 , pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Houston Putnam
Lowry, Chartered Arbitrator, as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Opus Realty
registered the domain name <opusrealty.com> on November 6,
2002. Opus Realty is the business name
of one Eldon Chan. Mr. Chan is a
licensed real estate broker in the State of California and lists his address
with the State of California as 1 Embarcadero
Ctr., San Francisco, CA. This
is the same address listed by the registrar for the owner of the disputed <opusrealty.com>
domain name. Mr. Chan and Opus Realty
hold themselves out as real estate agents in San Francisco. The domain name <opusrealty.com>
is currently used as a hyperlink to bring the user to a website for "The
LFI Group." No information is
available concerning The LFI Group. Mr.
Chan has failed to respond to any of Complainant's letters, emails or telephone
calls as set forth hereinafter, and thus Complainant
has been unable to obtain
from Mr. Chan any further information concerning The LFI Group. However, it is plain that the domain name <opusrealty.com>
has been and continues to be held and used by Mr. Chan in connection with his
real estate brokerage business and activities, a use
which directly contravenes
Complainant's federally registered and common law trademark rights. Upon learning of Opus Realty's use of the
federally registered "Opus" mark in conjunction with real estate
services, Complainant
sent a cease and desist letter dated May 22, 2003 which,
among other things, requested Opus Realty to cease its use of the infringing
domain name <opusrealty.com>.
Complainant received no response to the May 22, 2003 cease and desist
letter. Complainant sent a follow-up
cease and desist letter to Opus Realty on July 19, 2004 to the address listed
in the Whois database. The July 19,
2004 letter was returned to sender marked "insufficient
address." Complainant has made
multiple attempts to contact Opus Realty at the telephone number listed in the
Whois database and sent emails
to Mr. Chan, both at the email address provided
at the website at www.opusrealty.com (info@lfigroup.com) and the address listed
in
the Whois database (eldon@1figroup.com), all with no success. This has left Complainant no alternative but
to initiate this UDRP action.
[a.] The
OPUSREALTY.COM domain name is identical or confusingly similar to Complainant's
federally Registered "Opus" mark and
trade name under ICANN Policy ¶
4(a)(i).
[i.] Complainant
has rights in the "Opus" mark
Federal registration of a mark is prima facie
evidence of Complainant's rights in the mark.
Hudson v. Machi & Associates,
NAF Claim No. FA0211000133759
("Complainant has rights to the service mark HOUSELAW by virtue of
registration with the United States Patent
and Trademark Office."); See also Koninklijke KPN N.V. v. Telepathy, WIPO Claim No. D2000-0217.
[ii.] OPUSREALTY.COM
is identical or confusingly similar to Complainant's registered mark
The offending <opusrealty.com>
website incorporates and utilizes Complainant's registered "Opus"
mark in its entirety. Adding a generic
or descriptive word to Complainant's mark does not preclude a finding of
confusing similarity. This is
especially true where the word added relates to Complainant's business. Yahoo! Inc. v. Hangzhou Hi2000 InfoTech
Co. Ltd, NAF Claim No. FA141825 ("[I]t is
also well-established under the Policy that a domain name composed of a
trademark coupled with
a generic term still is confusingly similar to the
trademark"); Experian Information Solutions, Inc. v. BPB
Prumerica Travel WIPO Claim No. D2002-0367
(addition of the generic term 'automotive' does not distinguish
Respondent's domain name from Complainant's
mark because the domain
contains Complainant's EXPERIAN® mark in its entirety); Thrifty, Inc. and Thrifty Rent-a-Car
System, Inc. v. Airportparkinglots.com, NAF Claim No. FA129123 (thriftyairportparking.com confusingly similar with the
THRIFTY marks since those additions have connotations that relate to
Complainant's
business services); Foot
Locker, Inc. v. Blezin Widmaer, NAF Claim No. FA113283
("The addition of generic words is especially confusing where the generic
words bear an obvious relationship
to Complainant's business.").
