ERA TM LLC and ERA Franchise Systems LLC v. Era Sierra Properties
Claim Number: FA0812001239255
Complainant is ERA TM LLC and ERA Franchise Systems LLC (“Complainant”), represented by Linda M. Dooley, of Realogy Corporation, New York, USA. Respondent is Era Sierra Properties (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <askera.com>, registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 18, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2008.
On December 30, 2008, Brandon Gray Internet Services, Inc. d/b/a Namejuice confirmed by e-mail to the National Arbitration Forum that the <askera.com> domain name is registered with Brandon Gray Internet Services, Inc. d/b/a Namejuice and that Respondent is the current registrant of the name. Brandon Gray Internet Services, Inc. d/b/a Namejuice has verified that Respondent is bound by the Brandon Gray Internet Services, Inc. d/b/a Namejuice 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 January 7, 2009, a Notification of
Complaint and Commencement of Administrative Proceeding (the "Commencement
Notification"), setting a deadline of January 27, 2009
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@askera.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Trademark/Service Mark Information: ICANN Rule 3(b)(viii).
Complainant relies on the following United States trademark registrations:
ERA & Design
Reg. No. 1,057,923, registered on February 1, 1977 for “providing electronic realty listing services whereby potential purchasers can view pictures transmitted by wire of property located in various cities and whereby sellers can transmit pictures of their property to potential purchasers in other cities”.
ERA
Reg. No. 1,078,060, registered on November 22, 1977 for “real estate brokerage services”.
ERA
Reg. No. 1,251,827, registered on September 20, 1983 for “franchising services-namely, rendering technical assistance to others in the establishment and/or operation of real estate brokerage businesses”.
TEAM ERA
Reg. No. 1,645,223, registered on May 21, 1991 for “newsletter about real estate marketing”.
ERA ONLINE
Reg. No. 2,049,139, registered on April 1, 1997 for “real estate information provided via an on-line electronic communications network”.
ERA & Design
Reg. No. 2,121,860, registered on December 16, 1997 for “real estate brokerage services”.
ERA REAL ESTATE & Design
Reg. No. 3,082,137, registered on April 18, 2006 for “real estate brokerage services”.
ERA HOME PROTECTION PLAN
Reg. No. 2,576,242, registered on June 4, 2002 for “arranging for maintenance and repair services for homeowners”.
ERA REAL ESTATE HOME PROTECTION PLAN & Design
Reg. No. 2,612,765, registered on August 27, 2002 for “arranging for maintenance and repair services for homeowners”.
ERA
Reg. No. 2,691,643, registered on February 25, 2003 for “mortgage banking services”.
ERA SELECT SERVICES
Reg. No. 2,737,148, registered on July 15, 2003 for “providing assistance to home buyers, home sellers, lessors and lessees in relation to the set up or transfer of utility services including telecommunications, water, sewer, home heating, electricity and garbage collection services; and including referral services relating to landscaping, lawn care and pest control services, plumbing, air conditioning and heating services and moving, storage and delivery services”.
ERA & Design
Reg. No. 2,875,845, registered on August 24, 2004 for “real estate brokerage services”.
ERA
Reg. No. 3,073,417, registered on March 28, 2006 for “printed materials, namely manuals, magazines, brochures, pamphlets, leaflets and printed instructional materials in the field of real estate brokerage; stationery; business cards”.
ERA & Design
Reg. No. 3,073,418, registered on March 28, 2006 for “printed materials, namely manuals, magazines, brochures, pamphlets, leaflets and printed instructional materials in the field of real estate brokerage; stationery; business cards”.
Attached hereto as Exhibit A are true copies of the Certificates of Registration for a few of the abovementioned marks (the “ERA Marks”) (note that some of these certificates may indicate ERA Franchise Systems, Inc., TM Acquisition Corp. or others as the owner even though the assignment of U.S. marks or change of name to the present owner, ERA TM LLC (formerly known as ERA TM Corp.) has been duly recorded with the USPTO).
FACTUAL AND
LEGAL GROUNDS ICANN Rule 3(b)(ix)
Factual Background
Complainant, ERA TM LLC, is a California corporation with its principal place of business in California. It is the owner of numerous ERA Marks as registered with the USPTO and has licensed the ERA Marks to ERA Franchise Systems LLC (“ERA”). ERA is a Delaware limited liability company with its principal place of business in New Jersey. ERA sub-licenses the ERA Marks to its franchisees throughout the United States and in many foreign countries. ERA TM LLC and ERA are subsidiaries of Realogy Corporation (“Realogy”), a Delaware corporation with its principal place of business in New Jersey.
