ERA TM LLC and ERA Franchise Systems LLC v. eracostarica.com and eracostarica.net
Claim Number: FA0805001185704
Complainant is ERA TM LLC and ERA Franchise Systems LLC (“Complainant”), represented by Joan T. Pinaire, of Realogy Corporation, New Jersey, USA. Respondent is eracostarica.com and eracostarica.net (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <eracostarica.com> and <eracostarica.net>, registered with Domaindiscover.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 5, 2008.
On May 9, 2008, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the <eracostarica.com> and <eracostarica.net> domain names are registered with Domaindiscover and that Respondent is the current registrant of the names. Domaindiscover has verified that Respondent is bound by the Domaindiscover 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 May
16, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 5, 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@eracostarica.com and postmaster@eracostarica.net
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 11, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 assertions:
1. Respondent’s <eracostarica.com> and <eracostarica.net> domain names are confusingly similar to Complainant’s ERA mark.
2. Respondent does not have any rights or legitimate interests in the <eracostarica.com> and <eracostarica.net> domain names.
3. Respondent registered and used the <eracostarica.com> and <eracostarica.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a franchisor of independently owned and operated real estate brokerage offices. Complainant registered the ERA mark with the United States Patent and Trademark Office (“USPTO”) on February 1, 1977 (Reg. No. 1,057,923). In addition, Complainant holds numerous other USPTO registrations incorporating the ERA mark, and registered the mark with the trademark authority of Costa Rica on July 29, 1992 (Reg. No. 80,449). Complainant also owns the <era.com>, <era.biz>, <eraonline.com>, <teamera.com>, <erahouses.com>, and <costricaera.com> domain names.
Respondent registered the <eracostarica.com> and <eracostarica.net> domain names on March 22, 2004. Respondent was previously using the disputed domain names to redirect Internet users to the <costaricainvestmentrealestate.com> domain name where an unaffiliated real estate business in Costa Rica was marketed. The disputed domain name currently resolves to a parked web page offering unrelated commercial listings.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 registered the ERA mark with the USPTO and the Costa Rican trademark authority. In Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003), the panel held that “Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.” Similarly, the Panel here concludes that Complainant has established rights in the ERA mark under Policy ¶ 4(a)(i) through its governmental trademark registrations. See Cal. Cosmetics, Inc. v. IMC Inc., FA 1174491 (Nat. Arb. Forum May 26, 2008) (“The Panel finds that [Complainant’s USPTO] registration sufficiently satisfies the ownership requirement of Policy ¶ 4(a)(i).”).
The <eracostarica.com> and <eracostarica.net> domain names incorporate Complainant’s ERA mark, add the geographical term “Costa Rica,” and add the generic top-level domains (“gTLDs”) “.com” and “.net.” The Panel finds that none of the modifications to Complainant’s mark sufficiently distinguish the disputed domain names from the ERA mark. First, previous panels have consistently found that geographic terms do not distinguish a disputed domain name from a mark. The panel in VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) found confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark. Like the panel in Verisign, the Panel here concludes that the addition of the geographic term “Costa Rica” is not a distinguishing feature of the disputed domain names. Moreover, all registered domain names are required to have a top-level domain. Consequently, the Panel finds that the addition of the gTLDs “.com” and “.net” to Complainant’s ERA mark are not relevant in its analysis of confusing similarity. Therefore, the Panel finds that the disputed domain names are confusingly similar to Complainant’s ERA mark pursuant to Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has the initial burden of showing that Respondent lacks all rights and legitimate interests in the disputed domain names. When a prima facie case has been established under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show rights and legitimate interests in the disputed domain names. For example, in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000), the panel held that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue.” Complainant has asserted that Respondent is not using the <eracostarica.com> and <eracostarica.net> domain names in any manner that would establish rights or legitimate interests, and states that Respondent is not commonly known by the disputed domain names. The Panel finds that Complainant has made a prima facie case pursuant to Policy ¶ 4(a)(ii), and effectively shifted the burden of proof to Respondent. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent has not responded to the Complaint. The panel in Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) found that the respondents’ failure to respond could be construed as an admission that they had no legitimate interests in the domain names. Thus, here Respondent’s failure to respond allows the Panel to presume that Respondent has no rights or legitimate interests in the disputed domain names. The Panel will, however, consider all evidence in the record under Policy ¶ 4(c). See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).
Complainant contends that Respondent has never been commonly known by the disputed domain names. Complainant also maintains that Respondent has never been licensed by Complainant to use the ERA mark, nor has Respondent been otherwise affiliated with it. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the 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 the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent was previously using the <eracostarica.com> and <eracostarica.net>
domain names to redirect Internet users to the web page at the
<costaricaninvestmentrealestate.com> domain name where real estate and
resort-related services were advertised.
In Computerized Security Systems, Inc. v. Hu, FA 157321 (Nat. Arb.
Forum June 23, 2003), the panel found that “Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.” The Panel here also finds that Respondent’s
previous use is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or
fair use under Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The disputed domain names currently resolve to a parked
website where unrelated links are displayed.
The Panel also finds that this current use does not demonstrate rights
or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS
into Tech, FA 198795 (Nat. Arb. Forum Dec.
6, 2003) (“Diverting customers, who are looking for products relating to the
famous SEIKO mark, to a website unrelated to the mark is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Golden Bear Int’l,
Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent was previously commercially benefiting by using the <eracostarica.com> and <eracostarica.net> domain names to redirect Internet users to a website competing with Complainant’s business. Respondent’s use of the disputed domain names was capable of creating confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolved from the disputed domain names, and evidenced registration and use in bad faith under Policy ¶ 4(b)(iv). See Toyota Motor Sales U.S.A. Inc. v. Clelland, FA 198018 (Nat. Arb. Forum Nov. 10, 2003) (“Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant. This establishes bad faith as defined in Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”).
Respondent’s current use of the disputed domain names to
redirect Internet users to a web page where unrelated links are displayed also
demonstrates registration and use in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore,
FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent
registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)
because the respondent was using the confusingly similar domain name to attract
Internet users to its commercial website); see also Kmart v. Khan, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits
from its diversionary use of the complainant's mark when the domain name
resolves to commercial websites and the respondent fails to contest the
complaint, it may be concluded that the respondent is using the domain name in
bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel also finds that Respondent’s previous use of the <eracostarica.com> and <eracostarica.net>
domain names was capable of disrupting Complainant’s business, and evidenced
registration and use in bad faith under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by
attracting Internet users to a website that competes with the complainant’s
business); see also Surface Prot.
Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that,
given the competitive relationship between the complainant and the respondent,
the respondent likely registered the contested domain name with the intent to
disrupt the complainant's business and create user confusion).
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 GRANTED.
Accordingly, it is Ordered that the <eracostarica.com> and <eracostarica.net> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 25, 2008
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