Opus
Realty has registered a domain name which utilizes or incorporates Complainant's
federally registered mark in its entirety coupled
with the generic or
descriptive term "realty." The generic or descriptive term
"realty" relates directly to goods
and services offered by
Complainant in association with the federally registered "Opus"
mark. Accordingly, Complainant has satisfied the
requirements of ICANN Policy ¶ 4(a)(i).
[b.] Respondent has no rights or legitimate
interests in the domain name OPUSREALTY.COM under ICANN Policy ¶ 4(a)(ii).
Complainant need only make a prima
facie showing that Respondent should not be considered to have any
rights or legitimate interest in the domain name at issue. Amazon.com, Inc. v. Amazonpic,
(WIPO Claim No. D2002-0330) (finding that Complainant should not be required to
"prove a negative" where the relevant facts
are wholly within the
knowledge of Respondent). Because it is difficult to prove a negative (i.e., that
Respondent lacks any rights or legitimate interests in the mark), especially
where the rights or interests at issue ordinarily would be peculiarly within
the knowledge of Respondent, Complainant's initial burden
on this element is
light. De Agostini S.p.A. v. Marco Cialone, WIPO Claim No. DTV2002-0005.
While Complainant is not required
to do a trademark search, a trademark search will help Complainant meet its
initial burden of proof. Ronson
Plc v. Unimetal Sanayi ve Tic.A.S,
WIPO
Claim No. D2000-0011
(Complainant found no registrations in any country of the dispute mark in the
name of Respondent.) In the present
case, Complainant has conducted a trademark search in the United States and
found no registrations of Respondent involving
the disputed "Opus"
mark.
Once Complainant makes out a prima facie showing on ¶ 4(a)(ii), the
burden shifts to Respondent to rebut the showing by providing
evidence that it
has rights to or legitimate interests in the domain name. De Agostini S.p.A. v. Marco Cialone, WIPO Claim
No. DTV2002-0005.
[c.] Respondent registered and used the
OPUSREALTY.COM domain name in bad faith under ICANN Policy ¶ 4(a)(iii).
The ICANN Policy sets forth four factors for consideration
in the bad faith analysis. ICANN Policy
¶ 4(b). The factors are not exclusive
and not dispositive. Bellsouth
Intellectual Property Corp. v. Freeworld, (WIPO Claim No. D2000-1807) (even
where none of the ICANN Policy's factors are present, the circumstances can
support a finding
of bad faith). In
this case, Respondent should be considered to have registered and used the
domain name in bad faith for numerous reasons.
[i.] Respondent had constructive knowledge of
Complainant's Mark
Actual or constructive knowledge of a complainant's mark
before domain name registration is evidence of bad faith. RRI Financial, Inc., v. Ray Chen
(WIPO Claim No. D2001-1242).
Pursuant to applicable United States trademark law,
Respondent is presumed to have constructive knowledge of Complainant's
federally
registered mark. Section 22
of the Trademark Act states that "[r]egistration of a mark on the
principal register . . . shall be constructive notice
of the registrant's claim
of ownership thereof."
Accordingly, it is presumed as a matter of law that Respondent was on
notice of Complainant's rights in the "Opus" mark
which was federally
registered in 1983, nineteen years before Respondent registered the offending <opusrealty.com>
domain name.
[ii.] Respondent
Violated Paragraph 2 of the UDRP Policy
Pursuant to paragraph
2 of the UDRP Policy, a registrant affirmatively represents that its requested
domain name does not infringe
upon or violate the rights of any third party. The registrant acknowledges further that it
is responsible for determining whether the requested domain name infringes or
violates
someone else's rights. The UDRP Policies provide:
Your Representations.
By applying to register a domain name, or by asking us to maintain or
renew a domain name registration, you hereby represent and warrant
to us that
(a) the statements that you made in your Registration Agreement are complete
and accurate; (b) to your knowledge, the
registration of the domain name will
not infringe upon or otherwise violate the rights of any third party; (c) you
are not registering
the domain name for an unlawful purpose; and (d) you will
not knowingly use the domain name in violation of any applicable laws or
regulations. It is your responsibility to determine whether your domain name
registration infringes or violates someone else's rights.
UDRP ¶ 2.
