Allen Tate Company v.
Claim Number: FA0707001048754
Complainant is Allen Tate Company (“Complainant”), represented by Brian
N. Larson, of Brian N. Larson Attorney at Law,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <alantate.com>, registered with Moniker Online Services, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2007.
On August 17, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <alantate.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 2007 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@alantate.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2007 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <alantate.com> domain name is confusingly similar to Complainant’s ALLEN TATE mark.
2. Respondent does not have any rights or legitimate interests in the <alantate.com> domain name.
3. Respondent registered and used the <alantate.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Allen Tate Company, has offered various real
estate related services, including real estate brokerage, mortgage, insurance,
and home warranty services for more than fifty years. Complainant markets its services throughout
North and
Respondent registered the <alantate.com> domain name on September 14, 1999. Respondent’s disputed domain name previously
resolved to a website featuring links to various third-party websites offering
competing real estate services specific to North and
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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’s registration of the ALLEN TATE mark with the USPTO indicates that Complainant has rights in the mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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.").
However, Complainant is not required to own a trademark registration to sufficiently establish rights in the ALLEN TATE mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds that Complainant has established common law rights in the ALLEN TATE mark that predate Respondent’s registration of the <alantate.com> domain name through continuous and extensive use of the mark in connection with its real estate services for over fifty years. Complainant asserts, and its trademark registration with the USPTO indicates, that Complainant has used the ALLEN TATE mark in commerce since 1957. Therefore, the Panel finds that the mark has acquired secondary meaning sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Complainant asserts that Respondent’s <alantate.com> domain name is confusingly similar to
Complainant’s ALLEN TATE mark since the disputed domain name only differs from
the mark in that it substitutes “alan” for “ALLEN” in the mark, which is an
alternate and phonetically identical spelling of the term. Under the UDRP, if a disputed domain name is
spelled differently from a mark but is still phonetically identical, the
disputed domain name is confusingly similar to the mark. Moreover, Respondent’s inclusion of the
generic top-level domain (“gTLD”) “.com” is irrelevant, as a top-level domain
is required of all domain names. Accordingly,
the Panel finds that the <alantate.com>
domain name is confusingly similar to Complainant’s ALLEN TATE mark
pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum
Oct. 31, 2003) (“Respondent's <blizzerd.com> domain name is confusingly
similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in
Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is
phonetically identical and confusingly similar to Complainant's mark.”); see also Hewlett-Packard Co. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant makes a prima facie case to prove that Respondent lacks rights and legitimate interests in the <alantate.com> domain name, the burden shifts to Respondent to show that it does have rights and legitimate interests in the disputed domain name. In the present case, the Panel finds that Complainant has established a prima facie case under the Policy. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent lacks rights and legitimate interests in the disputed domain name. See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because Respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”); see also Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”). Nevertheless, the Panel will still examine the record to determine Respondent’s rights and interests under Policy ¶ 4(c).
Complainant has not licensed or authorized Respondent to use its ALLEN TATE mark in any way, and there is nothing in the record, including Respondent’s WHOIS information, to suggest that Respondent is commonly known by the <alantate.com> domain name. Thus, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s <alantate.com> domain name resolves to a website featuring links to third-party real estate websites in direct competition with Complainant, and the Panel presumes that Respondent earns click-through fees from these links. The Panel finds that such use does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), and further indicates a lack of rights and legitimate interests in the disputed domain name. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The last issue that the Panel must address is whether Respondent registered and is using the disputed domain name in bad faith. As the <alantate.com> domain name resolves to a website featuring links in competition with Complainant, the Panel finds that such use constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use under Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
Moreover, the Panel presumes that Respondent benefits commercially from the links displayed on the website that resolves from the <alantate.com> domain name, which is confusingly similar to Complainant’s well-known ALLEN TATE mark. This indicates that Respondent is capitalizing on the likelihood that Internet users, presumably seeking Complainant’s business, will be confused as to Complainant’s affiliation with the disputed domain name. The Panel finds that this is further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
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 <alantate.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: October 5, 2007
National
Arbitration Forum
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