Coldwell Banker LLC and Coldwell Banker Real Estate LLC v. Matthew Brown
Claim Number: FA2010001916832
Complainant is Coldwell Banker LLC and Coldwell Banker Real Estate LLC (“Complainant”), represented by David Ewen of McCarter & English, LLP, Connecticut, United States. Respondent is Matthew Brown (“Respondent”), Belize.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coldwellbankersanpedro.com>, registered with FastDomain Inc.
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 J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on October 13, 2020; the Forum received payment on October 13, 2020.
On October 14, 2020, FastDomain Inc. confirmed by e-mail to the Forum that the <coldwellbankersanpedro.com> domain name is registered with FastDomain Inc. and that Respondent is the current registrant of the name. FastDomain Inc. has verified that Respondent is bound by the FastDomain Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 19, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@coldwellbankersanpedro.com. Also on October 19, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On November 10, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
The Panel notes that Coldwell Banker Real Estate LLC is a subsidiary of Coldwell Banker LLC, and elects to refer to them jointly as Complainant.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <coldwellbankersanpedro.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
2. Respondent does not have any rights or legitimate interests in the <coldwellbankersanpedro.com> domain name.
3. Respondent registered and uses the <coldwellbankersanpedro.com> domain name in bad faith.
B. Respondent did not file a Response.
Complainant has been offering real estate services under the COLDWELL BANKER mark since 1906. Complainant holds a registration for the COLDWELL BANKER mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,154,155, registered May 12, 1981).
Respondent registered the <coldwellbankersanpedro.com> domain name on October 3, 2017, and uses it to divert consumers away from Complainant’s website to Respondent’s own website which offers competing real estate services.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the COLDWELL BANKER mark under Policy ¶ 4(a)(i) through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainants’ ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <coldwellbankersanpedro.com> domain name consists of Complainant’s mark followed by the geographically descriptive designation “San Pedro” and the gTLD “.com.” These changes do not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s <coldwellbankersanpedro.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights and legitimate interests in the <coldwellbankersanpedro.com> domain name, as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use its COLDWELL BANKER mark. The WHOIS information for the disputed domain name lists the registrant as “Matthew Brown.” Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the Complainants asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name).
Complainant argues that Respondent fails to use the <coldwellbankersanpedro.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent uses the domain name to divert consumers from Complainant’s website to Respondent’s website which offers competing real estate services. Using a confusingly similar domain name to divert Internet users to a respondent’s competing website is a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the website at <coldwellbankersanpedro.com> which offers competing real estate services. Therefore, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered and uses the <coldwellbankersanpedro.com> domain name in bad faith to disrupt Complainant’s business by diverting Internet uses from Complainants to Respondent, for Respondent’s commercial gain. Using a confusingly similar domain name to a divert Internet users to a respondent’s competing website can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and (iv). See LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum January 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainants’ business under Policy ¶ 4(b)(iii)). The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <coldwellbankersanpedro.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: November 11, 2020
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