C21 TM LLC and Century 21 Real Estate LLC v. Admin, Domain
Claim Number: FA0907001273214
Complainant is C21 TM LLC and Century 21
Real Estate LLC (“Complainant”), represented by Linda M. Dooley, of Realogy Corporation, New Jersey, USA. Respondent is Admin, Domain (“Respondent”), represented by Dan
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <century21online.com>, registered with Enom, 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.
Daniel B. Banks, Jr. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 10, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 17, 2009.
On July 10, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <century21online.com> domain name is registered with Enom, Inc. and that the Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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 July 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 12, 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 firstname.lastname@example.org by e-mail.
A Response was received in electronic copy on August 12, 2009 prior to the Response deadline; however no hard copy was received prior to the Response deadline. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
On August 20, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, C21 TM LLC, is a
Pursuant to its license from C21 TM
LLC, Century 21 has the right to use over 70 registered and numerous common law
marks in the
Century 21 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. Century 21
licenses its franchisees the limited right to use the CENTURY 21 Marks in their
real estate brokerage offices throughout the
21, through its licensees, has used the CENTURY 21 Marks in the
Century 21 operates its principal website at <century21.com>, which was first registered on March 2, 1995. For the past fourteen years, Century 21 has featured this domain name as a centerpiece in advertising and marketing the CENTURY 21 Marks. It is a key portal through which customers locate Century 21’s franchisees and their services. Century 21 (or its parent company) also owns the domain names <century21.biz>, <century21.net>, <century21.us>, <c21.com>, <c21online.com>, and <21online.com>, among others. The web addresses <century21.biz>, <century21.net>, <century21.us>, and <c21.com> all redirect the internet user to Century 21’s website at <century21.com>. Century 21 also operates a website for its franchisees and their sales agents using the domain names <c21online.com> and <21online.com>. Copies of the homepages of the websites located at the domains <century21.com>, <c21online.com>, and <21online.com> are attached hereto as Exhibit B.
Complainant first learned of the domain name <century21online.com> (the “Domain Name”) in January 2009 and that it had been registered without Century 21’s authorization by “K. Hasan”, who, to the best of Century 21’s knowledge and belief, is not related to or associated with a Century 21 franchisee. On January 12, 2009, Complainant’s in-house counsel sent a letter via email to K. Hasan putting him on notice of Century 21’s trademark rights and requesting the transfer of the Domain Name to Complainant. When K. Hasan did not respond, an email reminder was sent on February 10, 2009 requesting a response to the initial letter. A copy of the January 12, 2009 letter and subsequent email are attached as Exhibit C. Finally, on February 22, 2009, Complainant’s in-house counsel received an email response, however, it was not from K. Hasan, but from “Dan”, Respondent’s “Webmaster”, informing Complainant that the Domain Name was acquired by a current Century 21 franchisee, Century 21 Block & Lot (aka “Admin, Domain” and “Century 21 B & L”), the Respondent, and that “a request was made to change name servers” (i.e., from Network Solutions to Enom, Inc.). A copy of such email is attached as Exhibit D.
About five years ago, on or around April 22, 2002, Century 21 entered into a written agreement with Respondent (the “Franchise Agreement”) and, pursuant to such Franchise Agreement, Respondent obtained the non-exclusive right to use the Century 21 Marks, as set forth in the CENTURY 21 Policy and Procedure Manual (the “P & P Manual”), in the operation of a real estate brokerage office, upon the terms set forth in the Franchise Agreement. More specifically, in signing the Franchise Agreement, the Respondent agreed to, among other things, not adopt, use, or seek to register any URLs that do not comply with the P&P Manual.
The P & P Manual contains a subsection entitled “Establishing Web Addresses” (found at pages 18-20 in most versions) which states that if a franchisee intends to use the CENTURY Mark in its web address, it can only use its full approved company name (e.g., <century21blockandlot.com>) and shall not register a domain name that creates confusion between Century 21 and itself. In other words, although Century 21 franchisees are authorized to use the CENTURY 21 Marks during the term of their Franchise Agreement, they are not authorized by CENTURY 21 to register domain names unless they adhere to certain guidelines, including, but not limited to, that the domain name contains the franchisee’s company name and does not contain any of the CENTURY 21 Marks if it will cause such domain name to be confused with Century 21 and/or Century 21’s corporate websites. The Domain Name is in clear violation of the P & P Manual and a breach of the terms of the Franchise Agreement.
