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Generic Top Level Domain Name (gTLD) Decisions |
RE/MAX International, Inc. v. Real-Net
Advertising, Inc.
Claim Number: FA0312000215383
PARTIES
Complainant is RE/MAX International, Inc. (“Complainant”)
represented by Gayle L. Strong of Greenberg Traurig LLP,
1200 Seventeenth Street, Suite 2400, Denver, CO 80202. Respondent is Real-Net Advertising, Inc., 1697 Pe’e Rd., #103, Koloa, HI 96766
(“Respondent”) represented by Walter W.
Barnes.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name
at issue is <remax-ni.com>
registered with Network Solutions, 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.
Herman D.
Michels as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on December 3, 2003; the Forum received
a hard copy of the
Complaint on December 3, 2003.
On December 8,
2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain
name <remax-ni.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network Solutions, Inc. has
verified that Respondent is
bound by the Network Solutions, 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 December 8,
2003, a Notification of Complaint and Commencement of Administrative Proceeding
(the “Commencement Notification”),
setting a deadline of December 29, 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@remax-ni.com by e-mail.
A timely
Response was received and determined to be complete on December 29, 2003.
On January 6, 2004, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Herman D. Michels
as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is
the owner of several Federal Trademark Registrations for the servicemark RE/MAX
and U.S. Trademark Registrations for
the servicemark REMAX. Each of the U.S. Trademark Registrations is
valid and subsisting and U.S. Trademark Registrations have achieved
incontestability under
15 U.S.C. § 1065.
The RE/MAX marks are in use in connection with (i) rendering technical
aid and assistance to others in the establishment and operation
of real estate
brokerage agencies (ii) insurance brokerage services (iii) franchise services,
mainly offering technical assistance
in the establishment and/or operation of
real estate brokerage firms, and (iv) computer software, namely a CD Rom that
enables users
to ask for and receive business information relating to
individual real estate agents, accounting and billing software, home listing
presentations that provide information on marketing strategies for property,
among other things, and services related to real estate.
Throughout the
United States, real estate brokerage services are provided through a network of
franchises and affiliated independent
contractors/sale associates who are given
limited authorization to use the RE/MAX trademark in connection with providing
real estate
brokerage services (“the RE/MAX network”). Since at least as early as 1973, those
affiliated with the RE/MAX network have provided real estate brokerage services
throughout
the United States under RE/MAX's distinctive registered trademarks
including RE/MAX and REMAX.
Presently the
RE/MAX network comprises approximately 4,400 individual offices with a
worldwide force of sales agents numbering approximately
78,000. Of those worldwide sales agents,
approximately 58,000 offer real estate brokerage services under the mark RE/MAX
in interstate commerce
in the United States.
Since 1973, the
RE/MAX network has used the RE/MAX trademark in connection with millions of
home sales transactions in the United
States and worldwide resulting in
approximately $1 trillion in sales in connection with the RE/MAX trademark. RE/MAX and the RE/MAX network have invested
approximately $3 billion on worldwide advertisements and promotions for service
offered
under the RE/MAX trademark.
Each RE/MAX agent typically spends an average of $5,000 per year on
promotional and advertising activities publicizing the RE/MAX
trademark. The advertisements are aimed at a vast
majority of the public, including homeowners, home sellers, real estate agents
, brokers, corporations,
potential franchisees and others. The advertisements appear in print media, such
as national and local newspapers, brochures, direct mailings, and office
signage for
each of the RE/MAX 4,400 offices, radio station advertisements and
television commercials. RE/MAX's
advertising is controlled to portray a unified image and theme and to reflect
the high quality of services offered under
the RE/MAX trademark.
Complainant
operates a website at <remax.com> to further its operations. Additionally, Complainant is the registrant
of numerous domain names including, <remax.com>, <remax.net>,
<remax.org>,
<remax.us> and <remaxcommercialbrokerage.com>.
