Claim Number: FA0806001213084
PARTIES
Complainant is Sarasota
Association of Realtors, Inc. (“Complainant”), represented by Douglas A. Cherry, of Abel Band,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <thesarasotamls.com>,
registered with Network Solutions, Inc.
PANEL
The undersigned certifies that they have acted
independently and impartially and to the best of their knowledge have no known
conflict in serving as Panelists in this proceeding.
Mark McCormick, Chair,
Judge Ralph Yachnin and Diane Cabell, as Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 30, 2008; the
National Arbitration Forum received a hard copy of the Complaint on July 1, 2008.
On June 30, 2008, Network Solutions, Inc. confirmed by e-mail to
the National Arbitration Forum that the <thesarasotamls.com> domain name is
registered with Network Solutions, Inc.
and that the Respondent is the current registrant of the name. 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 8, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 28, 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@thesarasotamls.com by e-mail.
On July 25, 2008, Respondent filed with the National Arbitration Forum
under the National Arbitration Forum’s Supplemental Rule 6 a Request for an
Extension of Time in which to Respond to the
Complaint. On June 25, 2008, the
National Arbitration Forum granted this request extending the deadline by which
Respondent could file a Response to the Complaint to August 4, 2008.
On July 30, 2008, Respondent filed with the National Arbitration Forum
under the National Arbitration Forum’s Supplemental Rule 6 a Request for an
Extension of Time in which to Respond to the
Complaint. On June 30, 2008, the
National Arbitration Forum granted this request extending the deadline by which
Respondent could file a Response to the Complaint to August 5, 2008.
A timely Response was received and determined to be complete on August 5, 2008.
Complainant filed an Additional Submission on August 11, 2008, which
was timely.
On August 13, 2008, pursuant to Complainant’s
request to have the dispute decided by a three-member Panel, the National
Arbitration Forum appointed Mark McCormick, Chair, Judge Ralph Yachnin
and Diane Cabell, as Panelists.
On August 18, 2008, Respondent filed an Additional Submission, which
was untimely under Supplemental Rule 7.
The Panel had an option of refusing to consider it. In the interest of justice and equity, the Panel
has chosen to consider this Additional Submission in its Decision.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name <sarasotamls.com> is
identical or confusingly similar to service marks in which Complainant has
common law trademark/service mark rights.
They are: “Sarasota MLS,” “Sarasota
Multiple Listing Service,” “Sarasota Association of Realtors MLS,” and “Sarasota
Association of Realtors Multiple Listing Service.” The SARASOTA MLS mark is at issue here. Complainant asserts that Respondent has no
rights or legitimate interests in the disputed domain name and that Respondent
operates a website using the domain name to mislead the public to believe that
Respondent is the source or has control of the Sarasota Multiple Listing
Service. Complainant alleges that
Respondent registered and is using the domain name in an effort to attract Internet
users to his website for commercial gain by taking advantage of confusion with
the Complainant’s mark and creating an impression that Complainant sponsors,
endorses, is affiliated with or controlled by Respondent.
B. Respondent
Respondent contends that Complainant has no enforceable trademark
rights to the SARASOTA MLS mark or any variation of the term because it is a
geographical descriptive term accompanied by the acronym for “multiple listing
service,” a common generic term in the real estate industry. Respondent also asserts that Complainant
abandoned use of the SARASOTA MLS mark on its website. Respondent asserts that
he is using the website for a bona fide
offering of goods and services by listing properties for sale in the Sarasota
Multiple Listing Service. Respondent
also relies on a disclaimer on his website that his website “is not the actual
Sarasota Multiple Listing Service (MLS).”
Respondent contends that he registered the domain name in good faith and
uses it for a permissible “nominative fair use,” alleging that Complainant’s ethics
panel decision supports Respondent’s position that its domain name is not
misleading. Respondent accuses Complainant
of reverse domain name highjacking.
