RE/MAX International, Inc. v. [Registrant] a/k/a First Realty Pacific Beach Properties a/k/a Oro en Aries S.A. a/k/a DaySite Web Hositng
Claim Number: FA0712001119523
Complainant is RE/MAX International, Inc. (“Complainant”), represented by Adam
Lindquist Scoville, of RE/MAX International, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>, and <remaxfirstrealtycr.com>, registered with Godaddy.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On December 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 17, 2008 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@remaxcostarica.com, postmaster@remax-first-cr.com, postmaster@remax-firstrealtycr.com, and postmaster@remaxfirstrealtycr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>, and <remaxfirstrealtycr.com> domain names are confusingly similar to Complainant’s RE/MAX mark.
2. Respondent does not have any rights or legitimate interests in the <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>, and <remaxfirstrealtycr.com> domain names.
3. Respondent registered and used the <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>, and <remaxfirstrealtycr.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RE/MAX International, Inc.,
provides real estate brokerage services throughout the
Respondent registered the <remaxcostarica.com>
domain name
on
Preliminary Issue:
Multiple Respondents
The Panel must first consider whether these proceedings have been properly instituted. UDRP ¶ 3(c) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant contends that Respondent is operating under various alleged aliases. Additionally, The National Arbitration Forum’s Supplemental Rule 4(f)(ii) requires a Panel to dismiss the Complaint in relation to the domain names it deems to be insufficiently linked to Respondent.
The listed registrants for the <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>,
and <remaxfirstrealtycr.com> domain names are [Registrant]
a/k/a First Realty Pacific Beach Properties a/k/a Oro en Aries S.A. a/k/a
DaySite Web Hositng. There is sufficient
evidence that the registrant is one and the same. The <remaxcostarica.com>, <remax-firstrealtycr.com>,
and <remaxfirstrealtycr.com> domain names have the same
Administrative and Technical Contact, “Mercedes Castro.” The final domain name, <remax-first-cr.com>,
also has connections with Castro. Before
the WHOIS information was suspended as invalid, the registrant appeared to be “Jon
Day.” Mr. Day states that he did not and
has never controlled the <remax-first-cr.com> domain name. Prior to the WHOIS information changing to Mr.
Day, Complainant sent an e-mail to the then proxy services holding the <remax-first-cr.com>
domain name. Complainant received a
notice that the e-mail had been received and read by Respondent’s principal,
Mercedes Castro, at the e-mail address mercedes@firstrealtycr.com. Although it appears the <remax-first-cr.com>
domain name is registered to the DaySite Web Hositng (a/k/a Jon Day) the
evidence indicates that the information is simply another alias for Mercedes
Castro.
The Panel finds that the listed aliases “[Registrant],” “First
Realty Pacific Beach Properties,” “Oro en
Primary
Issues
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 has registered the RE/MAX mark with the USPTO
and therefore has established rights to the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum
Complainant contends that the <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>,
and <remaxfirstrealtycr.com> domain names are confusingly
similar to the RE/MAX mark. Each domain
name includes the mark in its entirety along with the generic term “first,” the
geographic term “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent has neither rights nor
legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). Complainant
has the initial burden of showing Respondent does not have rights or legitimate
interests in the disputed domain names.
Once Complainant has made a prima
facie case showing that Respondent lacks rights and legitimate interests,
the burden shifts to Respondent to show that it does have rights or legitimate
interests in the <remaxcostarica.com>, <remax-first-cr.com>,
<remax-firstrealtycr.com>, and <remaxfirstrealtycr.com>
domain names. The Panel finds that
Complainant has met the initial burden of showing that Respondent lacks rights
and legitimate interests, and therefore has made a prima facie case under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires
v. Greenpeace Int’l, D2001-0376 (WIPO
Because Respondent failed to answer the Complaint, the Panel presumes that Respondent lacks all rights and legitimate interests in the disputed domain names. See American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). Nevertheless, the Panel will examine all evidence in the record to determine if Respondent does have rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Respondent previously owned and operated a
franchise for Complainant. Respondent’s franchise agreement,
which terminated in 2005, did not authorize Respondent to use a domain
name incorporating Complainant's mark in any way. Moreover, there is no
information in the record indicating that Respondent has ever been commonly
known by the disputed domain names, outside of the limited use of
Complainant's mark that Respondent previously had. Thus, the Panel finds
that Respondent is not commonly known by the disputed domain names for the purposes
of Policy ¶ 4(c)(ii). See
Jaccard Corp. v. GDC, FA 152463 (Nat. Arb. Forum June 19, 2003) (stating that as
there was “no evidence of an agreement between Complainant and Respondent
whereby Respondent has either or both of a privilege to have registered, and a
privilege to use, the mark that is the subject of one or more of Complainant's
trademarks as a domain name” the respondent had no rights or legitimate
interests in the disputed domain name); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum
Respondent is using the <remaxcostarica.com>, <remax-first-cr.com>,
<remax-firstrealtycr.com>, and <remaxfirstrealtycr.com>
domain names to display
links and information in direct competition with services offered under Complainant’s
mark. The Panel finds that such
use is not 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 DLJ Long Term
Inv. Corp. v. BargainDomainNames.com, FA
104580 (Nat. Arb. Forum Apr. 9, 2002)
(“Respondent is not using the disputed domain name in connection with a bona
fide offering of goods and services because Respondent is using the domain name
to divert Internet users to <visual.com>, where services that compete
with Complainant are advertised.”); see
also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat.
Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed
domain name to redirect Internet users to a financial services website, which
competed with the complainant, was not a bona fide offering of goods or
services).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The disputed domain names contain Complainant’s RE/MAX mark
in its entirety and resolve to websites in clear competition with Complainant’s
goods and services offered under the RE/MAX mark. The Panel finds that this is a disruption of
Complainant’s business and indicates bad faith registration and use under
Policy ¶ 4(b)(iii). See Tribeca Film Ctr., Inc. v.
Brusasco-Mackenzie, D2000-1772 (WIPO
Complainant contends that Respondent is using the <remaxcostarica.com>, <remax-first-cr.com>,
<remax-firstrealtycr.com>, and <remaxfirstrealtycr.com>
domain names for commercial gain by advertising links to competing services,
and benefiting from the likely confusion between Complainant’s mark and the
disputed domain names. The Panel finds that
the similarity between the disputed domain names and the RE/MAX mark are likely
to create confusion as to Complainant’s source, sponsorship, affiliation, or
endorsement of the websites that resolve from the disputed domain names under
Policy ¶ 4(b)(iv).
See AltaVista Co. v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a
website that offered links to third-party websites that offered services
similar to the complainant’s services and merely took advantage of Internet
user mistakes); see
also
Respondent’s
disputed domain names resolve to websites in direct competition with the
services offered under Complainant’s mark. The Panel finds that because Respondent
was a previous franchisee of Complainant, Respondent had actual knowledge of
the Complainant’s marks and use of Complainant’s mark at the time the disputed
domain names were registered. Such
actions show bad faith registration and use under Policy ¶ 4(a)(iii). See
Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that
because the link between the complainant’s mark and the content advertised on
the respondent’s website was obvious, the respondent “must have known about the
Complainant’s mark when it registered the subject domain name”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir.
2002) ("Where an alleged infringer chooses a mark he knows to be similar
to another, one can infer an intent to confuse.").
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 <remaxcostarica.com>, <remax-first-cr.com>, <remax-firstrealtycr.com>, and <remaxfirstrealtycr.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: February 5, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum