SunshineMLS, LLC v.
Claim Number: FA0903001250877
PARTIES
Complainant is SunshineMLS (“Complainant”), represented by Robert D. Butters, of 120
South Riverside Plaza,
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <sunshimemls.com>, registered with Compana, LLC.
PANEL
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.
Jonas Gulliksson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 5, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2009.
On March 9, 2009, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <sunshimemls.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 April 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 28, 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@sunshimemls.com by e-mail.
A timely Response was received and determined to be complete on April 8, 2009.
Complainant submitted an Additional Submission to the National Arbitration Forum on April 13, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On
April 23, 2009, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the
National Arbitration Forum appointed Jonas Gulliksson as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant has lodged the following summarized complaint:
The Complainant is a limited
liability company established under
The Complainant has since 2001 operated the website <sunshinemls.com>, started to use the SunshineMLS mark continuously in 2002 and received two trademark registrations on the USPTO Principal Register on April 28, 2003. Furthermore, through the Complainant and its members spending considerable resources on promoting, the mark has acquired significant goodwill.
Confusingly
similar
The disputed domain name is confusingly similar to the Complainant’s own website and its registered trademark. The only difference between the disputed domain name and the domain name and service mark of the Complainant is that the letter “m” substitutes the second “n” of the Complainant’s mark. This only creates actual and potential confusion for the participants in the real estate industry and the public by falsely suggesting that the Complainant is the operator of the Respondent’s website.
Rights
or legitimate interests
The Respondent is not now, nor has it ever been, a licensee of the Complainant’s service marks.
The disputed domain name only consists of links to “pay-per-click” advertising for businesses that provide competing or related services to that of the participants and members of the Complainant. The website also displays the line “For resources and information on MLS Listing and Sunshine MLS” in a manner that infringes upon the Complainant’s registered service mark rights. Further, if a user clicks on the “Sunshine MLS” button, it is directed to several “pay-per-click” links, one of which (Sun MLS), directs to a advertising site called <housinginfo.com> which includes a search function entitled “Find A Home On My Own,” promoting the ability of customers to search for a home without the aid of a real estate agent. This is in direct conflict with the economic interests of the Complainant. Thus, the Respondent is not making any legitimate, noncommercial or fair use of the disputed domain name but is rather trading upon the goodwill associated with the registered mark of the Complainant.
Bad
faith
The Respondent has a well established history of cybersquatting. The Respondent in this case was also the Respondent in 125 decisions with the National Arbitration Forum and 88 decisions with WIPO. This serves as evidence of bad faith.
The Respondent is through “typosquatting,” the intentional misspelling of words with the intent to intercept and siphon off traffic from its intended destination, attempting to attract for commercial gain users to the Respondent’s website by creating a likelihood of confusion with the registered service mark of the Complainant.
Furthermore, the Complainant sent on December 22, 2008 a letter to the Respondent demanding that it would cease any further operation of the <sunshimemls.com> and that all rights to the domain name would be transferred to the Complainant. The Respondent failed to answer the demands of the Complainant and continues to use the disputed domain name in violation of the rights of the Complainant.
B. Respondent
The Respondent agrees to the relief requested by the Complainant. The Respondent agreeing to the transfer does not constitute an admission to the three elements of paragraph 4(a) of the Policy, rather it is an offer of “unilateral consent to transfer” as prior Panels have deemed the consent.
The Respondent has offered no arguments as to the matter of the case.
C. Additional Submissions, Complainant
The Complainant requests that the Panel issues a decision based on the merits of the case. The Respondent is attempting to avoid a finding of bad faith and has submitted a standard Response, which it normally submits when it is caught cybersquatting. It is a well established fact that the Respondent is a serial cybersquatter.
The Respondent could have resolved this issue months ago but failed to respond to the Complainant’s letter, further e-mail and telephone conversation with the Respondent’s litigation counsel.
Finally, there are circumstances present in this case which warrants the Panel to consider the merits.
FINDINGS AND
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.
Regarding consent to transfer
This Panel must begin by deciding whether this case should be decided on the merits.
There are ample decisions to
support the Respondent’s view that because of the identity of the requests
(transfer of the disputed domain name), the Policy leaves no room for a
decision on the merits, but only allows for an immediate transfer of the
disputed domain name. See, e.g., Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev.,
FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name
registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v.
Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this
case, the parties have both asked for the domain name to be transferred to the
Complainant . . . Since the requests of the parties in this case are
identical, the Panel has no scope to do anything other than to recognize the common
request, and it has no mandate to make findings of fact or of compliance (or
not) with the Policy.”); see also Disney
Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005)
(“[U]nder such circumstances, where Respondent has agreed to comply with
Complainant’s request, the Panel felt it to be expedient and judicial to forego
the traditional UDRP analysis and order the transfer of the domain names.”). Perhaps
the strongest support of the Respondent’s view can be found in Citigroup Inc. v.
