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Generic Top Level Domain Name (gTLD) Decisions |
TM Acquisition Corp. v. Michael Harrison
Claim Number: FA0408000317590
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way,
Parsippany, NJ 07054. Respondent is Michael Harrison (“Respondent”), 14049 S. Timber Ridge Dr.,
Draper, UT 84020.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <centurytwentyonerealestate.com>,
registered with Go Daddy Software, Inc.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on August 24, 2004; the
Forum received a hard copy of the
Complaint on August 25, 2004.
On
August 24, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <centurytwentyonerealestate.com>
is registered with Go Daddy Software, Inc. and that Respondent is the current
registrant of the name. Go Daddy Software, Inc. has
verified that Respondent is
bound by the Go Daddy Software, 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
August 25, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
September 14, 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@centurytwentyonerealestate.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
September 22, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed
Judge Harold Kalina
(Ret.) 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <centurytwentyonerealestate.com> domain name is confusingly
similar to Complainant’s CENTURY 21 mark.
2. Respondent does not have any rights or
legitimate interests in the <centurytwentyonerealestate.com>
domain name.
3. Respondent registered and used the <centurytwentyonerealestate.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant and
Century 21 Real Estate Corporation (“Century 21”) are subsidiaries of Cendant
Corporation. Century 21 is a franchisor
of a system of business for the promotion and assistance of independently owned
and operated real estate
brokerage offices.
Complainant is the owner of numerous CENTURY 21 marks registered with
the USPTO and licenses the marks to Century 21. In turn, Century 21 sub-licenses the CENTURY 21 marks to
franchisees throughout the United States and in many foreign countries.
Among
Complainant’s relied upon registrations for the CENTURY 21 mark are
registration numbers 1,063,488 (issued Apr. 12, 1977 in
connection with “real
estate brokerage services), 1,085,039 (issued Feb. 7, 1978 in connection with
“rendering technical assistance
to others in the establishment and/or operation
of real estate brokerage businesses”), and 1,304,095 (issued Nov. 6, 1984 in
connection
with “mortgage brokerage services and assisting lending institutions
in the processing of loans”).
Pursuant to its
licenses from Complainant, Century 21 has used the marks continuously in the
U.S. since April 16, 1972. Century 21
also operates its principal website at the domain name <century21.com>.
Respondent
registered the domain name <centurytwentyonerealestate.com>
on March 21, 2004. The disputed domain
name resolves to a website located at the <servicemagic.com> domain
name. The resolved website contains
substantial information relating directly to the real estate market, including
content that states,
“Service Magic Realty Services” and “Get Connected to a
Prescreened and Customer-Rated Real Estate Agent Today!” The resolved website also contains links to
“home improvement contractors,” “real estate agents,” and “banks and
lenders.”
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.
A complainant
establishes rights in a mark under paragraph 4(a)(i) of the Policy by
registering a mark with an appropriate governmental
authority. In the instant case, Complainant and Century
21 are subsidiaries of Cendent Corporation and Complainant has provided
printouts of
the registration information for the CENTURY 21 marks, registered
with the United States Patent and Trademark Office. Therefore, Complainant has established rights in the CENTURY 21
marks pursuant to paragraph 4(a)(i) of the Policy. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
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); see also Am.
Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful
trademark registration with the United States Patent and Trademark Office
creates a presumption of rights in a mark).
In determining
the similarity between a mark and a disputed domain name pursuant to paragraph
4(a)(i) of the Policy, panels disregard
top-level domains for purposes of the
analysis. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000)
(finding that the top level of the domain name such as “.net” or “.com” does
not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar); see
also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22,
2000) (finding that the addition of a top-level domain is without legal
significance).