Claimant has
established guidelines of acceptable formats for the use of the RE/MAX
trademarks in domain names by members of the RE/MAX
network. Such members are authorized to use and
register a domain name incorporating the RE/MAX trademark as part of their own
domain name
where the RE/MAX trademark is followed by a hyphen “-” and a
designation for the applicable geographic region.
The regional
RE/MAX network affiliate in Northern Illinois, RE/MAX of Northern Illinois,
Inc., was authorized to use and register
<remax-ni.com>
for use as its domain name, and registered the <remax-ni.com> domain name on April 10, 1996 with the
registrar Network Solutions, Inc.
RE/MAX of Northern Illinois, Inc. employed Respondent to register the <remax-ni.com> domain name and to
design and maintain the website associated with it. The registrant information as of April 1999 and April 2000
identified RE/MAX of Northern Illinois, Inc, at 18810, Route 14, Harvard,
IL as
the registrant. Two of Respondent’s
employees were identified as the technical and billing contacts, given
Respondent’s involvement as a website designer
and host for RE/MAX of Northern
Illinois, Inc. RE/MAX of Northern Illinois, Inc.
was the registrant and owner of record for
the <remax-ni.com> domain name
until its business relationship with Respondent terminated
sometime after 2000. After the
termination of this relationship, Respondent, without authorization from
Complainant as owner of the RE/MAX trademark, transferred
the <remax-ni.com>
domain name from RE/MAX of Northern Illinois, Inc. Specifically, Respondent used its status as
the technical and billing contact of record and as the only one with knowledge
of the
username and password, to initiate a transfer of the <remax-ni.com> domain name to
itself, unbeknownst to and without authorization from Complainant.
Complainant
contends that Respondent's <remax-ni.com>
domain name is confusingly similar to its registered servicemarks and that
Respondent's wrongful use and registration of the <remax-ni.com> domain name has
prevented the current regional RE/MAX network affiliate from its rightful and
authorized use of this domain name.
Complainant further contends that Respondent has used and
currently uses the <remax-ni.com>
domain name to confuse and divert customer traffic away from the Northern
Illinois RE/MAX network affiliate that is authorized to
use the domain name and
that such use by Respondent, infringing on Complainant's mark, is not 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).
Complainant
further contends there is no evidence that Respondent is commonly known by the
disputed <remax-ni.com> domain
name pursuant to Policy ¶ 4(c)(ii) and that Respondent’s infringing use of the
RE/MAX trademark cannot constitute use of the
<remax-ni.com> domain name in connection with a bona fide
offering of goods and services.
Complainant further contends that Respondent's use of the <remax-ni.com> domain name operates to confuse and
divert Internet traffic. Therefore,
Complainant contends that Respondent does not have any rights or legitimate
interests in or to the <remax-ni.com>
domain name and is not authorized by Complainant to use the RE/MAX trademark in
a domain name.
Complainant
further contends that by obtaining ownership of and using a domain name that is
confusingly similar to Complainant's RE/MAX
trademark, Respondent has
demonstrated an opportunistic attempt to trade on Complainant's goodwill and
fame, and created a false
impression of an association with RE/MAX, and that
such behavior evidences bad faith under Policy ¶ 4(b)(iv).
Complainant also
contends that Respondent's use of the RE/MAX trademark is intended to attract
internet users to its site for commercial
gain and creates the erroneous
impression that Respondent is affiliated with RE/MAX, which is not the case.
Finally,
Complainant contends that Respondent's registration and ownership of the <remax-ni.com> domain name was
obtained without authorization from Complainant and that the <remax-ni.com> domain name is
being used in bad faith because Respondent, by now claiming ownership to and
using the <remax-ni.com> domain name, in an attempt to attract,
for commercial gain, Internet users to Respondent's website and to divert such
users to an
unauthorized website by creating a likelihood of confusion with
Complainant's RE/MAX trademark as to the source, sponsorship, affiliation,
or
endorsement of Respondent's website and/or location.
Complainant
requests that the Panel transfer the
domain name registration to it.