However, there are equally many
decisions where the panel has declined to order the immediate transfer of the
disputed domain name and instead has issued a decision on the merits. The
common denominator has been whether there are sufficiently good reasons for
this. See, e.g., Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assoc., FA 1195954 (Nat. Arb. Forum July
17, 2008) (“Respondent has admitted in his response to the complaint of
Complainant that it is ready to offer the transfer without inviting the
decision of the Panel in accordance with the Policy. However, in the facts of this case, the Panel
is of the view that the transfer of the disputed domain name deserves to be
along with the findings in accordance with the Policy.”); see also Koninklijke Philips Elec. N.V.
v. Manageware, D2001-0796 (WIPO Oct. 25, 2001); see also Société Française du Radiotéléphone-SFR v. Karen,
D2004-0386 (WIPO July 22, 2004); see
also Eurobet UK Ltd. v. Grand Slam Co,
D2003-0745 (WIPO Dec. 17, 2003).
This case
presents similar circumstances to that of
Relying
on the abovementioned decision and the decision of Starline Publication, Inc v. Texas
International Property Associates, D2008-1824 (WIPO Feb. 2, 2009)
(“Respondent’s tactics in its Response are a rather transparent attempt to
avoid yet another determination of its bad faith. This Panel cannot find any
legitimate reason to assist Respondent in this regard. If Respondent had wanted
to avoid a finding of bad faith in this proceeding, it could have made
arrangements to transfer the disputed domain name to Complainant without
putting Complainant to the effort and expense of this proceeding. Complainant,
on the other hand – having submitted its Complaint and paid the requisite fees –
is entitled to the benefit of the Panel’s decision on the merits.”), this Panel
concludes that the facts of this case warrants a reasoned decision as requested
by the Complainant.
The disputed domain name is except for the letter “m,” substituting the letter “n,” identical to the registered trademark of the Complainant. The Panel consequently finds that the disputed domain name is confusingly similar to the mark in which the Complainant has established rights.
The Complainant has fulfilled its burden of proof by presenting a prima facie case showing the Respondent’s lack of legitimate interest. The Respondent has elected not to provide any evidence to counter this. This Panel therefore finds that the Complainant has established the second element of the Policy.
The
Complainant also must establish that the “domain name has been registered and
is being used in bad faith” under the Policy. As set forth in the Policy:
the following
circumstances, in particular but without limitation, if found by the Panel to
be present, shall be evidence of the registration and use of a domain name in
bad faith:
(i)
circumstances indicating that [the Respondent has] registered or [the
Respondent has] acquired the domain name primarily for the purpose of selling,
renting, or otherwise transferring the domain name registration to the
complainant who is the owner of the trademark or service mark or to a
competitor of that complainant, for valuable consideration in excess of [the
Respondent’s] documented out-of-pocket costs directly related to the domain
name; or
(ii) [The
Respondent has] registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that [Respondent has] engaged in a pattern of such conduct; or
(iii) [The
Respondent has] registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using the domain name, [the Respondent has]
intentionally attempted to attract, for commercial gain, Internet users to [the
Respondent’s] website or other on-line location, by creating a likelihood of
confusion with the complainant’s mark as to the source, sponsorship,
affiliation, or endorsement of [the Respondent’s] web site or location or of a
product or service on [Respondent’s] website or location.
In the
decision United Consumers Club, Inc. v.
D2007-0987 (WIPO Oct. 5, 2007), a substantial list of cases where the present Respondent has been found to act in bad faith is cited. The Respondent has had a chance to resolve this issue but has failed to respond to the efforts of the Complainant. Instead, the Respondent submits a template response asking for a transfer without a decision on the merits. This seems to be a pattern of behavior of the Respondent and it is not unfamiliar to this Panel.
The
disputed domain name resolves to a landing page showing numerous links to
websites offering real estate services some of which are in direct competition
with the Complainant. Furthermore, the website contains a link featuring the
registered trademark of the Complainant, a link which however does not lead to
the website of the Complainant, but rather resolves into more pay-per-click
links.
This Panel agrees with the many UDRP decisions cited in United Consumers Club, supra, that the Respondent’s use of the trademark of the Complainant for paid links or “click through” advertising revenue constitutes bad faith.
The
slight misspelling of the Complainant’s mark in the disputed domain name is
evidence of the intent to trade upon the goodwill and reputation of the Complainant’s
mark through what is commonly known as “typosquatting,” a practice involving
the intentional misspelling of words with intent to intercept and siphon off
traffic from its intended destination, by preying on web surfers who make
common typing errors. See, e.g.,
Nat’l Ass’n of Prof. Baseball Leagues,
Inc., d/b/a/ Minor League Baseball v.
Zuccarini, D2002-1011 (WIPO Jan. 21,
2003); see also ESPN, Inc. v. XC2, D2005-0444 (WIPO June 28, 2005); see also Expedia, Inc. v. Collazo,
D2003-0716 (WIPO Oct. 30, 2003) (holding that respondent’s use of typo in the
domain name to attract the complainant’s consumers to his website for
commercial gain was bad faith use). The Respondent has offered no justification
for registration and use of domain names containing misspellings of the
Complainant’s marks.
The Panel
consequently finds that Respondent is engaging in bad faith “typo-squatting” by
having registered and through the use of the disputed domain names to
intentionally divert consumers looking for Complainant’s services to websites
containing competing products and services, presumably for its own benefit, in
violation of paragraph 4(b)(iv) of the Policy. Such registration and use is not
bona fide and evidences the
Respondent’s bad faith attempt to trade on Complainant’s marks.
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sunshimemls.com> domain name be TRANSFERRED from Respondent to Complainant.
Jonas Gulliksson,
Panelist
Dated: May 7, 2009
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