National Arbitration Forum

 

DECISION

 

Tomlinson Affiliate Services Inc. v. Texas International Property Associates

Claim Number: FA0801001138312

 

PARTIES

Complainant is Tomlinson Affiliate Services Inc. (“Complainant”), represented by Christopher D. Gabbert, of Ramsden & Lyons, LLP, Idaho, USA.  Respondent is Texas International Property Associates (“Respondent”), represented by Gary Wayne Tucker, of Law Office of Gary Wayne Tucker, Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <tomlinsonrealestate.com>, (“the disputed domain name”) which was registered with Compana, LLC. (“Compana”) on December 27, 2005.

 

PANEL

The undersigned, David H Tatham, 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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on January 15, 2008; the Forum received a hard copy of the Complaint on January 18, 2008.

 

On January 16, 2008, Compana confirmed by e-mail to the Forum that the <tomlinsonrealestate.com> domain name was registered with it and that the Respondent was the current registrant of the name. Compana also verified that Respondent is bound by its 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 January 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding, setting a deadline of February 19, 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@tomlinsonrealestate.com by e-mail.

 

A timely Response was received and determined to be complete on February 19, 2008.

 

An Additional Submission from Complainant was received and determined by the Forum to be timely and complete on February 25, 2008.

 

On March 3, 2008, an Additional Submission from Respondent, which it called an Objection and Reply to Complainant’s Additional Submission, was received and determined by the Forum to be timely and complete.

 

On February 26, pursuant to requests by both parties to have the dispute decided by a single member Panel, the Forum appointed Mr. David H Tatham as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant operates and provides Real Estate and Brokerage services for all manner of real estate transactions under a number of affiliated and related business names, including the names Tomlinson, Tomlinson Black, and Tomlinson Real Estate Services, Inc. All of these names are derivatives of the common name Tomlinson and all of the businesses only provide services specifically related to their clients’ real estate needs.

 

Complainant currently owns the corporate name and a service mark registration of TOMLINSON BLACK. This registration, No. 2420437, is dated January 16, 2001 having been filed on July 6, 1998. It covers “Real Estate Brokerage Services, Real Estate Management” claiming June 9, 1995 as its date of first use.

 

Complainant annexed to the Complaint copies of a number of Certificates from the authorities in the States of Washington and Idaho, which demonstrate that Complainant was formed as Tomlinson Real Estate Services, Inc. on June 17, 1988, and that it changed its name to Tomlinson Black Affiliate Services, Inc. on August 12, 1996, and to its present name Tomlinson Affiliate Services, Inc. on December 6, 2007.

 

Complainant asserts that the above history demonstrates that it has rights in the Tomlinson name and that it has built a reputation and a distinctly recognizable product associated with the names Tomlinson and Tomlinson Black.

 

Complainant alleges that Respondent registered the disputed domain name <tomlinsonrealestate.com> for use as a jump station, providing links to Complainant’s competitors. Complainant further alleges that this name is confusingly similar to its service mark, taking its most distinctive and utilized part, merely dropping the word ‘Black’ from it, and adding the generic term ‘real estate’, which is descriptive of Complainant’s business.

 

As for having any rights or legitimate interest in the disputed domain name, Complainant contends that Respondent is not commonly known by the name ‘Tomlinson’, that it is not one of Complainant’s licensees, that it is not authorized to use the name, and that it does not nor is it licensed to provide real estate services. It is using the disputed domain name solely to redirect Internet users to a website featuring links to third party sites that provide real estate-related goods and services in direct competition with Complainant, and that Respondent receives commercial gain through these links. The sole purpose of the site is to mislead users and to direct traffic to Complainant’s competitors for commercial gain, which is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

As for bad faith, Complainant contends that Respondent is using the disputed domain name to redirect Internet users to a website displaying links in competition with Complainant’s realty business. In addition, Respondent benefits commercially from the links displayed on the website, from which it receives click-through fees. This redirection and commercial gain constitutes a disruption of Complainant’s business and indicates that the disputed domain name was registered in bad faith.

 

In addition, Respondent has engaged in a pattern of registering and using trademark related domain names in bad faith. Complainant annexed a list of at least 48 decisions by National Arbitration Forum panels in the past year in which Respondent was a party. In nearly all of these, Respondent was ordered to transfer the domain name on the basis of illegitimate cybersquatting or typosquatting. Complainant contends that this is evidence of bad faith. 