Registration of a domain name without determining whether it
violates or infringes upon a third party's rights has repeatedly been
held to
constitute bad faith. Sleep-Tone
Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., NAF Claim No.
FA2002000093636 (Bad faith registration and use found
due to violation of Paragraph 2(b) of the Policy which charges Respondent with
the responsibility
to "determine whether your domain name registration
infringes or violates someone else's rights."); The Sun Chronicle v.
Web Solutions, Inc., NAF Claim No. FA0005000094895 (by failing to check whether the registration would infringe
on the right of a third party as required by paragraph 2(b), Respondent
registered the domain name in bad faith). Even assuming no willful
misrepresentation, "the careless registration of a domain name, with the
clear risk of infringing third
party's trademark rights. . .is. . .an act of
bad faith which falls in ICANN's Policy criteria." Everything for a
Dollar Store Inc. v. Sheri Brown (DeC/AF-0222). In the present case, Respondent's
registration of the disputed domain name which incorporates Complainant's
registered mark in its
entirety supports a finding of bad faith.
[iii.] Respondent's
failure to respond to Complainant's cease and desist requests evidences bad
faith
The Respondent's
failure to respond to cease and desist letters or other communications is a
factor in considering bad faith. CIGNA Corp. v. JIT Consulting, (DeC/AF-174)(Respondent's failure to
respond to Complainant's cease and desist letter coupled with Respondent's
infringement on Complainant's
mark constituted bad faith.); Southern
Exposure v. Southern Exposure, Inc., NAF Claim No. FA0005000094864
(Respondent's failure to respond to Complainant's cease and desist letter was
further evidence of
bad faith.); NFL
Properties, Inc. et al. v. BBC Ab, WIPO Claim No. D2000-0147 ("Respondent's failure to respond
to the inquiries of Complainants supports the inference that the
registration
and the use of the domain name has been in bad faith."). In the present case, Respondent's failure to
respond to Complainant's multiple attempts to contact Respondent and resolve
the ongoing
infringement of Respondent’s "Opus" mark supports a
finding of bad faith.
[iv.] Respondent's
use of the "Opus" mark for commercial gain
Use of a domain name to intentionally attempt to attract,
for commercial gain, Internet users to a website by creating a likelihood
of
confusion with Complainant's mark constitutes bad faith use. ICANN Policy ¶ 4(b)(iv). Actual confusion is not required. For example, where a person uses a domain
name to cause "initial interest confusion" such that Internet users
might abandon
their effort to find Complainant's products, such use is bad
faith use. Tall Oaks Publishing, Inc. v. National Trade Publications, Inc.,
NAF Claim No: FA0003000094346. In the present case it appears from the evidence
that Respondent has been using the domain name
to attract real estate business
to his website. The Opus mark is very
well known in the real estate industry, and Complainant believes it is a famous
mark. Persons searching the Internet
for Complainant under the term "Opus," would be led to Respondent's
website because of the
identity of Respondent's domain name with Complainant's
mark.
It
has been repeatedly recognized that registration of a domain name containing
Complainant's mark plus a generic or descriptive term supports a finding of bad faith under
paragraph ¶ 4(b)(iv). Canon Kabushiki Kaisha v. Price-Less Inkjet
Cartridge Company, WIPO
Claim No. D2000- 0878 ("ink", and "inkjet(s)" added
to "Canon" evidences bad faith); AltaVista Company v. S.M.A., Inc., WIPO Claim No. D2000-0927 ("usa" added to
"altavista" supports finding of bad faith); ESPN, Inc. v Players
Sportsbook & Casino, NAF Claim No. FA0008000095402
("sportzone" added to "ESPN" evidences bad faith.).
In
the present case, Respondent intentionally registered a domain name
incorporating Complainant's federally registered mark in its
entirety in
conjunction with the very types of goods and services Complainant's well-known
mark is associated with. This was
clearly an attempt to attract Internet users for commercial gain by creating a
likelihood of confusion with Complainant's
mark and constitutes bad faith.
B.
Respondent
This Response specifically responds to
the statements and allegations contained in the Complaint and includes any and
all bases for
Respondent to retain registration and use of the disputed domain
name. ICANN Rule 5(b)(i).