B. Respondent
Respondent
acknowledges and does not contest the ownership of the RE/MAX trademark by
Complainant. It contends, however, that
it uses the domain name <remax-ni.com>
to publish advertising paid for by RE/MAX franchise holders and for its
financial gain. Respondent contends
that its use of the domain name is in good faith and believes that its
registration and use is legitimate.
Specifically, Respondent contends that it acts as Webmaster for
approximately 157 RE/MAX brokers and approximately 21 offices. These RE/MAX agents pay it to advertise
their for-sale listings and/or their personal biographies. The website content
at <remax-ni.com> does not
represent itself as the RE/MAX Northern Illinois Region. Respondent contends that its use of the
domain name is appropriate to use to host advertising for its clients who are
RE/MAX franchise
holders.
Respondent contends that in 1996
the RE/MAX Northern Illinois Region requested it to investigate the possibility
of publishing Internet advertising for RE/MAX agents. An important point of the business model that the RE/MAX Northern
Illinois Region requested Respondent to investigate was the website’s
independence from the region - there was to be no financial interest between
the RE/MAX Northern Illinois Region and Respondent for
the site. RE/MAX Northern Illinois
Region did not want to incur any financial obligations as a result of
Respondent’s development of the site.
Nor would the region compel participation in the site among RE/MAX
brokers in the region. Although
complete editorial control over the site content was maintained by the
participating individual RE/MAX brokers, staff at
the RE/MAX Northern Illinois
Region reviewed the content of the site.
The domain name suggested by Respondent and
accepted by the RE/MAX Northern Illinois Region for this purpose was <remax-ni.com>. Respondent purchased the domain name, developed
the site content, hosted the website, and marketed the site to consumers with
no compensation
from the RE/MAX Northern Illinois Region.
Respondent
contends that in the first quarter of 2000 the RE/MAX of Northern Illinois
Region asked Respondent to develop and publish
a website about the region
itself. Respondent offered to combine
the region's content with the advertising it was hosting on <remax-ni.com> but the region
requested a separate domain for their advertising to keep their regional content
and the agent-supported-advertising
business model separate. The domain name
selected by the RE/MAX Northern Illinois region for this second site was
<remaxnorthernillinois.com>.
Respondent
contends that it hosted and developed content for <remaxnorthernillinois.com>
at the request of and received compensation
from the RE/MAX Northern Illinois
Region until the third quarter of 2001 when new ownership at the RE/MAX
Northern Illinois Region
selected a different vendor for their advertising. Respondent contends that it facilitated the
transfer of that domain name, including providing site content in a machine
readable manner
for their new advertising provider and assisted with the domain
name transfer. According to Respondent,
at that time staff at the RE/MAX Northern Illinois Region agreed that
Respondent should continue to offer
independent advertising to RE/MAX agents
who wished to pay for it via <remax-ni.com>. To prevent confusion about the ownership of <remax-ni.com>
Respondent updated the domain name registrant at this time. Thereafter, in November of 2001, the RE/MAX
Northern Illinois Region asked Respondent if they were willing to transfer <remax-ni.com> to the region and
Respondent declined.
Respondent
contends that the long-standing use of this domain name <remax-ni.com> by it with the full knowledge of the
management and staff of the RE/MAX Northern Illinois Region without complaint
until recently
demonstrates that the RE/MAX Northern Illinois Region believed
Respondent's use of the domain name was legitimate. According to Respondent, that use was never to host a site for
the region but was always to host a site for RE/MAX franchise holders
who chose
to pay to participate.
Respondent
contends that it has shown good faith respecting Complainant's trademarks. Moreover, it contends that it modified the <remax-ni.com> site content in an
effort to accommodate the request from Complainant but that it was unable to
reach any agreement with Complainant
as to the resolution of the matter. In sum, it is the position of Respondent
that it exercised good faith with respect to Complainant's trademarks and that
the application
by Complainant for the transfer of the domain name be denied.
