Verani Realty, Inc. d/b/a Prudential Verandi Realty, Inc. v. B. Ytagen
Claim Number: FA0207000117020
Complainant is Verani Realty, Inc., Londonberry, NH (“Complainant”) represented by John F. Bisson, of Wenger & Cronin, PC. Respondent is B. Ytagen, New Boston, NH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <prudentialverani.com>, <prudentialveranirealty.com> and <prudentialverani-foster.com>, registered with Network Solutions, 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.
Judge Karl V. Fink (Ret.) is the Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 23, 2002; the Forum received a hard copy of the Complaint on July 24, 2002.
On July 26, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <prudentialverani.com>, <prudentialveranirealty.com> and <prudentialverani-foster.com> are registered with Network Solutions, Inc. and that the Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 July 31, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 20, 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, firstname.lastname@example.org, and email@example.com by e-mail.
A timely Response was received and determined to be complete on August 20, 2002.
On September 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Karl V. Fink (Ret.) as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
Complainant, Verani Realty, Inc. d/b/a Prudential Verani Realty, has been providing real estate brokerage services in New Hampshire since 1964.
In 1989, Complainant joined The Prudential Real Estate Affiliates, Inc. as a franchisee. Under the franchise agreement, Complainant was granted a license to use the PRUDENTIAL mark as part of its business name. It registered the trade name “Prudential Verani Realty” with the Secretary of State for the State of New Hampshire and begun conducting its real estate business under that name starting in 1989.
Marsha W. Foster, Inc., similarly became a franchisee of The Prudential Real Estate Affiliates in 1989. It registered the trade name “Prudential Marsha W. Foster Realtors” and begun using that name in providing real estate services. Complainant purchased the assets of Marsha W. Foster, Inc., including the goodwill and the protected rights in the name in 2001.
Through the long use and promotion of the business and service marks PRUDENTIAL VERANI REALTY and PRUDENTIAL VERANI FOSTER REALTY (the “Service Marks”), Complainant has achieved a tremendous amount of goodwill in those marks. Consumers of real estate services in New Hampshire, as well as the real estate trade have come to associate the Service Marks exclusively with Complainant.
On July 5, 2001, the Respondent, B. Ytgen, registered the domain names <prudentialveranirealty.com>, <prudentialverani.com>, and <prudentialverani-foster.com> (the “Domain Names”) with the domain registrar VeriSign, Inc.
Respondent is not, and never has been, affiliated with Complainant or Prudential Marsha Foster.
On or about June 25, 2002, Respondent posted a website accessible at each of the Domain Names. The website criticized the services allegedly provided by Complainant to Respondent, and included offensive images.
Complainant, through its attorney, contacted Respondent and requested that he cease and desist from his registration and use of the Domain Names.
Respondent admitted that he deliberately chose domain names that consumers would believe lead to Complainant’s website in order to increase traffic to his website. He then offered to sell the Domain Names to Complainant.
For the transfer of the Domain Names, Complainant offered to reimburse Respondent’s out-of-pocket registration costs. Respondent, however, refused this offer stating that the names were far more valuable on the “open market.”
At some point after the correspondence, Respondent removed the offensive material accessible at each of the Domain Names and replaced it with a placeholder stating, “under construction.”
The Domain Names are identical to or confusingly similar to Complainant’s Service Marks, which are protected by common law.
Respondent has no rights or legitimate commercial interest in the Domain Names. It is well settled that a person’s right to voice criticism of any entity’s mark is not unbridled. Numerous decisions have held that the use of a confusingly similar domain name that only incorporated a third party mark for a critical site and that does not include a communicative element, such as “sucks” or some other pejorative term, is not a legitimate noncommercial use of a third party’s mark.
It is inevitable that many Internet users looking for Complainant’s website will type <prudentialveranirealty.com>, <prudentialverani.com>, or <prudentialverani-foster.com> and be misdirected to Respondent’s website. Respondent admitted that he chose the Domain Names because of the potential to confuse the searching public into viewing his website postings.
Respondent’s misdirection of users to his website not a legitimate use of the Domain Names and constitutes evidence of bad faith. Respondent’s registration of multiple domain names that incorporates Complainant’s Service Marks is additional evidence of bad faith. Respondent’s bad faith is also shown by his seeking to make a profit from the sale of the Domain Names on the “open market.”
Respondent obtained the “.com” names to tell the world how badly it was treated by the then Foster Realty, which is now Complainant. Respondent chose the names so that potential customers would believe it lead to the web site of Complainant.
Respondent complied with Complainant’s request and has had the site’s content dropped leaving only a “under construction” header.
Respondent never offered to sell the domain names. Respondent did reflect that perhaps the names were worth more than Complainant’s $100 offer on the open market.
For the reasons set forth below, the Panel finds Complainant has proven that the domain names should be transferred.
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
The Panel finds based on Complainant’s longstanding use of the two trade names that Complainant has common law rights to the VERANI REALTY and PRUDENTIAL VERANI REALTY marks. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy. McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). See British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names” and applying the Policy to “unregistered trademarks and service marks”).
The Panel finds the <prudentialveranirealty.com> domain name is identical to Complainant’s PRUDENTIAL VERANI REALTY mark because it incorporates Complainant’s entire mark and merely adds the generic top-level domain “.com.” The disputed domain name is identical because the addition of a generic top-level domain is irrelevant when determining whether a domain name is identical. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).
The Panel finds that <prudentialverani.com> and <prudentialverani-foster.com> are confusingly similar to Complainant’s marks because they incorporate most of Complainant’s mark and merely omit the term realty. The omission of word from Complainant’s mark does not create a distinct mark capable of overcoming a claim a confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).
The Panel also finds that the <prudentialverani-foster.com> domain name is confusingly similar because it adds the name of one of Complainant’s real estate agents to the mark. The addition of a term that describes Complainant’s business does not create a distinct mark capable of overcoming a claim of confusing similarity. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Respondent admits that the domain names in dispute are identical and confusingly similar to Complainant’s marks.
Complainant has proven this element as to each of the domain names.
Rights or Legitimate Interests
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain names because it is using confusingly similar and identical domain names to attract Complainant’s customers to Respondent’s website. The use of domain names that are identical and confusingly similar to Complainant’s mark in order to attract Internet users to Respondent’s website is not in relation to a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).
Respondent is not commonly known by any of the disputed domain names or by the PRUDENTIAL VERANI REALTY marks. Therefore, Respondent has no rights or legitimate interests in the disputed domain names pursuant to 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Respondent is not using the disputed domain names for a legitimate noncommercial or fair use. Respondent is using confusing similar and identical domain names to attract Complainant’s customers to a criticism website. The Panel finds that the use of identical and confusingly similar domain names for a criticism website is not legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Robo Enter., Inc. v. Tobiason, FA 95857 (Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or legitimate interest in the domain name <roboenterprises-investors.com>, noting that while the content of Respondent’s website may enjoy First Amendment and fair use protection, those protections do not create rights or a legitimate interest with respect to a domain name which is confusingly similar to another’s trademark); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark).
Complainant has proven this element as to each of the domain names.
Registration and Use in Bad Faith
Complainant has proven this element as to each of the domain names.
Complainant has proven each of the required elements as to each of the domain names. Therefore, it is ordered that the domain names, <prudentialveranirealty.com>, <prudentialverani.com> and <prudentialverani-foster.com>, be transferred to Complainant.
Judge Karl V. Fink (Ret.), Panelist
Dated: September 20, 2002
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