|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
TM Acquisition Corp. v. Century 22
Realty, Inc.
Claim
Number: FA0406000282460
Complainant is TM Acquisition Corp. (“Complainant”),
represented by Leslie Smith of Buchanan
Ingersoll PC, 100 SE First Street, Suite 2100, Miami, FL 33131. Respondent is Century 22 Realty, Inc. (“Respondent”), 10701 S.W. 27th
Street, Davie, FL 33328.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <century22realty.com>, <century23realty.com>
and <century24-7realty.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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on June 1, 2004; the Forum
received a hard copy of the Complaint
on June 2, 2004.
On
June 2, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the
domain names <century22realty.com>, <century23realty.com>
and <century24-7 realty.com> are registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the names. 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
June 8, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
June 28, 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
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
July 8, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <century22realty.com>,
<century23realty.com> and <century24-7realty.com>
domain names are confusingly similar to Complainant’s CENTURY 21 and CENTURY 22
marks.
2. Respondent does not have any rights or
legitimate interests in the <century22realty.com>, <century23realty.com>
and <century24-7realty.com> domain name.
3. Respondent registered and used the <century22realty.com>,
<century23realty.com> and <century24-7realty.com>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM
Acquisition Corp., is the owner of numerous CENTURY 21 and CENTURY 22 marks and
has licensed those marks to Century
21 Real Estate Corporation. Both of these companies are subsidiaries of
Cendant Corporation.
Complainant
holds numerous registrations for the CENTURY 21 mark with the United States
Patent and Trademark Office (Reg. 1,063,488
issued April 12, 1977, Reg. No.
1,085,039 issued February 7, 1978, Reg. No. 1,304,095 issued November 6, 1984,
Reg. No. 1,429,531
issued February 17, 1987 and Reg. No. 2,178,970 issued
August 4, 1998) and for the CENTURY 22 mark (Reg. No. 2,585,495 issued June
25,
2002). Complainant also holds several
trademark registrations in 117 additional countries.
Complainant
began using the CENTURY 21 mark in connection with the offering of real estate
brokerage services since April 1972.
Complainant’s sister company, Century 21, has approximately 4,000
franchised offices in the United States and another approximately
2,500
franchised offices in other countries.
Complainant’s
main website is operated at the <century21.com> domain name.
Respondent
registered the <century22realty.com>, <century23realty.com>
and <century24-7realty.com> domain names on August 3, 2003. Respondent’s websites originally offered
contact information for Respondent’s real estate services. Currently, the domain names resolve to a
website that offers the domain names for sale and refers Internet users to an
email address
utilizing the CENTURY 22 mark.
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.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
CENTURY 21 and CENTURY 22 marks as evidenced
by its registration with the
United States Patent and Trademark Office and through continued use of its
marks 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.).
The <century22realty.com>, <century23realty.com> and <century24-7realty.com>
domain names registered by Respondent are confusingly similar to
Complainant’s CENTURY 21 and CENTURY 22 marks because the domain
names
incorporate Complainant’s marks and simply add the generic or descriptive term
“realty” and/or simply change the sequence of
numbers. The mere addition of a
generic or descriptive term, especially those that describe Complainant’s
business, and a slight
change in the number sequence is insufficient to
distinguish Respondent’s domain names from the Complainant’s marks. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of Complainant
combined with a
generic word or term); see also Sony
Kabushiki Kaisha v. Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word . . . nor the suffix
‘.com’
detract from the overall impression of the dominant part of the name in
each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i)
is satisfied); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does
not take the disputed
domain name out of the realm of confusing similarity); see also Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth
“w” or the
omission of periods or other such generic typos do not change respondent’s
infringement on a core trademark held by Complainant).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
names, which are confusingly similar to
Complainant’s marks. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and legitimate
interests
in the disputed domain name.
In fact, once Complainant makes a prima facie case in support of
its allegations, the burden shifts to Respondent to show that it does have
rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in respect of the
Domain Name
requires the Complainant to prove a negative. For the purposes of
this sub paragraph, however, it is sufficient for the Complainant
to show a
prima facie case and the burden of proof is then shifted on to the shoulders of
Respondent. In those circumstances, the
common approach is for [R]espondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some
other reason why they can fairly be said to have a relevant right
or legitimate interests in respect of the domain name in question.”);
see
also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by Complainant that Respondent has
no
right or legitimate interest is sufficient to shift the burden of proof to
Respondent to demonstrate that such a right or legitimate
interest does exist);
see also 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).