 

B. Respondent

          In its Response, Respondent contends that Complainant has not met its burden of proving all the elements in paragraph 4(a) of the Policy.

 

             Identical or Confusingly Similar Mark

         Although Complainant refers to a federally registered trademark, Respondent points out that this mark was actually cancelled on October 20, 2007 so it is no longer in force, and that the failure to note this fact during the almost three month period from cancellation to the filing of the Complaint can be attributed to either incompetence or a desire to deliberately mislead.  Absent a federally registered mark, Complainant has, at best, a trade name and these are, Respondent contends, not protected under the Policy. 

 

          Respondent further points out that Complainant is known as ‘Tomlinson Black’, that the now defunct federal registration was held in the name of Tomlinson Black Affiliate Services, Inc., and that according to Complainant’s websites it still trades under the name of ‘Tomlinson Black’. Consequently, Complainant is not commonly known as Tomlinson standing alone and Respondent annexed the first two pages of a Google search for ‘Tomlinson’ and commented that Complainant makes neither page.  The addition of Black to the relatively common surname Tomlinson conveys an entirely different meaning than that surname standing alone. Whatever rights Complainant might have, they must be considered as a whole, they should not be dissected and, when compared with Respondent’s domain name, it is the overall impression that must be used to determine confusing similarity. Respondent contends that, under Complainant’s construction of the Policy, any words combined with either Tomlinson or Black would have to be construed as “confusingly similar.” But it is not aware of any panel adopting such a broad interpretation of the Policy.

 

          In the absence of a federally registered mark, a Complainant must provide evidence that it has common law trademark rights in order to prevail under this element of the Policy. However Complainant has made no such showing, nor has it offered proof to show how it has come by the mark it is claiming, and indeed Respondent doubts whether it could.

 

          Complainant is known as Tomlinson Black, not Tomlinson alone, and there are hundreds of people in the United States named Tomlinson. More to the point, there are a number of people named Tomlinson in the real estate field unrelated to the Complainant and Respondent annexed details of: a Kevin Tomlinson who deals with Miami Beach properties; 7 other real estate attorneys named Tomlinson in various States; 2 individual real estate appraisers named Tomlinson; and firms named Tomlinson Tyler in Pennsylvania, Tomlinson Realty in Arkansas, Tomlinson Appraisal Services in Pennsylvania, and Tomlinson Real Estate Appraisals in Illinois. Any one of these parties, all of whom are engaged in the real estate business, has more of a claim to the disputed domain than Complainant.

 

             Rights and Legitimate Interest

          Respondent has used the disputed domain name to provide a web portal which provides users with a search function as well as advertisements provided through the Google Adsense program. The links in question are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website. Even if Complainant’s claims were true, which they are not, panels have recognized that a domain name holder is not responsible for the potentially offending content where they have contracts with third parties, such as Google or Yahoo, that control that content.

 

          Respondent contends that Complainant has cited no authority or rationale to justify its parasitic interference in the free exchange of information and opportunity. Under the Policy, a Respondent may fairly use descriptive, generic, or geographic terms or acronyms of such as a commercial domain name, regardless of whether they are federally-registered, and common acronyms, surnames, and generic terms are legitimately subject to registration as domain names on a “first-come, first-served basis.” The principal that the mere ownership of a common term domain should, in and of itself, establish the owner’s rights and legitimate interest has been recognized by several ICANN panels.

 

             Bad Faith

          Respondent contends that, to prevail on a claim under this element of the Policy, a Complainant must prove that the domain was both registered and is being used in bad faith. However according to Respondent, there is nothing in the Complaint to say that Respondent was aware of Complainant or Complainant’s trade name at the time the disputed domain name was registered. Respondent had no knowledge of Complainant at that time. Complainant’s name is Tomlinson Black and, it follows logically, had Respondent been aware of Complainant the word “Black” should be present in some form in the disputed domain name.  Absent such knowledge, there can be no bad faith registration.

 

Respondent contends that as there has been no showing of any inherent distinctiveness to Complainant’s trade name, and having failed to proffer the evidence necessary to establish this, there can be no claim of any targeting since Complainant does not have an inherently distinctive mark.

