TM Acquisition Corp. v. None
Claim Number: FA0204000109709
Complainant
is TM Acquisition Corp., Parsippany,
NJ (“Complainant”) represented by Kathryn
S. Geib. Respondent is None,
Monterey, CA (“Respondent”).
The
domain name at issue is <century21.biz>,
registered with NameScout.com.
The undersigned certifies that she has acted
independently and impartially and that to the best of her knowledge she has no
known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint,
as it timely filed the required Intellectual Property (IP) Claim Form with the
Registry Operator, NeuLevel. As an IP
Claimant, Complainant timely noted its intent to file a STOP Complaint against
Respondent with the Registry Operator, NeuLevel and with the National
Arbitration Forum (the “Forum”).
Complainant
submitted a Complaint to the Forum electronically on April 15, 2002; the Forum
received a hard copy of the Complaint on April 17, 2002.
On
April 17, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2002
by which Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with paragraph 2(a) of the Rules for the Start-up
Trademark Opposition Policy (the “STOP Rules”).
Respondent
sent a brief e-mail following the Commencement Notification, but failed to
submit a Response as required by STOP Rule 5.
Having
received no Formal 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 23, 2002, pursuant to STOP Rule 6(b), the Forum
appointed Hon. Carolyn Marks Johnson
as the single 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 STOP Rules. Therefore, the Panel
may issue its decision based on the documents submitted and in accordance with
the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules
and principles of law that the Panel deems applicable, without the benefit of
any Response from Respondent.
Transfer
of the domain name from Respondent to Complainant.
A. Complainant makes the following
allegations in this proceeding:
1. The <century21.biz> domain
name is identical to Complainant’s CENTURY 21 mark.
2. Respondent has no rights or legitimate
interests in the <century21.biz> domain name.
3. Respondent registered the <century21.biz>
domain name in bad faith.
B. Respondent did not submit a Formal
Response in this proceeding.
Complainant is the owner of numerous
CENTURY 21 marks registered with the U.S. Patent and Trademark Office and has
licensed the CENTURY 21 marks to Century 21 Real Estate Corporation (U.S.
Patent and Trademark Nos. 1,063,488, 1,085,039, and 1,304,095, among others).
Pursuant to its license from Complainant, Century 21 Real Estate Corp. has the
right to use ninety registered and numerous common law marks in the United
States. An additional thirty-two registrations contain the CENTURY 21 mark as
an element of the mark and/or design. Also, Century 21 Real Estate Corp. is the
owner of trademark registrations for numerous CENTURY 21 marks in 101
additional countries.
Century 21 Real Estate Corp. has used the
CENTURY 21 marks in the U.S. continuously in connection with the offering of
real estate brokerage services since 1972. Over the past thirty years, Century
21 Real Estate has expended many millions of dollars and significant time,
resources and effort in advertising, promoting and establishing the goodwill of
the CENTURY 21 marks affiliated with its business. As a result, the CENTURY 21
mark is distinctive. Century 21 Real Estate Corp. operates its primary website
at <century21.com>.
Respondent registered the disputed domain
name on March 27, 2002. Respondent is not a franchisee or licensee of the
CENTURY 21 mark and Respondent is not authorized to use the CENTURY 21 mark in
any manner. Respondent did not have
authority to apply for the domain name in question. Complainant’s investigation
has not found any business connection between Respondent and Complainant and
the registration of the contested domain name.
Paragraph 15(a) of the STOP 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 the Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the STOP Rules
and draw such inferences it considers appropriate pursuant to paragraph 14(b)
of the STOP Rules.
Paragraph
4(a) of the STOP Policy requires that Complainant must prove each of the
following three elements to obtain an order that a domain name should be
transferred:
(1) the domain name is identical 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 or is being used in bad faith.
Due
to the common authority of the ICANN policy governing both the Uniform Domain
Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel
will exercise its discretion to rely on relevant UDRP precedent where
applicable.
Under
the STOP proceedings, a STOP Complaint may only be filed when the domain name
in dispute is identical to a trademark or service mark for which a Complainant
has registered an Intellectual Property (IP) claim form. Therefore, every STOP proceeding necessarily
involves a disputed domain name that is identical to a trademark or service
mark in which a Complainant asserts rights.
The existence of the “.biz” generic top-level domain (gTLD) in the
disputed domain name is not a factor for purposes of determining that a
disputed domain name is not identical to the mark in which Complainant asserts
rights.
Complainant
has established that it has rights in the CENTURY 21 mark through registration
in the United States and throughout the world. Respondent’s <century21.biz>
domain name is identical to Complainant’s mark.
