CB TM LLC and Coldwell Banker LLC v. G.H. Wagenaars
Claim Number: FA0808001220897
Complainant is CB TM LLC and Coldwell Banker LLC (“Complainant”), represented by Joan
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <coldwellbankeropenhouse.com>, registered with Moniker Online Services, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 20, 2008.
On August 22, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <coldwellbankeropenhouse.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 August 28, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 17, 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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns the COLDWELL BANKER service mark.
Complainant operates a real estate business through numerous franchise agreements.
Complainant registered its COLDWELL BANKER mark with the United States Patent and Trademark Office (“USPTO”) on May 12, 1981 (Reg. No. 1,154,155).
Respondent’s disputed domain name was registered on April 22, 2008.
The disputed domain name resolves to a website that displays adult-oriented content and links to third-party adult-oriented websites.
Respondent’s <coldwellbankeropenhouse.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
Respondent is not commonly known by the disputed domain name.
Complainant has not authorized Respondent to use the COLDWELL BANKER mark.
Respondent does not have any rights or legitimate interests in the domain name <coldwellbankeropenhouse.com>.
Respondent registered and uses the <coldwellbankeropenhouse.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
On the record before us, there is no dispute that Complainant
registered its COLDWELL BANKER service mark with the USPTO on May 12,
1981. That registration sufficiently
establishes its rights in its COLDWELL BANKER mark pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11,
2003): “Complainant's federal trademark registrations establish Complainant's
rights in the BLIZZARD mark.” See also
Respondent’s domain name fully incorporates Complainant’s COLDWELL BANKER mark with the addition of the generic term “open house,” a common feature of the real estate sales business. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business). The disputed domain name also contains the generic top-level domain “.com,” which is irrelevant for purposes of a Policy ¶ 4(a)(i) analysis. See also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” so that Policy ¶ 4(a)(i) is satisfied).
Thus the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s service mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not possess rights to or legitimate interests in the disputed domain name. Complainant is required to present a prima facie case in supports of its allegation. The burden of proof then shifts to Respondent to contradict Complainant’s allegations. See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, the mere assertion by the complainant that the respondent has no right to or legitimate interest in a disputed domain name is sufficient to shift the burden of proof to a respondent to demonstrate that such a right or legitimate interest exists).
Complainant has established a sufficient prima facie case. Respondent, for its part, has failed to
submit a Response to these proceedings. Thus we may infer that Respondent lacks
rights to and legitimate interests in the disputed domain name. See Euromarket Designs, Inc. v. Domain For
In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”
We will nonetheless examine the record to determine whether there is any basis for concluding that Respondent possesses rights to or legitimate interests in the disputed domain name.
We begin by observing that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name. Consistent with this, the pertinent WHOIS information reflects that Respondent is known as “G.H. Wagenaars.” Complainant also alleges, without contradiction from Respondent, that Complainant has not authorized Respondent to use its COLDWELL BANKER mark. Therefore, we conclude that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent does not have rights in a domain name where that respondent is not known by the mark in issue).
We also note that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the disputed domain name to post adult-oriented content. Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003):
Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent presumably receives compensation in return for its use of the disputed domain name that is confusingly similar to Complainant’s mark to display adult-oriented content and links to third-party adult-oriented websites. By this means Respondent is attempting to profit by creating confusion amongst Internet users as to Complainant’s possible affiliation with the disputed domain name. Thus we conclude that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See 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.
To the same effect, see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003): “Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”
In addition, it appears that Respondent registered the <coldwellbankeropenhouse.com> domain name with at least constructive knowledge of Complainant’s rights in the COLDWELL BANKER service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <coldwellbankeropenhouse.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 8, 2008
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