 

Respondent claims that a complainant must proffer evidence to demonstrate that it specifically intended to confuse consumers seeking out Complainant, but there has been no such proof on this occasion.

 

Complainant argues that Respondent has been involved in a number of UDRP decisions in the past and, whilst it is true that there have been a number of decisions resulting in transfers, a substantial number of those were where Respondent consented to the transfer and did not argue the point.  All but 2 of the Panels in those decisions did not do any traditional analysis thus there were no findings of any kind, much less bad faith.  In addition, Respondent has prevailed in three decisions and prevailed on one domain in a four-domain decision and on one domain in a two-domain decision. Nor did Complainant note that Respondent has prevailed in a jury trial after a previous WIPO Panel ordered a transfer (The Southern Company v. Texas International Property Associates, D2007-0773 (WIPO Aug. 24, 2007)) and has reached a settlement on a number of suits brought challenging WIPO decisions such as Fifth Third Bancorp v. Texas International Property Associates, D2007-0537 (WIPO June 29, 2007).

 

Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words, such as <coolwritings.com>, <topairguns.com>, <indianloves.com>, <dailychampion.com>, <mastermasonstore.com>, and <juicymiami.com> in English, or <aeropuertosdelmundo.com>, <espanol2.com>, and <puertoricorecetas.com> in Spanish, as well as typos of such generic terms as <bankratae.com>, <violns.com>, <topdownlod.com> and <georgeousredhead.com>.  Registering such terms to which no other party can claim exclusive use is a legitimate business and done in good faith.  Merely comparing the number of complaints without considering the broader context is misleading. Such a facile comparison here would be similar to saying that because Mercedes Benz was named in more United States lawsuits last year than Yugo, that a Yugo is an inherently better automobile than a Mercedes Benz.

 

C. Additional Submissions

Both parties filed an Additional Submission which, in the case of the Respondent was entitled an “Objection and reply to Complainant’s Additional Submission”. They are summarized below.

 

Complainant

Complainant contends that Respondent is a notorious cybersquatter and typosquatter who has been repeatedly found to have improperly used minor variants of established trade or service marks for financial gain. It is ironic that it should now be challenging Complainant’s rights in its own name and mark on the basis of distinctiveness. This distinctiveness has been built up for the last several decades at considerable expense. Although Respondent argues that Complainant’s mark has not acquired a secondary meaning, its distinctiveness is what gives value to the disputed domain name, from which Respondent makes a profit from diverting Internet users to Complainant’s competitors.

 

Furthermore, although Respondent claims that it innocently registers generic words and that the combination of Complainant’s name and the description of the very business it provides is merely coincidental, both such assertions are without merit.

 

With regard to the trademark relied upon by Complainant, Complainant confirms that its federal trademark registration has lapsed. Complainant contends that it acted in good faith when it provided the Forum with details of its registered trademark, having reviewed the status of the mark just 10 days prior to its cancellation. In fact Complainant never received any notice of the imminent lapse of its trademark and learned of the true situation only upon receipt of the Response. However Complainant notes that its registration was valid and in force when the disputed domain name was registered.

 

Furthermore, Complainant alleges that it has acquired common law rights in the use of the “Tomlinson Real Estate” name. Evidence of the use of this name and the name “Tomlinson Black” was filed with the Complaint. Complainant annexed to its Additional Submission a Declaration from its President Mr. Jim Carollo. This contains, inter alia, the following information –

 

·        Complainant has been operating continuously as a group of partnerships in the real estate service field since at least 1948.

·        Its companies have operated under the names of ‘Tomlinson Black Affiliate Services, Inc.’, ‘Tomlinson Black, Inc.’, and ‘Tomlinson Real Estate Services, Inc.’, among others.

·        Complainant has continuously and exclusively used the names ‘Tomlinson’ and ‘Tomlinson Black’ for its services.

·        Complainant operates primarily in the northwest United States with offices in Idaho and Washington and it is expanding into Oregon, Montana and Arizona.

·        Complainant employs over 800 agents and staff, and is recognized as one of the top 50 real estate producers in the US.

·        Complainant has maintained a website for the last 15 years and it estimates that the cost involved in creating, maintaining, and updating this site have exceeded $1 million. At this site, real estate services and properties located in the northwest US have been advertised, but, through Google, the site is international in scope.

