TM Acquisition Corp. v. DVD Internet Marketing
Claim Number: FA0206000114517
Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”). Respondent is DVD Internet Marketing, Monte Vista, CO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <century21herron.com>, registered with Tucows.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 7, 2002; the Forum received a hard copy of the Complaint on June 10, 2002.
On June 8, 2002, Tucows confirmed by e-mail to the Forum that the domain name <century21herron.com> is registered with Tucows and that Respondent is the current registrant of the name. Tucows has verified that Respondent is bound by the Tucows 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 June 18, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 8, 2002 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 email@example.com by e-mail.
Having received no 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 July 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.” 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <century21herron.com> domain name is confusingly similar to Complainant’s registered CENTURY 21 family of marks.
2. Respondent does not have any rights or legitimate interests in the <century21herron.com> domain name.
3. Respondent registered and used the <century21herron.com>
domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns 89 registered trademarks and service marks for its CENTURY 21 family of marks with the U.S. Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,063,488; 1,085,039; and 1,304,095). Complainant is also the owner of trademark registrations for numerous CENTURY 21 marks in 101 additional countries (e.g., Australia, Czech Republic, Peru, Sweden, and Vietnam, among others).
Complainant has used the CENTURY 21 mark continuously in connection with the offering of real estate brokerage services since April 16, 1972. Over the past thirty years, Complainant and its subsidiaries have expended many millions of dollars and significant time, resources and effort in advertising, promoting and establishing the goodwill of the CENTURY 21 mark. Presently there are approximately 4,100 franchised offices in the U.S. and another approximately 2,400 franchised offices in other countries. Complainant also operates its principal website from the <century21.com> domain name.
As a result of the aforementioned efforts, Complainant’s CENTURY 21 family of marks are distinct and famous.
One of Complainant’s franchisees operates under the trade name CENTURY 21 Herron Realty. CENTURY 21 Herron Realty uses the domain name <jherron.com> for their business since Respondent holds the corresponding domain name <century21herron.com>.
Respondent registered the disputed domain name on June 7, 2001. Complainant’s investigation revealed that Respondent is an Internet marketing company who uses the disputed domain name to link to another website, located at <taos-newmex.com>. Southwestern Mortgage, Inc. is a full service mortgage company and a direct competitor of Complainant.
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 the 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.
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; and
(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.
Complainant has established rights in the CENTURY 21 family of marks through registration with the USPTO and various authorized international organizations, and subsequent continuous use.
Respondent’s <century21herron.com> domain name is confusingly similar to Complainant’s registered CENTURY 21 mark. Respondent’s domain name deviates by the addition of the word “herron,” an industry related word of significance because one of Complainant’s subsidiary’s identity is Herron Realty. Respondent’s addition of a name closely associated with Complainant and Complainant’s mark fails to create a separate and distinct mark. Furthermore, the likelihood of confusion is increased because Respondent competes in the same industry as Complainant. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a term that has an obvious relationship to the Complainant’s business); see also Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Therefore, it is presumed that Respondent lacks rights and legitimate interests in the <century21herron.com> domain name. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to submit a Response in this proceeding, the Panel is permitted to make all reasonable inferences in favor of Complainant. 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”).
Respondent uses the infringing domain name to divert Complainant’s potential customers to its competing mortgage website. Respondent’s opportunistic registration of a domain name in order to monetarily benefit from the goodwill associated with Complainant’s CENTURY 21 mark does not constitute a bona fide offering under Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).
There is no information before this Panel that suggests Respondent is commonly known by the <century21herron.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant’s investigation has provided uncontested evidence that Respondent’s domain name resolves to a website representing Southwestern Mortgage, Inc., which implies that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The criterion specified in ¶ 4(b) of the Policy does not represent an exhaustive list of bad faith evidence. The Panel must take into consideration the totality of circumstances in order to determine if Respondent registered or used the domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
Complainant owns numerous registrations on the Principal Register of the USPTO for its CENTURY 21 family of marks. Complainant has operated under the CENTURY 21 moniker since 1972 and has sought successful international registration of its CENTURY 21 mark in 101 countries. Because Complainant’s mark is distinct and famous, Respondent competes in the identical industry as Complainant, and the aforementioned Principal Register status, Respondent had constructive and actual notice of Complainant’s rights in the CENTURY 21 mark. Seeking registration of an infringing domain name, despite knowledge of another’s preexisting rights, represents bad faith registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the world-wide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (noting that “a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).
Because Respondent competes in the same industry as Complainant it can be inferred that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant, thus, exhibiting bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining “competitor” as "…one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).
Furthermore, Respondent’s infringing domain name was registered in an attempt to opportunistically trade on Complainant’s CENTURY 21 mark and accompanying goodwill. Respondent’s registration and use of Complainant’s mark represents bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that ICQ mark is so obviously connected with Complainant and its products that the use of the domain names by Respondent, who has no connection with Complainant, suggests opportunistic bad faith); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).
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 hereby GRANTED.
Accordingly, it is Ordered that the <century21herron.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: July 12, 2002
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