Complainant
has alleged that Respondent is appropriating Complainant’s marks in the
disputed domain names in order to market goods
and services similar to
Complainant’s goods and services. The
Panel finds that this is not a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to
Policy ¶ 4(c)(iii). See
Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D.
Mass. 2002) (finding that, because Respondent's sole purpose in selecting the
domain names was to cause confusion with Complainant's
website and marks, its
use of the names was not in connection with the offering of goods or services
or any other fair use); see also MSNBC Cable, LLC v.
Tysys.com, D2000-1204 (WIPO
Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC
mark where Respondent attempted to
profit using Complainant’s mark by
redirecting Internet traffic to its own website).
Nothing in the record, including the
WHOIS domain name registration information, for the <century22realty.com>,
<century23realty.com> and <century24-7realty.com> domain
names suggests that Respondent is commonly known by the domain names or by
Complainant’s CENTURY 21 or CENTURY 22 marks and
therefore Respondent lacks
rights and legitimate interests in the domain names 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 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"); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark
and never applied for a
license or permission from Complainant to use the trademarked name).
Respondent is
appropriating Complainant’s CENTURY 21 and CENTURY 22 marks in the disputed
domain names and is offering them for sale.
The Panel finds that this attempt to sell the domain names to the Complainant
or to Complainant’s competitor that are confusingly
similar to Complainant’s
marks is not a bona fide offering of goods or services. See Am.
Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate
interests in the domain name is further evidenced by Respondent’s attempt to
sell its domain
name registration to Complainant, the rightful holder of the
RED CROSS mark”); see also Mothers Against Drunk Driving v. Shin, FA
154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances,
Respondent’s apparent willingness to dispose of
its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Wal-Mart Stores,
Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s
conduct purporting to sell the domain name suggests it has no legitimate use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has
asserted that Respondent registered and used the domain names in bad faith
pursuant to Policy ¶ 4(b)(iii) because
Respondent is using the domain names,
which are confusingly similar to Complainant’s marks, to compete with
Complainant’s business. 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 Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb.
Forum Dec. 23, 2000) (concluding that domain names were registered and used in
bad faith where Respondent and
Complainant were in the same line of business in
the same market area).
Further,
Complainant contended that Respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iv)
as Respondent is using the <century22realty.com>, <century23realty.com> and <century24-7realty.com>
domain names intentionally to attract, for commercial gain, Internet users
to its websites by creating a likelihood of confusion with
Complainant as to
the source, sponsorship, affiliation or endorsement of its websites. See H-D Michigan, Inc. v.
Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the
disputed domain name was registered and used in bad faith pursuant to
Policy ¶
4(b)(iv) through Respondent’s registration and use of the infringing domain
name to intentionally attempt to attract Internet
users to its fraudulent
website by using Complainant’s famous marks and likeness); see also State Fair of Texas v. Granbury.com, FA
95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent
registered the domain name <bigtex.net> to infringe
on Complainant’s
goodwill and attract Internet users to Respondent’s website); see also State Farm Mut. Auto. Ins. Co. v. Northway,
FA 95464 (Nat. Arb. Forum Oct. 11, 2000) (finding that Respondent registered
the domain name <statefarmnews.com> in bad faith
because Respondent
intended to use Complainant’s marks to attract the public to the web site
without permission from Complainant).
Additionally, Respondent’s domain name
used to offer links to real estate-related websites and services. Currently, the <century22realty.com>,
<century23realty.com> and <century24-7realty.com> domain
names are being offered for sale. Thus,
the Panel finds that Respondent likely registered the domain names primarily
for the purpose of selling it to Complainant, which
evidences bad faith
registration and use under Policy ¶ 4(b)(i).
See Pocatello Idaho Auditorium Dist. v. CES Marketing
Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an
offer to sell a domain [name] bad faith is some accompanying evidence
that the
domain name was registered because of its value that is in some way dependent
on the trademark of another, and then an offer
to sell it to the trademark
owner or a competitor of the trademark owner."); see also Am. Online, Inc. v. Avrasya Yayincilik
Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad
faith where Respondent offered domain names for sale); see also Am.
Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded,
are evidence of bad faith”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <century22realty.com>, <century23realty.com>
and <century24-7realty.com> domain names be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
July 22, 2004
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/875.html