[a.] “Opusrealty.com” is neither identical nor
confusingly similar to Complainant’s mark.
Respondent, The Opus Realty Group
(“Respondent”), registered the domain name of <opusrealty.com> on
November 6, 2002. The Opus Realty Group is the fictitious business name The LFI
Group, Inc. (“The LFI Group”). The LFI
Group is a licensed real estate broker in the State of California, and
Respondent is an officer of The LFI Group.
The LFI Group has been a licensed broker in California and doing
business under the name of The Opus Realty Group for over ten (10)
years. While Complainant asserts rights to the
trademark, service mark and trade name of “Opus,” Respondent asserts that the
domain name
<opusrealty.com> is neither identical nor confusingly
similar to the name “Opus.” Complainant
does not have a website under the name Opus Realty. The Opus Realty Group is distinct to Respondent as it specifies
in its title that it is in the real estate business.
[i.] Complainant’s Mark is Particularly Weak
and it is therefore Less Likely to be Confused with Respondent’s Business.
A factor to be considered in determining
if there is a likelihood of confusion is the strength of the trademark. The federal
circuit
has noted the importance of fame as a factor in likelihood of confusion
tests, noting that famous marks are accorded more protection
and “demand great
vigilance on the part of a competitor who is approaching a famous mark,
for...the lure of undercutting or discounting
the fame of a mark is especially
seductive.” Recot Inc. v. M.D. Becton [2000] USCAFED 83; 214 F.3d 1322 (Fed. Cir.
2000).
Complainant’s mark is particularly weak
with respect to the business use of Respondent. Respondent has used the name
“The Opus Realty
Group” in connection with residential real estate sales in the
San Francisco area for over ten (10) years.
Respondent’s use is local to the San Francisco area, and, in fact,
Respondent does not do any business outside of the State of California.
In
doing business under the name “Opus Realty,” Respondent never even knew
Complainant’s company existed, until he received this
complaint. Between 1994
and the filing of this complaint, Complainant has never taken action to put
Respondent on notice of its alleged
claims against Respondent.
[ii.] Complainant’s Mark is Particularly Weak
When Translated from Its Latin Root.
A foreign language word mark is
ordinarily considered to have the effect of its English equivalent for purposes
of determining whether
confusion is likely. Ex parte Odel-Werke Wien
G.m.b.H., 111 U.S.P.Q. 286 (Comm’r 1956). Further, common words that are
frequently used for different products or services, particularly
those with
descriptive or laudatory connotations, are usually found to be weak marks. Lang
v. Retirement Living Pub. Co., [1991] USCA2 1202; 949 F.2d 576 (2d Cir. 1991).
Here, Complainant has registered the term
“Opus,” with respect to a host of business activities. However, “opus,” when
translated
from the latin word “opus” simply means “work; labor; [or] the
product of work or labor.” Black’s Law Dictionary, 3rd Edition, page
1296. Therefore, Respondent’s business name is translated to “Realty Work.” The
word work, especially in the context
of a service business such as a real
estate brokerage is so common as to make Complainant’s mark particularly weak.
This situation
is no different than if Complainant had a trademark of the term
“service.” These terms are so vague and related to the service business
as to
further the weakness of Complainant’s mark.
[iii.] In the Geographical Region Respondent is
Operating, Respondent’s Services Do Not Compete with Complainant.
Where products are noncompeting, the
degree of trademark similarity necessary to establish likelihood of confusion
is increased. David Sherman Corp. v. Heublein, Inc., 340 F.2d 377 (3d.
Cir. 2000). A holder of a mark needs to show the products are sufficiently
related so that the public is likely
to assume that he is the source or that
there is a common origin or sponsorship. HMH Publishing Co. v. Brincat,
[1974] USCA9 533; 504 F.2d 713 (9th Cir. 1974). Complainant must show the public is
likely to be confused. Respondent asserts Complainant cannot carry this burden.