Pursuant to its license from ERA TM LLC, ERA has the right to use over 30 registered and numerous common law marks in the United States. Of these, four (4) are for the ERA word mark alone and an additional nine (9) registrations contain “ERA” as an element of the mark and/or design. ERA is the owner of trademark registrations for numerous ERA Marks in over 80 additional countries.
ERA is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices, including policies, procedures and techniques designed to enable such offices to compete more effectively in the real estate sales market. ERA licenses its franchisees the right to use the ERA Marks in their real estate brokerage offices throughout the United States and has licensed the ERA Marks to Master Franchisors operating in at least 40 other countries and territories. Since its incorporation in 1971, ERA has grown to become one of the world’s leading residential franchise brokerage networks, with over 38,000 brokers and sales associates in at least 47 countries and territories, and over 3,000 franchised offices operating under the ERA Marks in the United States and abroad.
ERA has spent millions of dollars over the course of more than 30 years advertising the ERA Marks in the U.S. and abroad. In 2007 alone, ERA has spent roughly $12 Million in advertising dollars to promote its brand. As a result of this continuous and widespread use, the ERA Marks have become well-known. Moreover, the ERA brand was recognized in the 2008 Franchise Times Top 200 as being among the top 200 U.S.-based franchise companies across all industries – the ninth year in which it has been so recognized.
ERA operates its principal website at era.com, which was first registered on August 25, 1997. For the past eleven years, ERA has featured this domain name as a centerpiece in advertising and marketing the ERA Marks. It is a key portal through which customers locate ERA’s franchisees and their services. ERA also owns and actively uses the domain names era.biz, eraonline.com, teamera.com and erahouses.com, among others.
Complainant first learned of the domain name askera.com (the “Domain Name”) in March 2008 and that it had been registered without ERA’s authorization by ERA Sierra Properties, a former ERA franchisee based in Placerville, California. ERA Sierra Properties was an ERA franchisee from 1997 until the end of 2002. Doug Zeller and Gloyd D. Zeller (the “Zellers”) were the broker owners of ERA Sierra Properties and the franchisees of ERA. (ERA Sierra Properties and the Zellers are collectively referred to as the “Respondent”). On July 17, 2000, the Zellers registered the Domain Name in the name of ERA Sierra Properties in violation of the ERA Policies and Procedures Manual and the Corporate Identity Guidelines and Usage (collectively, the “Policies”). Although ERA franchisees are authorized to use the ERA Marks during the term of their franchise agreement (the “Membership Agreement”), they are not authorized by ERA to register domain names unless they adhere to certain guidelines, including, but not limited to, that the domain name contain the franchisee’s business name and does not contain any of the ERA Marks if it will cause such domain name to be confused with the national corporate ERA site (e.g., cannot create an Internet address in which “ERA” is followed by a dot and additional characters).
On April 15, 2008 Mr. Neal Greenfield, a temporary in-house counsel for Realogy, wrote to the Zellers, now operating as Sierra Properties, and informed them that the registration and use of the Domain Name for a real estate brokerage that directly competes with ERA’s franchisees infringes ERA’s rights in its mark and is a violation of Respondent’s post-termination obligations under the Membership Agreement not to use the ERA Marks. Moreover, the fact that the Respondent used this Domain Name while associated with the ERA System makes it even more likely that consumers will believe that Respondent is still associated with or sponsored by ERA. Mr. Greenfield requested the transfer of the Domain Name to Complainant. The Zellers did not respond, so on April 25, 2008, Mr. Greenfield sent a reminder to the Zellers requesting a response to the previous letter. When the Zellers failed to respond, Mr. Greenfield called their California office on June 4, 2008, but the individual answering the telephone for the office refused to identify himself. Mr. Greenfield sent a third email to the Zellers requesting that they call him “as soon as possible” to resolve the matter. The Zellers did not respond. Ms. Linda Dooley, Senior Counsel for Realogy, sent a final email to the Zellers on October 21, 2008, requesting a response to the original demand letter by October 28, 2008. As of the date of this filing, neither Complainant nor its counsel has received any communications from the Zellers or any representative of Respondent regarding this matter.
