DECISION

TM Acquisition Corp. v. CenturyofRealty

Claim Number: FA0403000248956

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is CenturyofRealty (“Respondent”), 12271 Trask Ave. #4, Garden Grove, CA 92843.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <centuryofrealty.com>, registered with Go Daddy Software, 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.

Judge Richard B. Wickersham, (Ret.), as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on March 24, 2004; the Forum received a hard copy of the Complaint on March 25, 2004.

On March 24, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <centuryofrealty.com> is registered with Go Daddy Software, Inc. and that the 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 March 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 15, 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@centuryofrealty.com by e-mail.

A timely Response was received and determined to be complete on April 15, 2004.

On April 28, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, (Ret.), as Panelist.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, TM Acquisition Corp., is a Delaware corporation with its principal place of business in Nevada.   It is the owner of numerous CENTURY 21® Marks as registered with the USPTO and has licensed the CENTURY 21 Marks to Century 21 Real Estate Corporation (“Century 21”).  Century 21 is a Delaware corporation with its principal place of business in New Jersey.  Century 21 sub-licenses the CENTURY 21 Marks to its franchisees throughout the United States and in many foreign countries.  TM Acquisition Corp. and Century 21 are subsidiaries of Cendant Corporation, a Delaware corporation with its principal place of business in New York. 

Pursuant to its license from TM Acquisition Corp., Century 21 has the right to use 94 registered and numerous common law marks in the United States.  Of these, five (5) are for the CENTURY 21 word mark.

Century 21 is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices, including policies, procedures and techniques designed to enable such offices to compete more effectively in the real estate sales market.  Century 21 licenses its franchisees the right to use the CENTURY 21® Marks in their real estate brokerage offices throughout the United States and has licensed the CENTURY 21 Marks to Master Franchisors operating in at least 26 other countries.

Century 21 has used the CENTURY 21 Marks in the USA continuously in connection with the offering of real estate brokerage services since April 16, 1972.   Over the past 30 years, Century 21 has expended many millions of dollars and significant time, resources and effort in advertising, promoting and establishing the goodwill of the CENTURY 21 Marks in association with its business. 

B. Respondent

Domain name confusion/similarity:  Prior to receiving notice from the National Arbitration Forum about this domain name complaint, CenturyofRealty.com has not been made aware of any confusion with the trademarks or domain names of the complainant from our customers. Nor, had we received any complaint from any representative of TM Acquisition Corp, or their licensees until April 1, 2004. 

Respondent’s legitimate interest in the domain name:  CenturyofRealty.com was unaware of the extent of domain name protection provided by the UDRP and began using the domain name <centuryofrealty.com> in good faith beginning in mid January 2004. The initial awareness of the complaint was when the package was received by conventional mail on April 1, 2004 because admin@centuryofrealty.com is an unused portal.

 

Millenium Online Business is a registered operation base in Orange County, California. We discovered availability of domain name <centuryofrealty.com> after numerous word match attempts in an effort of putting together a domain name that simply describes our services without using the long word “millenium.”  Being that we were unaware of the internet law, we did not perform a trade/service mark check, instead we assumed that we had legal protection when we buy and use an untaken domain name.  We neither intended to cause confusion for internet clients nor interested in claiming any source of affiliation with any other businesses.

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.

Identical and/or Confusingly Similar  Policy ¶ 4(a)(i).

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

The Panel finds that the <centuryofrealty.com> domain name is confusingly similar to the CENTURY 21 mark.  The domain name appropriates the main word of the mark, namely CENTURY, only adding the words “of realty,” which does not significantly distinguish the domain name from the mark.  In addition, the addition of the word “realty” describes Complainant.  Panels have held that adding a word to Complainant’s mark that describes Complainant increases the likelihood of confusion.  See Space Imaging LLC v. Brownwell, 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 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).

Rights or Legitimate Interests  Policy ¶ 4(a)(ii).

The Panel finds that Respondent is appropriating Complainant’s mark to create a domain name that competes with Complainant, which is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (finding that Respondent’s use of a confusingly similar domain name to operate a pay-per-click search engine, in competition with Complainant, was not a bona fide offering of goods or services); see also 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).

The Panel also finds that, although Respondent’s name is apparently Century of Reality, it is not commonly known by this name, pursuant to Policy ¶ 4(c)(ii).  See Neiman Marcus Group, Inc. v. Neiman-Marcus, FA 135048 (Nat. Arb. Forum Jan. 13, 2003) (noting that “Complainant has established itself as the sole holder of all rights and legitimate interests in the NEIMAN MARCUS mark,” in holding that Respondent was not commonly known by the <neiman-marcus.net> name, despite naming itself “Neiman-Marcus” in its WHOIS contact information); see also XO Communications Inc. v. XO Network Operations Ctr. Inc., FA 150786 (Nat. Arb. Forum Apr. 28, 2003) (finding that evidence indicating that Respondent was a serial cybersquatter permitted the inference that Respondent’s self-proclaimed identity of “XO Network Operations Center Inc.” was insincere, and thus that Respondent was not commonly known by the <xonoc.com> or <xonoc.net> domain names).

Registration and Use in Bad Faith  Policy ¶ 4(a)(iii).

The Panel finds that Respondent is appropriating Complainant’s mark primarily for the purpose of disrupting Complainant’s business, finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii). 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 General Media Communications, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001) (finding bad faith where a competitor of Complainant registered and used a domain name confusingly similar to Complainant’s PENTHOUSE mark to host a pornographic web site).

The Panel also finds that Respondent is appropriating Complainant’s mark to create a likelihood of confusion, to attract Internet users for commercial gain.  See 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, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name to a website that offers a number of web services).

DECISION AND FINDINGS

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

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

_______________________________________

Richard B. Wickersham, Panelist
Dated: May 11, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/615.html