At the time Respondent began using the
“Opus” name, Complainant was not qualified to sell the services Respondent
sells, nor did Respondent
do business in an area where it could compete with
Plaintiff. In California, the Real Estate Brokerage business is highly
regulated
by the State government. To become a broker, a party must take a series
of exams, and complete various employment requirements. Only
after completing
such requirements can a party be authorized to act as a broker in purchasing
and selling real property. Respondent
is licensed as a California real estate
broker, and only performs realty work in California. Respondent has been
licensed in this
capacity under the name The Opus Realty Group, since 1994.
Complainant did not become licensed to sell real estate until 1998. Between
1994 and the filing of this complaint (mid-2004), Complainant did not contact
Respondent to indicate there was any trademark infringement
occurring.
Complainant allowed ten (10) years to pass after they began doing
business in Respondent’s area before they contacted Respondent regarding their
alleged claims. Essentially,
if Complainant engages in the same business as
Respondent, Complainant has now “moved-in” on Respondent’s local business. If
this
is allowed, Complainant will essentially be using the goodwill of
Respondent’s business to help Complainant’s relatively new venture
of selling
real estate in California.
[b.] Respondent Has Established Rights in the
name “The Opus Realty Group.”
Respondent has used the name The Opus
Realty Group in the San Francisco area in performing residential real estate
brokerage services
for over ten (10) years. During this time, Respondent has
maintained a fictitious business name filing with the County Recorder’s
Office,
putting the world on notice of the person doing business as “The Opus Realty
Group.” Further, the California Department of
Real Estate website also provides
notice that Respondent is doing business under this name. In doing so,
Respondent has built up
substantial good will in the name “The Opus Realty
Group” in the market of residential real estate sales in this locale.
Not only does Respondent have substantial
rights in the name “The Opus Realty Group” in the San Francisco area,
Complainant is potentially
seeking a bad faith use of Respondent’s business
name. In this situation, if Respondent’s website were to be cancelled,
Complainant
may attempt to register the website. Because this site has been
used by The Opus Realty Group, it would seem any subsequent registration
and/or
use made by Complainant would divert the good will from Respondent.
[c.] Respondent Neither Registered nor Used
the “Opus” name in Bad Faith.
A finding of bad faith may be made when
it is found that Respondent has attempted to divert business from Complainant’s
website. Respondent
has made no such attempt, as Respondent had no knowledge of
Complainant’s company or trademark prior to the filing of this Complaint.
Further, with respect to the market in which Respondent operates, Respondent
had long used the name The Opus Realty Group prior to
Complainant opening an
office in this locale.
Respondent had no knowledge of
Complainant’s company until it received this complaint. Although Complainant
alleges to have sent cease
and desist letters, Respondent did not receive such
letters until this Complaint was filed. Prior to receiving this Complaint,
Respondent
was neither aware of the existence of Complainant’s company, nor was
it aware of Complainant’s trademark. Respondent simply understood
he was
performing “Realty Work,” in accord with the translated trade name of “Opus
Realty.”
Respondent cannot divert business from
Complainant. As is described above, in the highly regulated field of real
estate sales, Complainant
was not qualified to sell real estate inside
the State California. However, Respondent is not authorized to sell real estate
outside the state of California. In fact, a review of Complainant’s
website <opuscorp.com> shows Complainant
primarily deals in commercial real property. The Opus Realty Group only deals
in residential properties. Therefore,
the two entities are not competing in
this market.
C.
Additional Submissions
With little or no support, Respondent contends that
Complainant's "Opus" mark is merely descriptive or weak and therefore
no likelihood of confusion exists.
First, Respondent ignores that Complainant has obtained two separate
registrations from the United States Patent and Trademark office
for the
"Opus" mark. Such
registrations create a presumption the mark is inherently distinctive and are
given great deference in these proceedings.
In an analogous case, the respondent alleged the complainant's federally
registered "AIM" mark was descriptive and therefore
weak. The panel explained:
[T]he USPTO is charged, in the first instance during
examination of a federal trademark application, with ensuring that the mark,
if
registration is sought on the Principal Register,. . .is not "merely
descriptive or deceptively misdescriptive if it describes
an ingredient,
quality, characteristic, function, feature, purpose or use of the specified
goods or services." The majority
of the Panel notes here that the PTO,
through normal exercise of its responsibility and expertise, issued two
separate trademark
registrations to Complainant for its mark "AIM.”
