RE/MAX International, Inc. v. Lorna Kang
Claim Number: FA0207000117325
Complainant is RE/MAX International, Inc., Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf, Lamb, Greene & MacRae LLP. Respondent is Lorna Kang, Perak, MALAYSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remaxcalifornia.com>, registered with Iholdings.com.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.
Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 30, 2002; the Forum received a hard copy of the Complaint on July 31, 2002.
On August 1, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain name <remaxcalifornia.com> is registered with Iholdings.com and that Respondent is the current registrant of the name. Iholdings.com has verified that Respondent is bound by the Iholdings.com 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 August 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 21, 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 September 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
A. Complainant makes the following allegations in this proceeding:
The <remaxcalifornia.com> domain name registered by Respondent is confusingly similar to Complainant’s RE/MAX mark.
Respondent has no rights or legitimate interests in the <remaxcalifornia.com> domain name.
Respondent registered and used the <remaxcalifornia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds numerous trademarks registered with the United States Patent and Trademark Office (“USPTO”) for the RE/MAX mark, including, inter alia, Reg. Nos. 1,139,014; 1,339,510 and 2,054,698. Complainant actively uses the RE/MAX mark in association with real estate brokerage services and insurance brokerage services, along with denoting ancillary products.
Complainant operates through a network of franchisees and affiliated independent contractor associates who are authorized to use the RE/MAX mark in connection with providing real estate brokerage services. Complainant has used the RE/MAX mark in connection with its real estate business since at least as early as 1973.
Complainant’s network is comprised of as many as 4,200 individual offices and its RE/MAX mark has been used in connection with millions of home sale transactions in the United States and abroad, resulting in approximately one trillion dollars in sales.
Complainant has spent roughly $3 billion on worldwide advertisements and promotions for services offered under the RE/MAX mark. In addition, each authorized RE/MAX agent spends an average of $5,000. per year on promotional and advertising activities publicizing the RE/MAX mark.
Complainant operates a portion of its business and promotions at the <remax.com> website. Complainant also holds registration rights in numerous other domain names, including, but not limited to: <remax.net>, <remax.org>, <remax.us> and <remaxcommercialbrokerage.com>. Furthermore, through one of its franchisees, RE/MAX of California & Hawaii, Inc., Complainant owns registration rights in the domain names <remax-california.com>, <remax-ca.com>, <remax-ca.net>, <remax-cahi.com>, and <remax-cahi.net>.
Respondent registered the <remaxcalifornia.com> domain name on March 23, 2002. Respondent uses the domain name to direct Internet traffic to a website that displays an advertisement for a real estate brokerage service unrelated to Complainant. In addition, the website attached to <remaxcalifornia.com> displays links to online casinos and purports to operate as a search engine.
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 established rights in the RE/MAX mark through proof of numerous registrations with the USPTO and by continuous use of the mark since at least 1973.
The domain name registered by Respondent, <remaxcalifornia.com>, contains Complainant’s entire RE/MAX mark absent the forward-slash and with the addition of the geographic qualifier “California.” The omission of a forward slash in a second-level domain, which is a part of Complainant’s mark, is insignificant in determining the similarity of the disputed domain name and the mark in question, because letters, numbers, and hyphens are only permitted in second level domains. Also, the addition of a geographic qualifier to Complainant’s mark fails to distinguish the disputed domain name from the RE/MAX mark. Therefore, Respondent’s <remaxcalifornia.com> domain name is confusingly similar to Complainant’s mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Chi-Chi’s Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S mark, despite the omission of the apostrophe and hyphen from the mark); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant’s CMGI mark); see also Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights and legitimate interests to the mark contained in its entirety in the domain name that Respondent registered. Respondent did not answer Complainant’s assertions that Respondent had no rights or legitimate interests in the <remaxcalifornia.com> domain name. Complainant’s assertions shift the burden to Respondent to affirmatively show such rights and legitimate interests in the domain name. Since Complainant’s assertions have gone uncontested, the Panel may presume that Respondent has no such rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, in the absence of a Response, all reasonable inferences may be drawn 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”); see also Vertical Solutions Mgmt., Inc. v. Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).
Respondent uses the <remaxcalifornia.com> domain name to resolve to a website that purports to be a search engine. Complainant’s investigation reveals that upon entering the <remaxcalifornia.com> domain name an Internet user is diverted to the search engine website where a prominent banner advertisement pops up. The banner advertisement relates to the real estate brokerage industry and has no connection with Complainant. Thus, Respondent is using the subject domain name to divert Internet traffic to a website that develops revenue from a real estate entity in competition with Complainant. Such a use does not represent a connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it does not constitute a noncommercial fair use 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 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 FAO Schwarz v. Zuccarini, FA 95828 (Nat. Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the domain names <faoscwartz.com>, <foaschwartz.com>, <faoshwartz.com>, and <faoswartz.com> where Respondent was using these domain names to link to an advertising website).
No evidence on record shows that Respondent is commonly known by the <remaxcalifornia.com> domain name and Respondent has not come forward with evidence to that effect. Furthermore, Complainant has averred and Respondent has not challenged Complainant’s assertion that Respondent is not a franchisee of Complainant’s and that Respondent has no authorized permission to use the RE/MAX mark. Therefore, Respondent has no rights or legitimate interests in the domain name 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).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the <remaxcalifornia.com> domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <remaxcalifornia.com> domain name clearly represents bad faith under Policy ¶ 4(c)(iv). Respondent’s purported search engine website, to which the domain name resolves, contains banner advertisements. The very nature of banner advertisements is to generate revenue for the website owner/operator, Respondent. Respondent is gaining commercially from the infringing use of the subject domain name, while at the same time Respondent is using Complainant’s RE/MAX mark as a means of confusing Internet users as to Complainant’s affiliation with the purported search engine website. Prior Panels have consistently held that such use represents bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).
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 the requested relief shall be hereby granted.
Accordingly, it is Ordered that the domain name <remaxcalifornia.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 24, 2002.
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