C. Additional Submissions
In its Additional Submission, Complainant reiterates its allegation that its service marks are legally protectable based on secondary meaning. Complainant asserts that Respondent provided false or incomplete information in support of its contrary allegation. Complainant denies having abandoned its marks and contends that it owns the <sarasotamls.com> domain name and owned it on the date of Respondent’s response. Complainant also contends that Respondent is not using the disputed domain name to describe its services which involve sale of real estate under his own name and as representative of “Sky Southby’s International Realty.” Moreover, Complainant contends that the doctrine of nominative fair use is inapplicable here because it is available only when the use does not imply endorsement or sponsorship and meets additional requirements. Complainant repeats its allegation that Respondent is using the disputed domain name to direct Internet traffic to his site by misleading users to believe they are accessing Complainant’s website. Complainant contends that Respondent’s reference to and reliance on a decision by Complainant’s ethics panel is barred by rules governing the ethics proceeding that prohibit disclosure or use of the ethics panel decision in an arbitration case.
Respondent in his Additional Submission admits having erroneously
asserted that federal trademark registration had been refused to the marks
FRESNO MLS and BREVARD MLS. The first
registration was granted and application for the latter is pending. Respondent contends nevertheless that the
several trademark registrations that have been obtained by MLS entities do not
constitute a pattern and that Complainant’s state trademark registration
occurred after the Complaint here was filed and has no bearing in this
proceeding. Respondent also contends that
its use of the disputed domain name is legitimate because its website contains
almost all of the properties listed on the Sarasota MLS and that its sale of
real estate is bona fide. Respondent disputes Complainant’s contention
that the nominative fair use doctrine is inapplicable and states that this is,
in any event, a “secondary” argument.
Respondent defends his use of the ethics panel decision by saying he was
unaware of the prohibition against its use and also argues that it should only
apply in a proceeding relating to the real estate business. He asserts that the National Association of
Realtor’s (“NAR”) current rule only prohibits misleading use of “MLS” in a
domain name and alleges the ethics panel did not find Respondent’s use to be
misleading. He contends he did not
register the domain name in bad faith.
FINDINGS
Complainant is a trade association which
represents approximately 3, 900 realtors in the
Respondent is a
licensed real estate broker in
When contacted by Complainant with a request to discontinue use of the disputed domain name, Respondent refused to do so. Complainant initiated an ethics proceeding against Respondent under the NAR Code of Ethics and Arbitration Manual (“NAR Code”), which Respondent asserts was unsuccessful, and Respondent has asserted the relevancy of that disposition as showing the present Complaint is without merit. The NAR Code prohibits disclosure of the disposition; including disclosure and use in arbitration proceedings.
DISCUSSION
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.
Several circumstances coalesce to demonstrate that Complainant’s continuous use for many years of the SARASOTA MLS mark has given it secondary meaning. Even though Complainant’s main website is at the <sarasotarealtors.com> domain name, the realtor members who wish to access the real estate sales and listing information must click on the SARASOTA MLS link. In addition, Complainant’s <sarasotamls.com> domain name provides member access to the database program under the SARASOTA MLS mark. Complainant is well known by that name. The mark has become distinctive and is identified with Complainant. Complainant has established common law rights in the mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <thesarasotamls.com> domain name is identical to the SARASOTA MLS mark except for the preceding article “the,” the omission of the space between “Sarasota” and “MLS,” and the generic top-level “.com.” The use of the article “the” in the present circumstances re-enforces rather than dilutes the identification of the disputed domain name. Complainant, and not Respondent, is “the” SARASOTA MLS. Yet Respondent in his domain name characterizes his website as that of “the” SARASOTA MLS. The omission of the space and addition of the top-level domain “.com” are irrelevant to the analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb.). Forum Mar. 27, 2007).
Complainant has shown that it has rights in the SARASOTA MLS mark and that Respondent’s domain name is confusingly similar to Complainant’s mark within the meaning of Policy ¶ 4(a)(i).