The PTO, as an official governmental body
having specialized expertise, is accorded a very strong presumption that, in
furtherance
of its official duties -- here being issuing a trademark
registration, it correctly carried out its duties, i.e., it properly (a)
examined both underlying "AIM" trademark applications and (b) reached
a conclusion of registrability for each. The Respondent
has simply not provided
any proof that calls into question the validity of either of the
"AIM" registrations, let alone
enough to overturn the presumption
accorded to the PTO. As such, the Panel strongly defers to the determination by
the PTO that Complainant's
"AIM" marks are sufficiently distinctive.
American Online, Inc. v. John Deep, NAF Claim No. FA0103000096795. As in American
Online, the USPTO has issued two separate trademark registrations to
Complainant for the "Opus" marks. (Reg. No. 1,262,651, issued
Dec. 7,
1983 and Reg. No. 2,520,075, issued 2001). The federal registrations create a
presumption of distinctiveness which has not been overcome by Respondent.
Respondent's descriptive argument is based solely on the
"doctrine of foreign equivalents."
According to Respondent, "opus" is a Latin term which means
"work" or "labor" when translated into English. The purpose of the "foreign
equivalents" doctrine is to assess "whether, to those American buyers
familiar with the
foreign language, the word would have a descriptive
connotation." McCarthy on Trademarks
§ 11:34. Contrary to Respondent's
argument, the term "opus" is not a foreign word, but has become a
recognized part of the English
language with its own English meaning and
English definition. The Merriam Webster
Dictionary defines "opus" as a noun meaning "work; esp: a musical composition." The noun "work," as in a musical
or other composition, is in no way descriptive of real estate related services.[1]
In addition to being inherently
distinctive, the mark has developed substantial goodwill and secondary meaning
as a result of Complainant
prominently and continually using the mark in
association with all of its goods and services throughout the United States
since as
early as 1975. A cursory
review of Complainant's website (http://www.opus-group.com) confirms it provides a full range of integrated services across the
United States, including, without limitation, real estate development,
architecture
and engineering, property management, financing, leasing and
sales. Complainant is specifically involved in residential and multifamily
projects, including projects in California. Complainant divides its U.S.
business into five different regions, including Opus West,
which has no less
than five California offices located in San Francisco, Sacramento, Los Angeles,
Irvine and San Diego. Accordingly,
Respondent's attempts to classify the "Opus" mark as weak lack merit.
[a.] OPUSREALTY.COM is identical
or confusingly similar to Complainant's registered mark
Respondent does
not challenge that its real estate services are the very type of goods and
services covered by Complainant's registered
"Opus" trademarks. Respondent also does not dispute that
Complainant offers real estate related services in California, including the
San Francisco area. Rather, Respondent
erroneously contends it somehow has priority to use the "Opus" mark
in the San Francisco area because
it allegedly began using the "Opus"
mark in 1994, stating that “essentially, if Complainant engages in the same
business
as Respondent, Complainant has now "moved-in" on
Respondent's local business. If this is
allowed, Complainant will essentially be using the goodwill of Respondent's
business to help Complainant's relatively new
venture of selling real estate in
California." First, Complainant's
use of the "Opus" mark in California is not "relatively
new." Complainant was actively
using the "Opus" mark in California as early as 1985 when Opus West
Construction Corp. was qualified
to do business in the state. Even if Complainant had not actually used
the mark in California before Respondent, Complainant's federal registration
with the USPTO
eleven (11) years before
Respondent's first use established nationwide priority.[2]
Rather than disputing that the domain name is
confusingly similar to Complainant's registered mark, Respondent is actually
making
a latches or waiver type argument.