It has been
established that if a domain name incorporates a term that is phonetically
similar to a complainant’s mark, a panel may
find that the domain name is
confusingly similar to the mark. In the
instant case, the domain name <centurytwentyonerealestate.com>
contains the terms “century twenty one,” which is phonetically identical to
Complainant’s CENTURY 21 mark. See Mattel, Inc. v. Organization, FA
97653 (Nat. Arb. Forum July 30, 2001) (finding the domain name
<magiceightball.com> confusingly similar to the MAGIC 8
BALL mark because
the domain name was “phonetically indistinguishable from Complainant’s mark”); see also Software ONE, Inc. v. Castonguay,
FA 103811 (Nat. Arb. Forum Feb. 28, 2002) (finding the domain name
<software1.net> confusingly similar to Complainant’s SOFTWARE
ONE mark
because the “domain name is phonetically the same as Complainant’s mark”).
Not only does
the disputed domain name incorporate terms phonetically identical to
Complainant’s mark, but the domain name also includes
the additional terms “real
estate,” which describe the commercial market in which the CENTURY 21 marks are
used to identify the source
of various services. It is well established that merely appending terms, which have an
obvious relationship to a complainant’s business, to another’s mark
in a domain
name fails to alleviate the confusing similarity that arises between a domain
name and a mark pursuant to paragraph 4(a)(i)
of the Policy. See
Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he
fact that a domain name incorporates a Complainant’s registered mark is
sufficient to establish
identical or confusing similarity for purposes of the
Policy despite the addition of other words to such marks.”); see also Space
Imaging LLC v. Brownell, AF-0298 (eResolution
Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name
combines Complainant’s mark with
a generic term that has an obvious
relationship to Complainant’s business); see
also Treeforms, Inc. v. Cayne
Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that
confusion would result when Internet users, intending to access Complainant’s
website, think that an affiliation of some sort exists between Complainant and
Respondent, when in fact, no such relationship would
exist).
In a
similar case involving Complainant, a panel found that the domain name <coldwellbankerrealestate.com> was
confusingly similar to the COLDWELL BANKER mark because the domain name
incorporated Complainant’s
mark in its entirety and merely added the terms
“real estate,” which described Complainant’s business. TM Acquisition Corp. v. Lam,
FA 280499 (Nat. Arb. Forum July 9, 2004).
The Panel sees little difference between the latter case and the one in
which it confronts today. Therefore,
the disputed domain name is confusingly similar to Complainant’s mark pursuant
to paragraph 4(a)(i) of the Policy.
Complainant has
established Policy ¶ 4(a)(i).
In the absence
of a response, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See 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); see also Allergan
Inc. v. MedBotox Inc.,
FA 170639 (Nat. Arb. Forum Sept. 9, 2003) (“Respondent has not challenged the allegations in the Complaint.
Under these circumstances it is appropriate for the Panel to accept
all
reasonable allegations and inferences in the Complaint as true.”).
The failure to
respond to the Complaint may also function as an implicit admission that
Respondent lacks rights and legitimate interests
in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names); see
also See Bloomberg L.P. v. GAF, FA 190614 (Nat. Arb. Forum Oct. 20, 2003)
(finding that since Respondent did not come forward to explain what legitimate
use it
may have had in the domain names, the panel could “presume that Respondent lacks rights and legitimate interests in the domain
names at issue”).