·        Complainant has advertised its services through television, radio, and newspaper media for approximately 30 years. It spends approximately $700,000 per annum in print advertising, and $300,000 per annum in all other media.

·        Complainant markets and advertises using the names ‘Tomlinson’ and ‘Tomlinson Black’ and has extensively used these marks to distinguish its services from its competitors.

 

Attached to this Declaration were copies of Complainant’s advertising budget for 2007 and an advertisement which is headed TOMLINSON in large letters over the words “TomlinsonRealEstateGroup.com” and 3 columns listing the telephone numbers of (presumably) the branch offices of ‘Tomlinson Black’, ‘Tomlinson Sotheby’s International Realty’ and ‘Coldwell Banker Tomlinson’. The strap line at the bottom of this advertisement reads: “No one says SOLD more often than Tomlinson”.

 

The Additional Submission goes on to assert that the names ‘Tomlinson’ and ‘Tomlinson Black’ have acquired a secondary meaning when used in conjunction with real estate services and that the public has come to associate the name ‘Tomlinson’ with Complainant’s business. It is not some generic description of the services, but specifically refers to Complainant’s business. The name and mark identifies and distinguishes Complainant’s business from competitors in the real estate field and, as a result of its long standing use and promotion there is a presumption that the mark has acquired distinctiveness. Further the (cancelled) federal trademark registration is, in itself, evidence that the mark is not merely a generic term, as claimed by Respondent.

 

Respondent has asserted that Complainant is not known as ‘Tomlinson’ and does not appear in the first 2 pages of a Google search. However this incorrect, as Complainant’s business is actually listed in this search. Furthermore, Complainant claims that, in a search for ‘Tomlinson real estate’ a copy of which was annexed to the Additional Submission, it is identified in the first 15 of 20 results.

 

Despite respondent’s claim that it is doubtful whether Complainant could ever establish a secondary meaning in the surname Tomlinson, Complainant points to Decisions under the Policy finding rights in surnames.

 

Respondent has not utilized the name ‘Tomlinson’ alone but in conjunction with the term ‘real estate’ and Complainant contends that, in common usage, this can only refer to Complainant’s business. This is not a combination of generic terms, as is alleged by Respondent, but actually suggests an affiliation with Complainant’s business.

 

Complainant refers to a case in which Respondent was again the respondent where it was found that the use of a name as a web portal and advertising did not constitute a bona fide offering of goods or services, or a legitimate or fair use under the Policy. Azar Int’l Inc. v. Tex. Int’l Prop. Assoc., 1122600 (Nat. Arb. Forum Feb. 18, 2008).

 

The combination of Complainant’s name and the generic description of its business creates the intentional confusing similarity between Complainant’s name and the disputed domain name. The name ‘Tomlinson’ in the disputed domain name is not  descriptive, generic or geographic term as Respondent states, but instead falsely implies an association with Complainant. The sole function of the website at the disputed domain name is to cyber squat Complainant’s mark to promote Complainant’s competitors in the real estate industry.

 

Respondent has not produced any evidence that its use of the disputed domain name to redirect Internet users to competitors for a fee and providing a search function is a bona fide offering of services. 

 

On the question of bad faith, Complainant alleges that Respondent’s claim that a complainant must prove actual knowledge of the respondent is erroneous. Evidence of bad faith may include creating a likelihood of confusion as to source affiliation and sponsorship of a respondent’s website for commercial gain and patterns of conduct of the respondent registering the marks of others. A panel may look at the “totality of the circumstances” to determine if a domain name has been registered in bad faith.

 

Respondent

Respondent vigorously objected to the filing of Complainant’s Additional Submission which, it claims, is beyond the scope of the UDRP Rules. Under Rule 12 of the Rules for the Uniform Domain Name Dispute Resolution Policy (“the Policy Rules”), it is quite clearly stated that “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” The Forum’s Supplemental Rule 7 allows for the filing of such statements and documents without a request from the Panel.  Respondent believes that Rule 7 is an improper modification of the Rules.  According to paragraph 1 of the Policy Rules, Supplemental Rules are defined as follows:  “Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, the means for communicating with the Provider and the Panel, and the form of cover sheets.”  Clearly the Policy Rules anticipate that the Supplemental Rules of any Provider are housekeeping in nature and are not meant to allow substantial modifications of the rights of the parties under the Policy.  WIPO panelists, by way of example, generally hold to a “one filing rule”.