No dispute exists that as a member of the Sarasota MLS Respondent is entitled to identify himself as a member. This does not mean, however, that Respondent is entitled to identify himself as the organization itself in a domain name. Respondent is not and has not ever been identified by the disputed domain name. He is not authorized by Complainant to use the SARASOTA MLS mark in his domain name and is not commonly known by the <thesarasotamls.com> name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006).
The permissible nominative fair use doctrine applies only when three requirements are met:
First, the product or services in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
New Kids on the Block v. New
The record
establishes that Respondent is using the disputed domain name to divert
Internet users seeking access to the Sarasota MLS site to his site for
commercial gain. Such use does not
constitute a bona fide offering of
goods or services within the meaning of Policy ¶ 4(a)(ii). See Summit Group, LLC v.
LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006). Respondent’s link to a disclaimer that his
site is not the “actual” Sarasota MLS site does not cure the problem. Once Respondent has succeeded in taking
advantage of Internet users’ confusion by attracting them to his site, his link
to a disclaimer that his site is not the “actual” MLS does not obviate the
initial misdirection. See
AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct. 31, 2000).
Complainant has demonstrated that Respondent
lacks rights and legitimate interests in the disputed domain name in violation
of Policy ¶ 4(a)(ii).
The effect of Respondent’s use of the disputed domain name is to disrupt Complainant’s business by diverting Internet users to Respondent’s website. Respondent misleads consumers to foster his own commercial advantage. This constitutes unfair competition with Complainant within the meaning of Policy ¶4(a)(iii). See Schering Corp. v. NGS Enters., Ltd, FA 198013 (Nat. Arb. Forum Nov. 7, 2003). Respondent is trading on Complainant’s goodwill to promote his own commercial interests. Complainant thus has shown that Respondent has registered and used the disputed domain name in bad faith within the meaning of Policy ¶ 4(a)(iii).
In asserting the Complainant’s ethics panel decision as a defense to the Complaint throughout his argument, Respondent has violated a non-disclosure provision in the governing NAR Code. Moreover, the ethics panel decision was made under rules that are different from the URDP rules applicable here. Respondent’s conduct in violating the NAR Code is emblematic of his disingenuous course of conduct in defending the Complaint. Even when forced into explanations in his Additional Submission, Respondent sought to minimize his misstatements rather than accept responsibility for them. His Additional Submission simply re-enforces the weakness of his position. The Panel disapproves of his conduct.
DECISION
Because Complainant has established all three elements required under
the ICANN Policy, a majority of the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <thesarasotamls.com> domain name be TRANSFERRED
from Respondent to Complainant.
Mark McCormick, Chair,
Judge Ralph Yachnin and Diane Cabell, as Panelists
Dated: August 27, 2008
DISSENT
This Panelist is not convinced that Complainant established common law trademark rights prior to the registration of the domain. None of Complainant’s historical exhibits showed a specific intention of using the term in a trademark sense; the term was used interchangeably as both a noun and adjective and never included any trademark symbol. Symbols are not, of course, required, however Complainant had faithfully applied the symbol to its Sarasota Association of Realtors trademarks where they appeared in the same Exhibits. My conclusion from the Exhibits is that Complainant used the term as the descriptive name of its database and gave no thought to any trademark status until Respondent and other realtors began using MLS in domain names. I find insufficient evidence of trademark rights.
In addition, Respondent submitted evidence that a major
trade association publication advised local realtors to include the term “MLS”
in their domain registration specifically to drive traffic to their sites;
while the trade association may since have changed its opinion about that
matter, the fact remains that Respondent had a reasonable basis for relying on
the recommendation at the time when the domain was registered. Lastly, the trade group’s ethics panel
declined to censure Respondent for this domain registration. Whether or not Respondent had any right to
present the ethics decision in this case is a matter for the ethics panel to
determine, but use of the decision here does nothing to prove that Respondent
had any bad faith intention at the time the domain was registered. I do not find the ethics opinion dispositive,
but only one more link in the chain of evidence that Respondent believed he had
a legitimate right to do as he did when he registered the domain. Complainant’s remedy against bad faith use is
under
Diane Cabell
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