DECISION

TM Acquisition Corp. v. Jay Scott

Claim Number:  FA0404000250775

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is Jay Scott (“Respondent”), 2519 Mcmullen Booth Rd., Suite 510-304, Clearwater, FL 33761.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <century21timeshares.com>, registered with Domainbank.

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.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 6, 2004; the Forum received a hard copy of the Complaint on April 7, 2004.

On April 9, 2004, Domainbank confirmed by e-mail to the Forum that the domain name <century21timeshares.com> is registered with Domainbank and that Respondent is the current registrant of the name. Domainbank has verified that Respondent is bound by the Domainbank 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 April 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 3, 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@century21timeshares.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 May 21, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <century21timeshares.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.

2. Respondent does not have any rights or legitimate interests in the <century21timeshares.com> domain name.

3. Respondent registered and used the <century21timeshares.com> domain name in bad faith.

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

FINDINGS

Complainant, TM Acquisition Corp., is the owner of numerous CENTURY 21 marks (Reg. Nos. 1,063,488 for real estate brokerage services, 1,085,039 for rendering technical services, 1,304,095 for mortgage brokerage services, 1,429,531 for insurance brokerage services, and 2,178,970 for providing access to a computer real estate database), registered with the U.S. Patent and Trademark Office (USPTO) on April 12, 1977, February 7, 1978, November 6, 1984, February 17, 1987, and August 4, 1998, respectively. 

Pursuant to its license from TM Acquisition Corp., Century 21 has the right to use the CENTURY 21 marks.  Century 21 has been using the CENTURY 21 mark continuously in commerce since April 16, 1972.

Respondent, Jay Scott, registered the <century21timeshares.com> domain name on November 14, 2003.  Respondent is using the disputed domain name to offer links to various real estate timeshare sales sites.  Respondent is not a franchise licensee of the CENTURY 21 marks.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the CENTURY 21 mark, evidenced by registration with the USPTO and continuous use in commerce.  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.

Respondent’s <century21timeshares.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.  The only difference is the addition of the word “timeshares.”  Adding this word does not significantly distinguish the domain name from the mark because it is a common term used in Complainant’s line of business.  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 Brambles Industries Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) finding that the domain name <bramblesequipment.com> is confusingly similar because the combination of the two words "brambles" and "equipment" in the domain name implies that there is an association with Complainant’s business.

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

Rights or Legitimate Interests

Respondent has not filed a Response.  In the absence of a Response, the Panel may accept all reasonable allegations 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 Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is appropriating Complainant’s mark to sell real estate.  Using Complainant’s mark to compete directly with Complainant is not a bona fide offering of 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 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 Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant.

There is nothing in the record, including the WHOIS domain name registration information, which establishes that Respondent is commonly known by the domain name, pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply; see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark.

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

Registration and Use in Bad Faith

Respondent has appropriated Complainant’s mark to offer services similar to Complainant’s.  The Panel finds Respondent has registered the domain name primarily for the purpose of disrupting Complainant’s competing business, pursuant to Policy ¶ 4(b)(iii).  See Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters; see also 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.

Respondent is selling real estate with a domain name that is confusingly similar to Complainant’s mark.  Because Respondent is creating confusion as to the source of its website for commercial gain, the Panel finds that it has registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iv).  See 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; 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, evidence of bad faith registration and use pursuant to Policy 4(b)(iv).

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

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 <century21timeshares.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  June 4, 2004

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