 

Commenting on the Additional Submission, Respondent contends that Complainant’s argument is essentially this – “We misled the Panel because we never bothered to follow up on the fact that we no longer had a federally registered mark, but the Respondent is worse.”  This proceeding is not, however, a popularity contest but rather a proceeding wherein Complainant has the burden of proof under the Policy, a task in which it has failed.

 

What the Additional Submission failed to do is prove that Complainant currently has common law trademark rights in its trade name. In addition, Complainant misunderstands the import of one of the arguments made in the Response, namely that that there are many other parties named Tomlinson who deal in real estate and because of this, no one party has the rights to the domain and Respondent may, and can, make use of the surname coupled with the name of a common business.

 

In addition, since Complainant’s federal registration was cancelled, it is attempting to rely upon the long discredited “constructive notice” argument.  Complainant’s argument is that when it did have its federal registration, Respondent should have searched the USPTO looking for Complainant’s marks prior to registering the disputed domain name.  This argument fails on three grounds.  First, Panels have rejected it.  Second, Complainant’s mark was for “Tomlinson Black” and since the disputed domain name does not include the term ”black” in any way, had Respondent found the mark (which it was not required to do) it would have disregarded it.  Third, the surname Tomlinson is in use by a good many others in the real estate business and, as such, Respondent was certain that the disputed domain was one to which many others could claim and therefore Respondent was free to register it.

           

PRELIMINARY ISSUE

Respondent has challenged the legitimacy of the Forum’s Supplemental Rules, and Rule 7 in particular. In the opinion of the Panel there is very little merit in its submission.

 

The Forum’s first Supplemental Rules were effective as from October 1, 2000 and 3 other versions were published before the present Rules was adopted and became effective on February 1, 2006. A version of the current Rule 7 was included in all of them. Thus, ever since the Forum was appointed by ICANN as a Provider of Panel Decisions under the Policy, it has been prepared to accept Additional Submissions from either party – subject to the payment of a fee. Hundreds of thousands of Decisions have issued since 2000 and, in the experience of this Panel, in most cases Additional Submissions – from both parties – have been filed and accepted – by both parties.

 

It is true that there is no specific provision in the Policy Rules for the filing of any Additional Submissions although Panelists do have discretion to accept them if they are filed. Respondent states that WIPO Panelists “generally hold to a ‘one filing’ rule”. However this is not the experience of the present Panel. In Esquire Innovations, Inc. v. Iscrub.com, he was part of the majority in a 3-person Panel which was prepared to accept an Additional Submission under the WIPO Rules, and he actually did the research on the matter which appears in the final Decision and which concluded that if the Submission was timely filed, if it was received before the appointment of the Panel, if the Respondent had had an opportunity respond to it, and if it contained new evidence, then there was no good reason for not accepting it.  D2007-0856 (WIPO Oct. 5, 2007)

 

The Panel in this case notes that most of the above conditions apply in this case. In addition, the Panel has examined a number of the Decisions in which Respondent featured, a list of which was annexed to the Complaint, and notes that Respondent has frequently objected to the filing of an Additional Submission on the same grounds as in this case, and that just as frequently its objections have been dismissed. The Panel sees no reason to depart from this practice and so dismisses Respondent’s objection to Complainant’s Additional Submission.

 

In passing, the Panel also notes, following the above examination of past Decisions, that Respondent’s claim that in a substantial number of these it had consented to a transfer, is not factually accurate.  

 

DISCUSSION AND FINDINGS

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the 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 originally claimed rights in its registration of the trademark TOMLINSON BLACK at the USPTO. However Respondent provided evidence that this registration had in fact lapsed before the Complaint was filed and Complainant accepted this, whilst claiming that it was completely unaware that the mark was in jeopardy. Its rather desperate claim that, despite this, the mark was in force when the disputed domain name was registered is hardly worth examining as paragraph 4(a)(i) of the Policy makes it clear that a complainant must have trademark or service mark rights at the time of filing the Complaint. In any case, the Panel doubts whether in fact TOMLINSON BLACK is confusingly similar to the disputed domain name <tomlinsonrealestate.com>. If the trademark had consisted solely of the word TOMLINSON, such doubts would not have arisen as it is well established that there is similarity when a domain name consists of a mark in which a complainant has rights followed by a generic term – disregarding the top-level domain name, as it is of course customary when comparing a mark with a domain name to ignore the generic top-level domain “.com” as all domain names must have a top-level domain. For example, in American Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) it was found that the <americaneaglestores.com> domain name was confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark and, in Gillette Co. v. RFK Associates., FA 492867 (Nat. Arb. Forum July 28, 2005) it was found that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark.