The Domain Name continues to advertise the real estate brokerage of the Zellers (i.e., “Realty World - Sierra Properties”). However, on or about April 2003, following the termination of the Membership Agreement, the Zellers revised their brokerage’s website to add the phrase “Experience Realtor Assistance”.
Moreover, the current WHOIS information lists the registrant
of the Domain Name as “ERA Sierra Properties”.
However, this is no longer a valid name since the business is now
operating under the name “Realty World –Sierra Properties” or “Sierra
Properties”. The Zellers no longer have
the right to use the DBA ERA Sierra Properties and have not maintained the
correct WHOIS business name information for the Domain Name. In addition, the
current WHOIS information lists the registrant’s address as “2316 Delaware
Avenue, Suite 266, Buffalo, NY 14216”.
However, this is no longer a valid address for the business. (Updated business address information was
obtained from the registrar the National Arbitration Forum and was inserted by
the complainant into this Complaint after its initial filing.) As such, the
Zellers have not only failed to maintain the correct WHOIS business name
information for the Domain Name, but they have also failed to maintain the
correct WHOIS business address information for the Domain Name.
Furthermore the current WHOIS information lists a contact email address as privacy@droa.com. Emails sent to this address as well as to info@askera.com and zeller@realtor.com were not returned as undeliverable and, thus, it is assumed that they have been received by the Respondent.
Legal Argument
The Domain Name is confusingly
similar to Complainant’s ERA Marks.
Complainant has owned the ERA Marks since at least 1972, and has obtained numerous U.S. federal trademark registrations for the ERA Marks. It cannot be disputed that Complainant has established rights in the ERA Marks for use with real estate brokerage services long prior to the date Complainant learned of the Domain Name and even well prior to Respondent’s registration of the Domain Name in July 2000.
Respondent’s
Domain Name is confusingly similar to the ERA Marks and domain names era.com, era.biz,
eraonline.com,
teamera.com
and erahouses.com. Respondent has simply appropriated a domain
name containing the well-known ERA Mark preceded by the generic term “ask”,
which is related to Complainant’s real estate business and the provision of
real estate information. The addition of
the generic term “ask” to the Complainant’s ERA Mark does not serve to
eliminate the similarity or distinguish the Domain Name from the ERA Marks or
domain names. See The Cartoon Network, Inc. v.
bog@girls-pee.com, NAF Case No. FA0803001172983, May 13, 2008 (Panel found
confusing similarity between disputed domain name and mark was not diminished
by addition of the common term “games”); Express Services, Inc. v. Personnel
Plus a/k/a Tony Mayer, NAF Case No. FA0205000112624, June 20, 2002 (“The mere addition of descriptive or generic words
to a valid mark, however, does not eliminate the similarity between the domain
name and the trademark”). Moreover, the confusingly similarity is increased because
both parties operate in the same field. See Express Services, Inc. v. Express
Temp, NAF Case No. FA0201000103936, Feb. 22, 2002 (“Additionally, confusing
similarity between the parties is increased because both offer similar
services.”); Slep-Tone Entertainment Corp. v. Sounds Choice Disc Jockeys,
Inc., NAF Case No. FA2002000093636, March. 13, 2000 (stating that
“likelihood of confusion is further increased by the fact that the Respondent
and [Complainant] operate within the same industry”).
Given that the Zellers were franchisees at the time
of registration of the Domain Name and used the ERA Mark on their website, the Domain Name was, and continues to
be, confusingly similar to the ERA Marks and the national corporate ERA website
at era.com. Based on the above, there can be no doubt
that the Domain Name is confusingly similar to the ERA Marks.
Pursuant to ICANN Policy Paragraph 4(c), Respondent
may show rights in the domain name by its (1) use or preparations to use the
domain name in a bona fide offering of services prior to notice of the dispute;
(2) being commonly known by the domain name; or (3) legitimate noncommercial or
fair use of the domain name, without intent for commercial gain to misleadingly
divert consumers or to tarnish the mark at issue. Respondent fails on all counts.
Respondent and Complainant operate in the same
field, and as a consequence, Respondent’s use of the Domain Name does not
constitute a bona fide offering of services in accordance with Policy Paragraph
4(c)(i). See Express
Services, Inc. v. Express Temp, NAF Case No. FA0201000103936, Feb. 22, 2002;
Reed
Elsevier Inc. and Reed Elsevier Properties Inc. v. Carlos M. Alvarez d/b/a IT
Lexis,
NAF Case No. FA0107000098249, Aug. 20, 2001 (“Respondent is using the
itlexis.com domain name to promote its services within the same general field
as Complainant. Using an infringing
domain name to offer competing goods or services does not constitute a bona
fide offering of goods or services within the meaning of Policy 4(c)(i).”) Furthermore, the Panel in Credit Suisse
Group o/b/o/ Winterthur Ins. Co. v. Pal-Ex Kft, NAF Case No.