“Between 1994 and the filing of this complaint (mid-2004), Complainant
did not contact Respondent to indicate there was any trademark
infringement
occurring. Complainant allowed ten (10)
years to pass after they began doing business in Respondent’s area before
they contacted Respondent regarding their alleged claims." First, latches is not a defense to
injunctive relief such as the cancellation of an offending domain name. Lyons Partnership, L.P. v. Morris
Costumes, Inc., [2001] USCA4 56; 243 F.3d
789 (4th Cir. 2001) ("[L]aches does not bar a claim for prospective
injunctive relief."); Sara Lee Corp.
v. Kayser Roth Corp., [1996] USCA4 1040; 81 F.3d. 455 (4th Cir. 1996) (doctrine of latches
"sparingly applied" where plaintiff seeks only equitable
relief). Moreover, the action
complained of in this proceeding is Respondent's registration of the offending
domain name in November 2002,
which occurred just six (6) months before
Complainant sent its first cease and desist letter.
Respondent's
argument that it has established rights in a confined, localized use of
Complainant's mark, places an impossible burden
on Complainant and other
holders of federally registered marks.
By Respondent's own admission, it has used "Opus Realty" only
in the San Francisco area, and has registered the mark as
an assumed name with
the county only. The name does not appear
in the State of California Secretary of State database, or in any other readily
accessible database. There are
thousands of counties in the U.S.
Respondent would require Complainant to physically check all of those
county databases continually for infringements such as Respondent's,
when
Respondent had the option and duty to simply check the USPTO records for
possible infringements. Respondent then
contends that because it was able to "fly under the radar" for a
period of years by virtue of its confined
local use and local registration, it
has the right to register and use a conflicting domain name on the Internet throughout the U.S.,
indeed throughout the world. The burden
this would place on federal trademark registrants is simply untenable and unwarranted.
The offending <opusrealty.com>
domain name incorporates and utilizes Complainant's registered "Opus"
mark in its entirety. The addition of
the generic or descriptive term "realty" to the mark does not
eliminate the potential for confusion.
This is especially true considering the word "realty" is
directly related to Complainant's core goods services. Accordingly,
the
offending domain name is confusingly similar and should be cancelled.
[b.] Respondent has no rights or legitimate
interests in the domain name OPUSREALTY.COM
Respondent claims it has a
legitimate interest in the offending domain name as a result of alleged use of
the "Opus Realty"
name in the San Francisco, California area since
1994. The infringing use of a mark
subsequent to its federal registration without any authorization from the mark
owner does not establish
any rights or legitimate interest in the mark. An infringer's inability to establish a
legitimate interest based on activities first occurring subsequent to
registration was explained
by the American Online panel:
Based on its federal
trademark registrations, Complainant has acquired exclusive rights to use its
"AIM" marks. Furthermore,
by virtue of the registrations of these
marks, as discussed above, the USPTO has implicitly recognized that each of
these marks has
acquired appropriate secondary meaning in the marketplace.
The majority of the Panel
believes that Respondent has yet to provide any basis that would legitimize any
claim it has to any of the
contested "AIM" based domain names. In
fact, it is extremely unlikely that the Respondent can even make such a claim.
The simple
reason is that the contested domain name includes Complainant's "AIM"
marks under which Complainant provides
it services, and has been doing so for
several years. Complainant has never authorized Respondent to utilize its
registered "AIM"
marks, nor does Complainant have any relationship or
association whatsoever with Respondent. Hence, any use to which Respondent were
to put the "AIM" marks, in connection with the goods or services set
forth in Complainant's registrations or those related
thereto -- as is the case
here, would directly violate the exclusive trademark rights now residing in
Complainant, both in terms
of its federal rights and those at common law.
American
Online, Inc. v. John Deep, NAF Claim No. FA0103000096795
[c.] Respondent registered and used the
OPUSREALTY.COM domain name in bad faith under ICANN Policy ¶ 4(a)(iii).
The Response alleges that "Respondent had no knowledge
of Complainant's company until it received this complaint." Respondent's
Response, p. 5. This assertion is
unsupported by any Affidavit or other evidentiary support from Respondent. Moreover, Respondent has failed to provide
any explanation why cease and desist letters sent to Respondent's
"Whois" U.S.
mail and email addresses, as well as the e-mail address
listed on the offending website, were not received. Respondent has also completely ignored that it is presumed to
have constructive knowledge of Complainant's mark as a result of the
federal
registration. RRI Financial, Inc., v. Ray Chen, WIPO Claim No.