The
Panel FINDS Complainant is the owner of several Federal Trademark Registrations
for the servicemark RE/MAX and U.S. Trademark
Registrations for the servicemark
REMAX. The RE/MAX marks are in use in
connection with rendering technical aid and assistance to others in the
establishment and operation
of real estate brokerage agencies and insurance
brokerage services. In addition, the
marks are in use in connection with franchise services, namely offering
technical assistance in the establishment
and/or operation of real estate
brokerage firms and providing computer software, namely a CD ROM that enables
users to ask for and
receive business information relating to individual real
estate agents, accounting and billing software, home listing presentations
that
provide information and marketing strategies for properties among other
services related to real estate.
The
RE/MAX network comprises approximately 4,400 individual offices with a
worldwide force of sales agents numbering 78,000. Of those worldwide sales agents, approximately 58,000 offer real
estate brokerage services under the mark RE/MAX in interstate commerce
in the
United States.
The
RE/MAX network has used the REMAX trademark in connection with millions of home
sales in the United States and worldwide, resulting
in approximately $1
trillion in sales in connection with the RE/MAX trademark since 1973. The RE/MAX trademark is well known
throughout the United States and the world.
Additionally,
the Panel FINDS that Complainant operates a website at <remax.com> to
further its operations and is the registrant
of other numerous domain names,
including <remax.com>, <remax.net>, <remax.org>,
<remax.us> and <remaxcommercialbrokerage.com>.
The
Panel FINDS that Complainant has established guidelines for acceptable formats
for the use of the RE/MAX trademarks and domain
names by members of the RE/MAX
network. The members are authorized to
use and register a domain name incorporating the RE/MAX trademark as part of
their own domain name where
the RE/MAX trademark is followed by a hyphen and a
designation for the applicable geographic region.
The
regional RE/MAX network affiliate in Northern Illinois is RE/MAX of Northern
Illinois, Inc. It was authorized to use
and register the domain name <remax-ni.com> for use as its domain
name and registered the <remax-ni.com> domain name on April 10,
1960 with the registrar Network Solutions, Inc. RE/MAX of Northern Illinois, Inc. employed Respondent to register
the <remax-ni.com> domain name and to design and maintain a
website associated with it. RE/MAX of
Northern Illinois, Inc. was the registrant and owner of record of the <remax-ni.com>
domain name until its business relationship with Respondent terminated some
time after 2000. After the termination
of this relationship, Respondent, without authorization from Complainant as the
owner of the RE/MAX trademark,
transferred the <remax-ni.com>
domain name from RE/MAX of Northern Illinois, Inc. to itself. The transfer of the <remax-ni.com>
domain name from RE/MAX of Northern Illinois, Inc. was without the knowledge,
consent, approval or ratification of Complainant.
Complainant
is the owner of the RE/MAX trademarks and has the exclusive right to use said
trademarks. Complainant has established
its rights in the RE/MAX mark to registration with the U.S.T.P.O. for purposes
of Policy Paragraph 4(a)(i).
Respondent's
<remax-ni.com> domain name is confusingly similar to Complainant's
RE/MAX trademark in that the disputed domain name appropriates Complainant's
entire mark and simply omits the forward slash and adds a hyphen and the
letters "ni" to the mark. The
omission of the forward slash and the addition of the hyphen and the letters
fail to significantly differentiate the domain name
from Complainant's RE/MAX
trademark pursuant to Policy ¶ 4(a)(i).
See Chernow Communications, Inc. v. Kimball, D 2000-0119 (WIPO
May 18, 2000) (holding that the use or absence of punctuation marks, such as
hyphens, does not alter the fact
that a name is identical to a mark); see
also Kelson Physician Partners, Inc,. v. Mason, CPR 003 (CPR 2000) (finding
that <kelsonmd.com> is identical or confusingly similar to Complainant's
federally registered
servicemark KELSON).