FA0112000102971, February 25, 2002, at page 3, found that “The use of another’s
trademark to attract users to Respondent’s domain is not considered to be a
bona fide offering of goods or services...”
Respondent is using the well-known ERA Mark to offer real estate
brokerage services in direct competition with ERA’s franchisees. Therefore, Respondent has not made a bona
fide use of the Domain Name for its services.
Respondent is not commonly known by the Domain Name
and, although the WHOIS information for the Domain Name lists Respondent as
“ERA Sierra Properties”, Respondent is no longer a licensee of ERA, nor does it
have any affiliation with Complainant or any of its related companies, or the
right to use the ERA Mark. The Zellers
currently do business under the name “Realty World – Sierra Properties” or
simply “Sierra Properties” See MB Fin. Bank, N.A. v.
mbfinancialmortgage.com, NAF Case No. FA0501000405073, March 11, 2005
(“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’
Respondent is not commonly known by this domain name nor is [it] authorized to
register domain names featuring Complainant’s MB FINANCIAL mark.”); see
also Gallup, Inc.
v. Amish Country Store, NAF Case No. FA0012000096209, Jan. 23, 2001
(finding that the respondent does not have rights in a domain name when the
respondent is not known by the mark).
Respondent’s status as a former franchisee of ERA
does not establish Respondent’s rights or legitimate interests in the disputed
Domain Name under Policy ¶4(a)(ii). See Savino Del Bene Inc.
v. Gennari, WIPO Case No. D2000-1133, Dec. 12, 2000 (finding that a former
employee does not acquire rights or legitimate interests in a domain name
identical to the former employer's trademark).
Although Respondent had, at one time, limited authorization to use the
ERA Marks, such license did not extend to the registration and use of the
Domain Name. In fact, Respondent’s
registration of such Domain Name in July 2000 violated the Membership Agreement
and the Policies. Moreover, because
Respondent was an ERA franchisee at the time it originally registered the
domain, it knew of ERA’s rights in its Marks and was contractually bound to use
the ERA Marks only as permitted by the Membership Agreement (i.e., abide by the
Policies, which includes, among other things, not using a domain that can be
confused with the national corporate ERA site).
As such, Respondent neither is, nor was, authorized by Complainant to
use the ERA Mark as depicted in the Domain Name and, therefore, Respondent does
not have any legitimate rights and interests in the Domain Name. See Express Services, Inc. v. Harold
Brown/Ted Waitt, NAF Case No. FA0106000097725, July 25, 2001 (finding no
rights or legitimate interests when a respondent is not licensed or authorized
to use the EXPRESS Marks).
As
to the third prong, Respondent is clearly not making a non-commercial, fair use
of the Domain Name without intent for commercial gain to misleadingly
divert consumers or to tarnish the ERA Mark.
Respondent fails on all counts.
Respondent’s registration of the Domain Name is
in bad faith.
Respondent has intentionally registered and used the Domain Name in bad
faith based on ICANN Policy subparagraph 4.b(iii)
and (iv).
ICANN Policy Paragraph 4.b(iii) allows a finding of bad faith if the registration is primarily for the
purpose of disrupting the business of a competitor. In registering the Domain Name, Respondent
intentionally deprived Complainant and its franchisees of “the chance to be contacted
by prospective customers” for whom both companies compete. SGS Societe Generale de Surveillance S.A.
v. Inspectorate, WIPO Case No. D2000-0025, March 17, 2000 at page 15. See
also Global Print Exchange Pte. Ltd. v. Mr. Robert Paul Soden,
eResolution Case No. AF-0275, September 7, 2000, at page 9 (domain name
registered for the purpose of disrupting a competitor’s business was
transferred). Prospective customers of
Complainant and its franchisees, who use this Domain Name to find an official
site for ERA, or its franchisees, are diverted to Respondent’s website. Clearly a customer who checks a WHOIS
database for this Domain Name may adopt the mistaken belief that Respondent has
an affiliation with Complainant or its franchisees based on its name “ERA
Sierra Properties” and the registration of a domain containing the ERA Mark.
