DECISION

TM Acquisition Corp. v. Gary Lam

Claim Number:  FA0405000280499

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is Gary Lam (“Respondent”), 2/F Industrial Building, 6 Yip Fat Street, Wong Chuk Hang, 00000, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coldwellbankerrealestate.com>, registered with Enom, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of 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 May 26, 2004; the Forum received a hard copy of the Complaint on May 27, 2004.

On May 28, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <coldwellbankerrealestate.com> is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 1, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 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@coldwellbankerrealestate.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 June 25, 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 <coldwellbankerrealestate.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.

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

3. Respondent registered and used the <coldwellbankerrealestate.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 COLDWELL BANKER marks and has licensed those marks to Coldwell Banker Real Estate Corporation.  Both of these companies are subsidiaries of Cendant Corporation.

Complainant holds numerous registrations for the COLDWELL BANKER mark with the United States Patent and Trademark Office (Reg. 1,154,155 issued May 12, 1981, Reg. No. 1,215,241 issued November 2, 1982, Reg. No. 2,057,608 issued April 29, 1997, Reg. No. 2,059,501 issued May 6, 1997 and Reg. No. 2,453,334 issued May 22, 2001).  Complainant also holds several trademark registrations in Hong Kong and ninety-eight other countries.

 

Complainant began using the COLDWELL BANKER mark in 1914, and associated it with real estate services in 1974.  Since that time, Complainant has expanded its use of the mark to include a variety of real estate-related services.  Complainant’s sister company, Coldwell Banker, has more than 3,500 independently owned and operated residential and commercial real estate offices with over 112,000 sales associates globally. The company is an industry leader in residential real estate, and in niche markets such as resort, new homes and luxury properties.

Complainant’s main website is operated at the <coldwellbanker.com> domain name.

Respondent registered the <coldwellbankerrealestate.com> domain name on September 12, 2003.  Respondent is using the domain name to redirect Internet users to a website that features advertising for a variety of goods and hosts a search engine that links viewers to a variety of websites, including competing real estate-related websites and links to Coldwell Banker agents.

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 established with extrinsic proof in this proceeding that it has rights to the COLDWELL BANKER mark as evidenced by its registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last ninety and thirty years, respectively.  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 <coldwellbankerrealestate.com> domain name registered by Respondent is confusingly similar to Complainant’s COLDWELL BANKER mark because the domain name incorporates Complainant’s mark in its entirety and simply adds the generic or descriptive terms, “real” and “estate.”  The mere addition of generic or descriptive terms, especially those that describe Complainant’s business, does not negate the confusing similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the 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 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); 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 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).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains in its entirety Complainant’s mark.  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) (stating that “[p]roving 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).

Moreover, where Respondent does not respond, the Panel may accept reasonable allegations and inferences in the Complaint as true.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s failure to respond: (1) Respondent does not deny the facts asserted by Complainant, and (2) Respondent does not deny conclusions which Complainant asserts can be drawn from the facts).

Respondent’s domain name fully incorporates Complainant’s mark and redirects Internet users to a website that features advertising for a variety of goods and hosts a search engine to link viewers to a variety of websites, predominantly real estate-related websites and links to Coldwell Banker agents.  The Panel finds that Respondent’s use of a domain name that is confusingly similar to Complainant’s mark and redirects Internet users to commercial websites that compete with Complainant’s business does not constitute 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 eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

Nothing in the record, including the WHOIS domain name registration information, for the <coldwellbankerrealestate.com> domain name suggests that Respondent is commonly known by the domain name or by Complainant’s COLDWELL BANKER mark 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 Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent intentionally registered the <coldwellbankerrealestate.com> domain name that contains in its entirety Complainant’s well-known mark.  Furthermore, Respondent is using the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant as to the source, sponsorship, affliliation or endorsement of its website purusant to Policy ¶ 4(b)(iv).  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 Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that Respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where Respondent was not authorized to sell Complainant’s goods).

Respondent is using the <coldwellbankerrealestate.com> domain name to provide a search engine that links viewers to a variety of websites, including competing real estate-related websites and links to Coldwell Banker agents.  Complainant’s business also provides real estate services.  The Panel finds that, by creating confusion around Complainant’s COLDWELL BANKER mark, Respondent is attempting to disrupt the business of a competitor.  Respondent’s use of Complainant’s mark to sell goods and services similar to Complainant’s goods and services is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); 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); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA 95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com> and <sandalsagent.com> from Respondent travel agency to Complainants, who operate Sandals hotels and resorts).  

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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

Sandra Franklin, Panelist

Dated:  July 9, 2004

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