RE/MAX International, Inc. v. Private
Claim Number: FA0208000123876
PARTIES
Complainant
is RE/MAX International Inc.,
Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf,
Lamb, Greene & MacRae LLP.
Respondent is Private,
Moscow, RUSSIA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <remaxrealty.com>,
registered with Bulkregister.com, Inc.
PANEL
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.
James
A. Crary as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on August 26, 2002; the Forum received a hard copy of the
Complaint on August 27, 2002.
On
August 29, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that
the domain name <remaxrealty.com>
is registered with Bulkregister.com, Inc. and that Respondent is the current
registrant of the name. Bulkregister.com,
Inc. has verified that Respondent is bound by the Bulkregister.com, 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 29, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
18, 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 postmaster@remaxrealty.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
October 11, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following averments
in its Submission:
1. Respondent’s <remaxrealty.com> domain
name is confusingly similar to Complainant’s RE/MAX registered mark.
2. Respondent does not have any rights or
legitimate interests in the <remaxrealty.com> domain name.
3. Respondent registered and used the <remaxrealty.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds several registrations
for the RE/MAX mark, which denotes, inter alia, the “rendering [of]
technical aid and assistance to others in the establishment and operation of a
real estate brokerage agency.” More specifically, Complainant’s RE/MAX mark is
listed on the Principal Register of the U.S. Patent and Trademark Office
(“USPTO”) as Reg. Nos. 1,139,014; 1,339,510; 2,054,698; and, 2,468,858, among
others. The USPTO lists Complainant’s first use of the RE/MAX mark in commerce
as January 30, 1973.
Since at least as early as 1973, real
estate brokerage services affiliated with the RE/MAX network have provided real
estate services throughout the U.S. under Complainant’s distinctive registered
trademarks. Presently, the RE/MAX network comprises approximately 4,300
individual offices with a worldwide force of sales agents numbering
approximately 75,000. Since the 1973 date of inception, the RE/MAX network has
used its mark in connection with millions of home sale transactions in the U.S.
and worldwide, resulting in approximately one trillion dollars in sales.
Complainant has invested approximately $3 billion on worldwide advertisements
and promotions for services offered under the RE/MAX mark, which represents a
substantial amount of resources invested into developing the goodwill
associated with the mark among the consuming public.
Also of significance, Complainant
maintains a positive reputation in the community and is actively involved in
philanthropic concerns. More specifically, Complainant and the RE/MAX network
is the second largest fundraiser for the Children’s Miracle Network.
Lastly, Complainant conducts its real
estate services from various domain names, including without limitation:
<remax.com>, <remax.net>, <remax.org>, <remax.us>, and
<remaxcommercialbrokerage.com>.
Respondent registered the <remaxrealty.com>
domain name on April 11, 2000. Complainant’s search into Respondent’s use
of the subject domain name indicates that <remaxrealty.com> redirects
Internet users to other unrelated commercial websites, including multiple
casino-related gambling websites. The <remaxrealty.com> domain
name initially resolves to a banner display that advertises a real estate
entity that competes with Complainant in the real estate market.
DISCUSSION
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 the 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.
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 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 registration with the USPTO
and continuous use of the mark in relation to its real estate brokerage service
since 1973.
Respondent’s
<remaxrealty.com> domain name is confusingly similar to
Complainant’s RE/MAX mark. Respondent’s domain name incorporates the
substantive portion of Complainant’s mark in its entirety, and merely adds the
related work “realty” to the end of Complainant’s mark. As stated, the term
“realty” is descriptive of the business in which consumers identify Complainant
and its services. Previous panels have determined that where a second-level
domain includes a word that describes Complainant alongside Complainant’s mark
there is a likelihood that Internet users will be confused. Respondent’s
deletion of the forward-slash from Complainant’s mark is of no significance
because Complainant has made a practice of excluding the symbol from its domain
names (e.g., <remax.com> and <remax.org>), and the dominant portion
of Complainant’s mark still remains in Respondent’s domain name. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity).
Accordingly, the Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant’s Submission establishes a
legitimate prima facie case against Respondent, effectively shifting the
burden of production to Respondent. Because Respondent failed to submit any
materials in this proceeding, Complainant’s assertions are unopposed.
Therefore, it is proper for the Panel to accept all of Complainant’s reasonable
inferences as true. 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 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”).
Uncontested evidence indicates
Respondent’s domain name resolves to a website that contains banner advertisements
for Complainant’s competitors and various links to commercial gambling
websites. Presumably, Respondent receives some form of monetary compensation
for maintaining these advertisements and links on its website. Respondent
utilizes the infringing domain name to initially capture Internet interest, and
then diverts Internet users to these competing and commercial websites. Such
opportunistic use of Complainant’s RE/MAX mark in the domain name is not a bona
fide offering of goods or services under Policy ¶ 4(c)(i). Furthermore, because
Respondent attempts to profit from the goodwill and fame of Complainant’s mark
by linking its infringing domain name to commercial websites it cannot
establish rights or legitimate interests in <remaxrealty.com> 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 N. Coast Med., Inc. v. Allegro
Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use
where Respondent used the domain name to divert Internet users to its competing
website); see also Société des
Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no
rights or legitimate interests where Respondent used the
<casinomontecarlo.com> and <montecarlocasinos.com> domain names in
connection with an online gambling website).
Furthermore, there is no evidence that
Respondent is commonly known by the disputed <remaxrealty.com> domain
name pursuant to Policy ¶ 4(c)(ii). No information has been provided to this
Panel that would suggest Respondent has any legitimate connection with the
second-level domain “remaxrealty.” The content of the website also has no
apparent connection with the RE/MAX mark or the realty services offered
thereunder. See 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); see also 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).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Significantly,
Respondent has failed to submit any evidence or materials that would refute
Complainant’s assertions and accompanying information. Therefore, uncontested
circumstances indicate that Respondent opportunistically registered
Complainant’s RE/MAX mark in a confusingly similar domain name in order to
commercially profit from the goodwill associated with the RE/MAX mark.
Respondent’s infringing domain name resolves to a website that contains various
advertisements and links to commercial forums. Respondent’s registration and
diversionary use of the <remaxrealty.com> domain name constitutes
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).
Furthermore,
reinforcing the above conclusion is the fact that Respondent’s domain name is
linked to gambling websites; an act that not only tarnishes Complainant’s
reputation and the goodwill associated with the RE/MAX mark throughout the
community, but constitutes a separate finding of bad faith under Policy ¶
4(b)(iv). See Mars, Inc. v. Double
Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under
Policy ¶ 4(b)(iv) where Respondent linked the domain name
<marssmusic.com>, which is identical to Complainant’s mark, to a gambling
website); see also Encyclopedia
Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding
that Respondent violated Policy ¶ 4(b)(iv) by using the domain name
<britannnica.com> to hyperlink to a gambling site).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <remaxrealty.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: October 23, 2002
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