Although Respondent has not been
operating as “ERA Sierra Properties” for nearly six years, the Registrar’s WHOIS information for the Domain Name
still lists it as the registrant of the Domain Name and lists its address as
“2316 Delaware Avenue, Suite 266, Buffalo, NY 14216”. This
provides further evidence of bad faith as there has been a willful failure of
the Respondent to promptly update the WHOIS information for the Domain Name and
such WHOIS information is now inaccurate and false.
ICANN Policy Paragraph 4.b. (iv) allows a finding of bad faith where the respondent intentionally
attempted to attract, for commercial gain, Internet users to its website or
other online location, by creating a likelihood of confusion with the
Complainant’s mark as to the source, sponsorship, affiliation, or endorsement
of the website.
Respondent violated its Membership Agreement and the Policies which state
that it must not adopt a domain that can be confused with the national
corporate ERA site and must discontinue use of all ERA Marks upon termination
of the Agreement. Respondent’s continued
use of the Domain Name, following the December 2002 termination of the
Membership Agreement, in the offering real estate brokerage services identical
to those provided by Complainant’s franchisees is willful and knowing
infringement, dilution of Complainants’ trademark rights, and unfair
competition as well as bad faith use of the Domain Name. See Express
Services, Inc. v. Personnel Plus a/k/a Tony Mayer, NAF Case No.
FA0205000112624, June 20, 2002 (finding that where the respondent, a former
franchisee of the complainant, continued to use the complainant's marks in
domain names, despite a franchise termination agreement prohibiting the
respondent from using the complainant's marks, such use is further evidence of
the respondent's bad faith). Respondent
continues to use the well-known ERA Mark to divert the customers of ERA and its
franchisees to its website, thus creating a likelihood of confusion as to the
source, sponsorship, affiliation and endorsement of Respondent’s website. Furthermore, rather than abandon or transfer
the Domain Name to ERA following the termination of the Membership Agreement or
in response to the numerous requests made earlier this year, Respondent
continued using the Domain Name in the promotion of its real estate brokerage,
knowing it had no legitimate right to own such domain and attempted to
legitimize such use by claiming that the acronym “ERA” now stands for Experience
Realtor Assistance, as opposed to Electronic Realty
Associates. Clearly, Respondent’s
registration and use of the Domain Name has been in bad faith.
In sum, (1) the Domain Name is clearly confusingly similar to the
well-known ERA Marks, as the Domain Name consists of nothing more than the ERA
Mark preceded by the generic term “ask”; (2) Respondent has no legitimate
interest in the Domain Name; and (3) Respondent’s use of the Domain Name is in bad
faith.
B. Respondent failed to submit a formal Response in this proceeding. Respondent kept claiming it knew nothing about the UDRP, despite being served with the Complaint (including a copy of the UDRP) several times. Respondent also claims its web site has no content that would be confused with Complainant’s mark, but that misses the point of an UDRP proceeding. This response shows Respondent has actual knowledge of this proceeding.
Complainant is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices. Complainant offers licenses to its franchisees for the ERA mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on November 22, 1977 (Reg. No. 1,078,060). Complainant has used the ERA mark continuously in commerce for over thirty years, and has licensed the ERA mark to franchisors operating in at least 40 other countries and territories. Complainant’s policies governing its franchisees, the ERA Policies and Procedures Manual and Corporate Identity Guidelines and Usage, require domain names registered by franchisees to contain the name of the franchisee’s business, and prohibit franchisees from registering domain names which could be confused with the national corporate ERA site at <era.com>.
Respondent registered the <askera.com> domain name on July 17, 2000, in the name of “ERA Sierra Properties.” The disputed domain name resolves to a website that advertises Respondent’s real estate brokerage, “Realty World – Sierra Properties,” and recently has started including the phrase “Experience Realtor Assistance.” Respondent was a franchisee of Complainant from 1997 until the end of 2002.
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 very limited a response, the Panel shall decide this administrative proceeding primarily 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 has established rights in the ERA mark for
purposes of Policy ¶4(a)(i) through its trademark registration with the
USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also 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.”).