The
Panel further FINDS that Complainant authorized RE/MAX of Northern Illinois,
Inc. to use and register the <remax-ni.com>
domain name. While RE/MAX of Northern
Illinois, Inc. employed Respondent to register the disputed domain name and to
design and maintain the website
associated with that domain name, Respondent
transferred the <remax-ni.com> domain name registration from RE/MAX
of Northern Illinois, Inc. to itself after the relationship between RE/MAX of
Northern Illinois,
Inc. and Respondent terminated without the knowledge,
authorization, ratification or consent of Complainant. Respondent is using the <remax-ni.com>
domain name to divert internet traffic away from the Northern Illinois RE/MAX
affiliate that is authorized to use the domain name. Such use manifests neither a bona fide offering of goods or
services under Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair
use
under Policy ¶ 4(c)(iii). See AM.
Online, Inc. v. Ten Cent Comm. Corp., FA 93668 (Nat. Arb. Forum, Mar. 21,
2000) (finding that the use of complainant's mark "as a portal to surfers
into a site sponsored
by Respondent hardly seems legitimate"); see also
E-Bay, Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) ("Use of
Complainant's entire mark and infringing domain names makes it difficult to
infer
a legitimate use").
Furthermore,
the Panel FINDS that Respondent is not commonly known by <remax-ni.com>
domain name and FINDS that Respondent has no rights to or legitimate interest
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbidge, FA96949
(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 Gallup, Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum, Jan 23, 2001) (finding that
Respondent does not have the rights in a domain name where Respondent is
not
known by the mark).
The
Panel further FINDS that Respondent has demonstrated an opportunistic attempt
to trade on Complainant's good will and fame by
wrongfully obtaining ownership
of the <remax-ni.com> domain name registration and this
constitutes bad faith registration and use of the disputed domain name pursuant
to Policy ¶ 4(a)(iii). See Harrods,
Ltd. v. Harrods Closet, D2001-1027 (WIPO Sep. 28, 2001) (finding that where
a mark is so obviously connected with well-known products its very use by
someone
with no connection to these products can evidence opportunistic bad
faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10,
2000).
Beyond
this, the Panel concludes that Respondent is using the <remax-ni.com>
domain name to attract internet users to Respondent's website for commercial
gain by creating a likelihood of confusion with Complainant's
mark as to the
source, sponsorship, affiliation or endorsement of Respondent's website, which
evidences bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See Entrepreneur Media, Inc. v. Smith,
[2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers
is not required for a finding of trademark infringement, intent
to deceive is
strong evidence of a likelihood of confusion"); see also Perot Sys.
Corp. v. Perot.net, FA95312 (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).
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.
The Panel FINDS that the domain name <remax-ni.com>
registered by Respondent is confusingly similar to Complainant's RE/MAX
registered trademark and servicemark registered with the
United States Patent
and Trademark Office in which Complainant has all rights and interests. The omission of the forward slash in
Respondent's <remax-ni.com> domain name and the addition of the
hyphen and the letters fail to significantly differentiate the domain name from
Complainant's
mark.
The
Panel also FINDS that Respondent does not have any substantial rights or
legitimate interests in respect to the domain name <remax-ni.com>. While RE/MAX of Northern Illinois, Inc. was
authorized by Complainant to use and register the <remax-ni.com>
domain name and RE/MAX of Northern Illinois, Inc. employed Respondent to
register the domain name and to design and maintain the
website associated with
the domain name, Respondent did not have any right or authority to transfer the
<remax-ni.com> domain name registration form RE/MAX of Northern
Illinois, Inc. to itself. Moreover, the
transfer of the <remax-ni.com> domain name by Respondent was
unknown to and without the authorization, consent or ratification from
Complainant. Additionally, the Panel
FINDS that Respondent's use of the <remax-ni.com> domain name in
the circumstances manifests neither a bona fide offering of goods or services nor
a legitimate non-commercial or fair
use of said domain name.
Finally,
the Panel FINDS that Respondent has registered and used the <remax-ni.com>
domain name in bad faith.
Respondent wrongfully obtained ownership of the <remax-ni.com>
domain name registration without the knowledge, consent, approval or
ratification of Complainant.
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 <remax-ni.com> domain name be TRANSFERRED
from Respondent to Complainant.
Herman D. Michels Panelist
Dated: January 20, 2004
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