The
Panel finds that STOP Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed domain name. See 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). Additionally, when Respondent fails to submit a Response
the Panel is permitted to make all inferences in favor of Complainant. See
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”).
Complainant has established that it has
rights in the disputed domain name because it is the owner of ninety registered
trademarks in the United States incorporating the mark CENTURY 21. Respondent
has not come forward to offer evidence that it has rights in the CENTURY 21
mark anywhere in the world. Therefore Respondent has no rights or legitimate
interests in the <century21.biz> domain name pursuant to STOP
Policy ¶ 4(c)(i).
The Panel is permitted to infer that
Respondent’s planned use of the domain name that is identical to Complainant’s
mark would be to divert Internet users interested in Complainant to
Respondent’s website. Respondent’s registration of an infringing domain name in
order to opportunistically trade on the goodwill of Complainant’s mark does not
constitute a bona fide offering of goods or services under STOP Policy ¶
4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043
(Nat. Arb. Forum March 21, 2002) (finding
Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by
attracting Internet users confused as to the likely affiliation between
Complainant and Respondent’s website” indicated Respondent had no rights or
legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit
Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb.
Forum Feb. 25, 2002) (“The use of another's trademark to attract users to
Respondent's domain is not considered to be a bona fide offering of goods or
services pursuant to STOP Policy ¶ 4(c)(ii)”).
There is no evidence on the record and
Respondent has not come forward to establish that Respondent is commonly known
by the <century21.biz> domain name pursuant to STOP Policy ¶
4(c)(iii). See Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because Respondent is not commonly known by the
disputed domain name or using the domain name in connection with a legitimate
or fair use).
The Panel finds that STOP Policy ¶
4(a)(ii) has been satisfied.
Based
on the famous and distinctive nature of Complainant’s CENTURY 21 mark,
Respondent is thought to have been on notice as to the existence of Complainant’s
mark at the time Respondent registered the infringing <century21.biz> domain
name. Registration of a domain name incorporating the entirety of another’s
mark with knowledge that the domain name is infringing is evidence of bad
faith. See Victoria's Secret v.
Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of
the notoriety of Complainant’s famous marks, Respondent had actual or
constructive knowledge of the BODY BY VICTORIA marks at the time she registered
the disputed domain name and such knowledge constitutes bad faith); see also
Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002)
(finding that the unique nature of the STOP Policy and the notice given to
Respondent regarding existing IP Claims identical to its chosen domain name
precluded good faith registration of <genelogic.biz> when Respondent
registered it with “full knowledge that his intended business use of this
domain name was in direct conflict with a registered trademark of a known
competitor in exactly the same field of business”).
The
information supplied by Complainant supports the inference that Respondent
registered the disputed domain name in order to prevent Complainant from using
its CENTURY 21 mark in a corresponding domain name. This behavior is evidence
of bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S
Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of
a domain name goes further than merely correctly using in an advertisement the
trade mark of another in connection with that other’s goods or services: it
prevents the trade mark owner from reflecting that mark in a corresponding
domain name”); see also Peachtree Software v. Scarponi, FA
102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶
4(b)(ii), noting that it was reasonable to conclude Respondent registered
<peachtree.biz> with the intent to prevent Complainant from reflecting
its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge
of Complainant's mark and Respondent's lack of rights or interests in the
mark).
Furthermore,
the <century21.biz> domain name applied for by Respondent is
identical to Complainant’s CENTURY 21 mark resulting in the likelihood that
Internet users will believe that there is an affiliation between Respondent and
Complainant; Respondent had no authorization to make use of Complainant’s mark.
Registration of the <century21.biz> domain name despite its being
identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since
Respondent is attempting to capture Internet users seeking Complainant’s site
based on the goodwill associated with its famous mark. See Kraft Foods (Norway) v. Wide, D2000-0911
(WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to
register a well-known mark to which he has no connections or rights indicates
that he was in bad faith when registering the domain name at issue”); see
also Red Bull GmbH v. Gutch,
D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the
domain name <redbull.org> would lead people to believe that the domain
name was connected with Complainant, and thus is the equivalent to bad faith
use).
The
Panel finds that STOP Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the Start-up Trademark Opposition
Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly,
it is Ordered that the domain name <century21.biz> be TRANSFERRED
from Respondent to Complainant and that subsequent challenges under the STOP
Policy against this domain name SHALL NOT be permitted.
Hon. Carolyn Marks
Johnson, Panelist
Dated: June 4, 2002
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