Respondent’s <askera.com> domain name is confusingly similar to Complainant’s ERA
mark, particularly in light of their past relationship as a franchisor-franchisee. The <askera.com> domain name differs from Complainant’s mark in two ways:
(1) the generic term “ask” has been added to the beginning of the mark; and (2)
the generic top-level domain (“gTLD”) “.com” has been added. The addition of a generic term does not
sufficiently distinguish a domain name from an incorporated mark for the
purposes of Policy ¶4(a)(i). Moreover,
the addition of a gTLD also does not reduce the likelihood of confusion between
the domain name and the mark, because every domain name must contain a
top-level domain. Therefore, because the
changes made to the disputed domain name neither minimize nor eliminate the
likelihood of confusion between Complainant’s mark and the disputed domain
name, the Panel finds Respondent’s <askera.com> domain name is not sufficiently distinguished from
Complainant’s ERA mark pursuant to Policy ¶4(a)(i). See
Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum
June 22, 2005) (finding the <americaneaglestores.com> domain name to be
confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Gardline
Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003)
(“The addition of a top-level domain is irrelevant when establishing whether or
not a mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The Panel finds Policy ¶4(a)(i) satisfied.
Respondent lacks rights and legitimate interests in the <askera.com> domain name. Based upon the allegations made in the Complaint, the Panel finds Complainant has established a prima facie case pursuant to Policy ¶4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint other than by “pulling an ostrich”, the Panel may presume Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Respondent is not commonly known by the <askera.com>
domain name. Complainant admits Respondent had been
a franchisee of Complainant, and thereby a licensee of the ERA mark, at the time Respondent registered the <askera.com>
domain name, but the franchising
agreement did not authorize Respondent to register the <askera.com> domain
name. The WHOIS record for the
disputed domain name lists Respondent as “Era Sierra Properties,” but
Respondent, as a former franchisee of Complainant, no longer has the right to
do business as “Era Sierra Properties,” and Respondent has failed to maintain
the correct WHOIS business name information for the <askera.com> domain name.
Respondent has failed to show any evidence contrary to
Complainant’s contentions, and so, in light of the evidence presented, the
Panel finds Respondent is not commonly known by the <askera.com> domain name pursuant to Policy
¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA
830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to
establish rights and legitimate interests in the <emitmortgage.com>
domain name as the respondent was not authorized to register domain names
featuring the complainant’s mark and failed to submit evidence of that it is
commonly known by the disputed domain name);
see also Home Builders
Inst. v. Nat’l Inst. of Home Builders, Inc., FA 166011 (Nat. Arb. Forum
Oct. 3, 2003) (holding that listing the respondent’s trade name, The National
Institute of Homebuilders, Inc., as the administrative contact in the WHOIS
contact information for <homebuilderinstitute.com>, failed to establish
that the respondent was commonly known by the domain name because the
respondent could list any administrative contact it desired).
Respondent maintains a website at the <askera.com> domain name that advertises Respondent’s own real estate brokerage business, which is in competition with Complainant’s business. Incorporating a mark into a domain name with the purpose of diverting Internet users to competing commercial sites is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site). Simply expanding Complainant’s “ERA” mark into the phrase “Experience Realtor Assistance” does not give Respondent rights to the original ERA mark, especially in light of their prior franchisor-franchisee relationship. Therefore, the Panel finds Respondent’s use of the <askera.com> domain name is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor 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 Panel finds Policy ¶4(a)(ii) satisfied.
Under the terms of the franchise agreement between the parties, Respondent was never entitled to register a domain name containing the ERA mark – even while Respondent was a franchisee.
Respondent is diverting Internet customers from
Complainant’s website to Respondent’s website through the confusion caused by
the similarity between the ERA mark and the <askera.com> domain
name. Respondent intended to disrupt
Complainant’s business by diverting confused customers to Respondent’s
competing real estate brokerage website.
Because the Panel finds Respondent’s use of the disputed domain name
disrupts Complainant’s business, the Panel also finds this is evidence of Respondent’s
registration and use of the disputed domain name in bad faith pursuant to
Policy ¶4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum
July 18, 2000) (finding that the respondent registered the domain name in
question to disrupt the business of the complainant, a competitor of the
respondent); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶4(b)(iii) [and] (iv).”).
Respondent financially benefits because Internet users are diverted to Respondent’s own business website. The Panel finds this resulting likelihood of confusion for Respondent’s own commercial gain to constitute bad faith registration and use pursuant to Policy ¶4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in Policy ¶4(b)(iv).”).
Respondent cannot avoid the UDRP by claiming ignorance.
The Panel finds Policy ¶4(a)(iii) 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 <askera.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: February 18, 2009
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