D2001-1242 (actual or constructive knowledge of a complainant's mark before
domain name registration is evidence
of bad faith.)
Lastly, Respondent does not dispute that it failed to meet
its obligations pursuant to paragraph
2 of the UDRP Policy. Pursuant to
paragraph 2, a registrant affirmatively represents that its requested domain
name does not infringe upon or violate the
rights of any third party. The registrant acknowledges further that it
is responsible for determining whether the requested domain name infringes or
violates
someone else's rights.
Respondent's silence on the issue confirms that Respondent failed to
conduct any search prior to registering the offending domain
name. Sleep-Tone Entertainment Corp. v.
Sound Choice Disc Jockeys, Inc., NAF Claim No. FA2002000093636 (Bad faith registration and use found due to violation of
Paragraph 2(b) of the Policy which charges Respondent with the responsibility
to "determine whether your domain name registration infringes or violates
someone else's rights."); The Sun Chronicle v. Web Solutions, Inc.,
NAF Claim No. FA0005000094895 (by failing
to check whether the registration would infringe on the right of a third party
as required by paragraph 2(b), Respondent
registered the domain name in bad
faith.) Even assuming no willful misrepresentation, "the careless
registration of a domain name, with the clear risk of infringing third
party's
trademark rights. . .is. . .an act of bad faith which falls in ICANN's Policy
criteria." Everything for a
Dollar Store Inc. v. Sheri Brown (DeC/AF-0222).
In the present case, Respondent's undisputed registration of the
offending domain name without conducting any search whatsoever, including
a
trademark search which would have revealed Complainant's federally registered
marks, establishes bad faith.
The Panel makes the following
findings:
(1)
the domain
name registered by the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
Respondent has 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.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant
has rights;
(2)
the
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.
Respondent has rights and legitimate
interests in the <opusrealty.com> domain name because Respondent
registered and is using the domain name for a bona fide offering of
goods and services, i.e. residential real estate brokerage services, under
Respondent’s registered trade name. Policy
¶ 4(c)(i). VeriSign Inc. v. VeneSign C.A.,
D2000-0303 (WIPO June 28, 2000) (finding Respondent has rights and legitimate
interests in the domain name since the domain name
reflects Respondent’s
company name); Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March
19, 2002) (finding Respondent’s use of the disputed domain name to make a bona
fide offering of services
bestowed rights and legitimate interests in the
domain name); Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum
June 2, 2003) (finding Respondent’s operation of a bona fide business of online
prop rentals for over
two years was evidence Respondent had rights or
legitimate interests in the disputed domain name). Respondent has used the <opusrealty.com> domain name
since November 6, 2002.
Respondent is commonly known by the <opusrealty.com>
domain name and has conducted business under the Opus Realty registered
trade name since February 2, 1995. Respondent has used the
name Opus Realty
Group for roughly ten years in connection with its residential real estate
brokerage services in the San Francisco
area.
Respondent has rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See Kryton Mktg. Div., Inc. v. Patton Gen.
Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding Respondent
had rights and legitimate interests in the disputed domain name as
it had been
commonly known by the domain name and has been using the name "liquid
siding" in marketing its goods and services
since the 1990s); see also
World Publ’g, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept.
14, 2000) (finding that as Respondent registered the trade name "WORLD
PEN" in July 1996 and had
been conducting business under that name since
that date, it had rights or legitimate interests in the disputed domain name).
This does not mean Respondent will
necessarily prevail over Complainant in a trademark infringement case. It merely means the expeditious Uniform
Dispute Resolution Policy is not available to Complainant to resolve this case.
Within the United States, Respondent has
constructive notice of a trademark registered with the United States Patent and
Trademark
Office. The parties to this
proceeding are both in the same general area of commerce. Respondent knew (or should have known) about
the registration.
DECISION
Having
failed to establish all three elements required under the ICANN Policy, the
Panel concludes that relief shall be DENIED.
Houston Putnam Lowry, Chartered
Arbitrator and Panelist
Dated: October 19, 2004
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