Using a domain name, which is
confusingly similar to a third-party mark, for the purpose of hosting content
that directly relates
to goods or services offered by the third party under its
mark has been consistently found not to be a bona fide offering of goods or services under paragraph 4(c)(i) of
the Policy, nor a legitimate noncommercial or fair use under paragraph
4(c)(iii)
of the Policy. In the instant case, Respondent is using
a domain name that is confusingly similar to Complainant’s CENTURY 21 mark to
resolve to
a website that offers nearly identical services as those offered by
Complainant under its mark. Therefore,
Respondent is not using the domain name in connection with a bona fide offering of
goods or services pursuant to paragraph 4(c)(i) of the Policy, nor a legitimate
noncommercial or fair use pursuant to
paragraph 4(c)(iii) of the Policy. See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of
Complainant’s mark to market products that
compete with Complainant’s goods
does not constitute a bona fide offering of goods and services);
see also Glaxo Group Ltd. v. Glenmore, FA 203164 (Nat. Arb. Forum Dec. 1, 2003)
(finding that respondent was not
using the domain name in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use
of the trademark pursuant to Policy ¶ 4(c)(iii) because respondent used the domain name to take advantage of Complainant's mark by diverting Internet users to a
competing commercial site); see also C
& E Fein GmbH & Co. v. Mierendorff, FA 183729 (Nat. Arb. Forum Oct. 1, 2003) (“Relevant law states that no legitimate or bona fide use or
interest in the domain name can be found when a respondent, who is selling
competing goods and services, is diverting consumers to its own web site by
using a complainant's trademark in its domain name.”).
The WHOIS registration information for
the disputed domain name is the only evidence in the record that would have the
potential to
indicate that Respondent was somehow commonly known by the domain
name <centurytwentyonerealestate.com> pursuant to paragraph 4(c)(ii) of the
Policy. However, the WHOIS registration
fails to indicate as much. Therefore,
the Panel finds that Respondent is not commonly known by the disputed domain
name. See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(finding that the WHOIS information, and its failure to imply that Respondent
is commonly
known by the disputed domain name, is a factor in determining that
Policy ¶ 4(c)(ii) does not apply); 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").
Complainant
has established Policy ¶ 4(a)(ii).
Paragraph
4(b)(iii) of the Policy is violated if a domain name registrant registers a
domain name primarily for the purpose of disrupting
the business of a
competitor. As described above,
Complainant and Respondent both appear to operate in the real estate market and
both offer agency-like services
to facilitate real estate transactions. Therefore, Complainant and Respondent are
competitors. In the absence of a
response, the fact that Respondent registered a domain name that is confusingly
similar to a competitor’s mark
is sufficient to establish that Respondent’s
primary purpose in registering the domain name was to lure potential customers away
from Complainant, and by logical extension, to disrupt the business of
Complainant. Therefore, Respondent is
in violation of paragraph 4(b)(iii) of the Policy. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) (finding Respondent acted in bad faith by attracting
Internet users to a website that
competes with Complainant’s business); see also Puckett v. Miller, D2000-0297
(WIPO June 12, 2000) (finding that Respondent has diverted business from
Complainant to a competitor’s website in violation
of Policy 4(b)(iii))
see also Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith,
pursuant to Policy 4(b)(iii), because it is operating on behalf of
a competitor
of Complainant.”); see also Disney
Enters., Inc. v. Noel,
FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website.
It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's
business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) & (iv).”).
Paragraph
4(b)(iv) of the Policy is violated if a domain name registrant has
intentionally attempted to attract Internet users to
its website for commercial
gain by creating a likelihood of confusion with a complainant’s mark. Having registered a domain name that is
confusingly similar to Complainant’s mark, and having provided nearly identical
services at
the resolved website as those offered by Complainant under its
mark, it is apparent that Respondent has intentionally attempted to
attract
Internet users to its website by creating a likelihood of confusion with Complainant’s
CENTURY 21 mark, presumably for commercial
gain. Therefore, Respondent is in violation of paragraph 4(b)(iv) of
the Policy. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug.
29, 2000) (finding bad faith where the domain name in question is obviously
connected with Complainant’s
well-known marks, thus creating a likelihood of
confusion strictly for commercial gain); see
also 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 services as Complainant via his website);
see also Scholastic Inc. v. Applied Software
Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue
to
resolve to a website offering similar services as Complainant into the same
market); see also Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that
Respondent’s use of the <saflock.com> domain name to offer goods
competing
with Complainant’s illustrates Respondent’s bad faith registration
and use of the domain name pursuant to Policy ¶ 4(b)(iv)); 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).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <centurytwentyonerealestate.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
October 6, 2004
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