TM Acquisition Corp. v. DVD Internet
Marketing
Claim Number: FA0206000114517
PARTIES
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.
PANEL
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.
PROCEDURAL HISTORY
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 postmaster@century21herron.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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
FINDINGS
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.
DISCUSSION
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.
DECISION
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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