 

Both parties have accepted that, in the absence of a registered trademark, common law rights – if proved – will satisfy the requirements of paragraph 4(a)(i) of the Policy. Complainant has claimed that it does have common law rights in the name ‘Tomlinson’ but Respondent disputes this and indeed the evidence for it is somewhat sparse.

 

‘Tomlinson’ is not an uncommon surname, and ‘real estate’ is a common generic term. As was said in the case of Essential Travel Ltd. v. essentialtravelcom, “[t]o acquire common law trademark rights, both under English law and the case law which has developed under the Policy, a Complainant must establish evidence of acquired distinctiveness. The burden in this respect is particularly high where the mark asserted comprises words in common usage –  namely ESSENTIAL TRAVEL – as it does in this case.”  D2004-0205 (WIPO July 7, 2004).

 

In the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” it is stated that in order to successfully assert common-law or unregistered trademark rights, a complainant “must show that the name has become a distinctive identifier associated with the complainant of its goods and services. Relevant evidence of such ‘secondary meaning’ includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”

 

In its Complaint, Complainant claimed to have common law rights in ‘Tomlinson Real Estate’ and ‘Tomlinson Black’. However in its Additional Submission it claims, instead, to have continuously and exclusively used the names ‘Tomlinson’ and ‘Tomlinson Black’ for real estate services. It apparently has “over 800 agents and staff” but provides no breakdown as to how many of these persons are actually employed by it, how many of this number are agents, or whether the agents act exclusively for it or not. It also claims to be recognized as one of the top 50 real estate producers in the US, without providing any authority for this assertion or stating whereabouts in the list it stands. It apparently spends in the region of $1 million a year on advertising, and has spent about the same amount on its website in the last 15 years. However in a business, such as real estate, which relies heavily on publicizing the properties which a firm has for sale or rent, and for a firm operating as extensively as Complainant claims, this does not sound like a huge amount. Complainant has, surprisingly, provided the Panel with no information about its turnover. It does not appear to have ever been called, simply, ‘Tomlinson’, although this name has appeared in each of the 4 names under which it has traded since its formation in 1988. Indeed, the only actual evidence for the use of the name ‘Tomlinson’ alone is in an undated advertisement which was attached to the Declaration of Complainant’s President (whose name is not Tomlinson), and even that document actually advertises the business of 3 businesses within the group.

 

In the Declaration by Complainant’s President – which the Panel notes is not sworn – it is stated that Complainant makes exclusive use of the name ‘Tomlinson’. However as Respondent has pointed out, this is not true for there are at least 4 other firms with ‘Tomlinson’ in their names, and 10 individuals called ‘Tomlinson’, all in the real estate business in the US. It is, as noted by Respondent, a common surname. The Panel has therefore concluded that Complainant has no monopoly of the name ‘Tomlinson’ in relation to real estate, and that to establish common law rights in this name in relation to the real estate business it should have provided better and more substantial evidence.

 

Consequently the Panel has decided that Complainant has not established, to its satisfaction, that it has common law rights in the name TOMLINSON by itself. As a result, the claim under paragraph 4(a)(i) fails.

 

Respondent may indeed be a serial cybersquatter or typosquatter, as Complainant contends, and the evidence for the latter description would certainly appear to point in that direction, but that in itself is not enough. A complainant must prove, to the satisfaction of a panel, all three elements of paragraph 4(a) of the Policy.   

 

Consequently, since Complainant has failed at the first hurdle, the Panel declines to analyze the other two elements of the Policy. It was held, for example, in 01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig, that if the complainant does not satisfy paragraph 4(a)(i) of the Policy by showing it has rights in a mark, the panel need not consider whether the respondent has rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the Policy or whether it registered and is using the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.  D2004-0541 (WIPO Sept. 10, 2004).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall DENIED and the Complaint DISMISSED.

 

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David H Tatham, Panelist
Dated: March 11, 2008

 

 

 

 

 

 

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