RealtyTrac, Inc. v. Crazy Protocol, Inc. c/o Brian Muir
Claim Number: FA0903001253158
Complainant is RealtyTrac,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <realitytrac.com>, registered with Godaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 19, 2009.
On March 19, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <realitytrac.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.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 March 24, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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@realitytrac.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 21, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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:
1. Respondent’s <realitytrac.com> domain name is confusingly similar to Complainant’s REALTYTRAC mark.
2. Respondent does not have any rights or legitimate interests in the <realitytrac.com> domain name.
3. Respondent registered and used the <realitytrac.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RealtyTrac, Inc., is an Internet-based marketplace that allows subscribers to research and purchase real estate. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the REALTYTRAC mark (Reg. No. 3,027,046 issued December 13, 2005). Complainant was founded in 1996 and since that time has operated the <realtytrac.com> domain name in connection with its offering of real estate online marketing services. Complainant produces a monthly foreclosure report, which has been cited in multiple news reports by multiple news agencies. Complainant also publishes quarterly and annual recaps of foreclosure rates.
Respondent registered the <realitytrac.com> domain name on November 2, 2002. Respondent’s disputed domain name resolves to a website displaying third-party links, some of which are in competition with Complainant.
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 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.
The Panel finds Complainant has established rights in the REALTYTRAC
mark pursuant to Policy ¶ 4(a)(i) through registration
of the mark with the USPTO. See Miller Brewing
Furthermore, Complainant asserts it has common law rights in its REALTYTRAC mark through its continuous use since 1996 and consequent secondary meaning. Complainant has operated the <realtytrac.com> domain name in connection with its offering of real estate online marketing services since 1996. Complainant produces a monthly foreclosure report, which has been cited in multiple news reports by multiple news agencies. Complainant also publishes quarterly and annual recaps of foreclosure rates. The Panel finds Complainant has provided sufficient evidence of its continuous use and acquired secondary meaning in the REALTYTRAC mark to establish common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1996. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).
Complainant argues that Respondent’s <realitytrac.com> domain name is confusingly similar to
Complainant’s REALTYTRAC mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark by adding an “i” and the generic
top-level domain (“gTLD”) “.com.” The
Panel finds that a domain name that contains a misspelled version a
complainant’s mark creates a confusing similarity between the disputed domain
name and the established mark. See Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO
Dec. 1, 2000) (holding that the deliberate introduction of errors or changes,
such as the addition of a fourth “w” or the omission of periods or other such
“generic” typos do not change respondent’s infringement on a core trademark
held by the complainant); see also Belkin
Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the
<belken.com> domain name confusingly similar to the complainant's BELKIN
mark because the name merely replaced the letter “i” in the complainant's mark
with the letter “e”). In addition, the
Panel finds that the addition of a gTLD is irrelevant in distinguishing a
disputed domain name from a registered mark.
See Reese v. Morgan, FA 917029
(Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic
top-level domain “.com” is insufficient to differentiate a disputed domain name
from a 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.”).
Therefore, Respondent’s <realitytrac.com> domain name is confusingly similar to
Complainant’s REALTYTRAC mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the <realitytrac.com> domain name. When Complainant makes a prima facie case in support of its allegations, the burden is shifted to Respondent to prove that it does have rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”).
Complainant asserts that Respondent is neither commonly
known by the disputed domain name, nor licensed to register domain names using
the REALTYTRAC mark. Respondent’s WHOIS information identifies
Respondent as “Brian Muir, Crazy Protocol, Inc.,” and therefore lacks any
defining characteristics relating it to the disputed domain name. The Panel finds that without affirmative
evidence of Respondent being commonly known by the disputed domain name,
Respondent lacks all rights and legitimate interests in the disputed domains
name pursuant to Policy ¶ 4(c)(ii). See Braun Corp. v.
Loney, FA 699652 (Nat.
Arb. Forum July 7, 2006) (concluding that the respondent
was not commonly known by the disputed domain names where the WHOIS
information, as well as all other information in the record, gave no indication
that the respondent was commonly known by the disputed domain names, and the
complainant had not authorized the respondent to register a domain name
containing its registered mark); see also M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other
evidence in the record).
Respondent is using the <realitytrac.com>
domain name to display links advertising third-party websites, some of which
are in competition with Complainant. The
Panel infers that Respondent is using the disputed domain name to earn
click-through fees, and thus finds that Respondent has not made a bona fide offering of goods or services
under Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use under Policy ¶ 4(c)(iii). See Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up advertisements
and links to various third-party websites 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) because the registrant
presumably receives compensation for each misdirected Internet user); see also 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).
In addition, Complainant argues that Respondent’s
registration and use of the <realitytrac.com> domain name constitutes typosquatting. See Neiman
Marcus Group, Inc. v. Party Night, Inc., FA 114546 (Nat. Arb. Forum July 23, 2002) (finding that the <neimanmacus.com> domain name was a simple misspelling of the complainant’s NEIMAN
MARCUS mark and was a classic example of
typosquatting, which was evidence that the domain name was confusingly
similar to the mark). The Panel finds
Respondent’s typosquatting activities to be further evidence that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii).
See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s registration and use of the <realitytrac.com> domain name to display links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent’s use of the <realitytrac.com> domain name in order to intentionally attract Internet users to its website by creating a strong possibility of confusion with Complainant’s REALTYTRAC mark and offering links to competing websites is further evidence of bad faith. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, pursuant to Policy ¶ 4(b)(iv)).
Lastly, Complainant argues that Respondent’s typosquatting
activities are by themselves evidence of bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See
Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111,
D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and
used the domain name in bad faith because the respondent “created ‘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’. . .
through Respondent’s persistent practice of ‘typosquatting’”); see also Computerized Sec. Sys., Inc.
v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the
respondent engaged in typosquatting, which is evidence of bad faith
registration and use under Policy ¶ 4(a)(iii)).
The Panel finds that ¶ 4(a)(iii) has been 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 <realitytrac.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: May 5, 2009
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