Because registration of the subject domain name is a violation of the Franchise Agreement, one of Complainant’s business executives contacted the broker owner of Respondent, Mohommed Hasan, and requested that Respondent relinquish the Domain Name. When Mr. Hasan refused to comply with Complainant’s verbal request, Complainant’s in-house counsel sent a letter via email on April 23, 2009 to Respondent formally putting Respondent on notice of Century 21’s trademark rights and requesting the transfer of the Domain Name to Complainant. When Respondent did not respond, an email reminder was sent on May 5, 2009 requesting a response to the previous letter. A copy of the April 23, 2009 letter and subsequent email are attached as Exhibit E. Complainant’s in-house counsel had a telephone conversation with Mohammed Hasan on May 18, 2009, however, Mr. Hasan reiterated his refusal to comply with Complainant’s request to transfer the Domain Name to Complainant.
Up until at least May 13, 2009, the Domain Name resolved to Respondent’s website located at <brooklynproperty.com> on which Respondent offers real estate services and advertises real estate for sale. Currently, the Domain Name directs internet users directly to Respondent’s website. A copy of the homepage of the website located at this Domain Name is attached hereto as Exhibit F.
The disputed domain name is confusingly similar to Complainant’s Marks; Respondent has no rights or legitimate interests in the disputed domain name; and, Respondent’s registration and use of the domain name is in bad faith.
Respondent has been a franchisee of Complainant since 2002 and is
ranked as one of the top Century 21 franchises in the
Respondent acquired the <century21online.com> domain name through a domain broker in 2008. The prior owner was Century 21 Ballard and Associates of Houston, Texas. They used the domain name for eight consecutive years for their website. Complainant alleges that, according to the P & P Manual, a franchisee can only use its full approved company name in its web site address however, hundreds, if not thousands of franchisees do not use their full approved company name in their web address. Respondent’s Exhibit K contains fifty examples.
Respondent does not dispute that Complainant has established rights in
the Century 21 marks, however, they are not exclusive to Complainant. The disputed domain name, although similar,
cannot be confused with the Complainant’s sites. <century21.com> resolves to a national
real estate search portal whereas the disputed domain name resolves to
Respondent’s website which serves
Respondent has legitimate rights and interests in the domain name because it is an authorized franchisee of Complainant. Respondent only advertises properties with the Century 21 brand and both are in the business of promoting real estate.
Respondent has not used the disputed domain name for commercial gain by confusing or misleading the customer nor is Respondent attempting to tarnish any trademark or service mark of Complainant. Respondent has not acquired the domain name for the purpose of selling, renting or otherwise transferring the domain to Complainant and it’s use of the domain name does not disrupt Complainant’s business.
FINDINGS AND DISCUSSION:
Preliminary Issue #1: Deficient Response
Respondent’s Response was submitted only in electronic format prior to the Response deadline; no hard copy was received prior to the Response deadline. The National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. However, the Panel chooses to accept and consider this Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”).
Preliminary Issue #2: Contractual Dispute Outside the Scope of the UDRP
Respondent argues that its status as a franchisee gave it the right to register the disputed domain name, and that Respondent is not creating any consumer confusion.
Complainant argues that Respondent is a licensee, and that the contract between the parties did not give Respondent sufficient rights in the CENTURY 21 mark so as to register a disputed domain name that caused consumer confusion. Complainant argues that licensees are permitted only to register disputed domain names that represent the full name of the licensee if the mark is to be used. Complainant has not submitted a copy of this agreement.
In this instance, the Panel finds that this is a contractual dispute between two companies that falls outside the scope of the UDRP. In Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007), the panel stated:
A dispute, such as the present one, between parties who each have at least a prima facie case for rights in the disputed domain names is outside the scope of the Policy … the present case appears to hinge mostly on a business or civil dispute between the parties, with possible causes of action for breach of contract or fiduciary duty. Thus, the majority holds that the subject matter is outside the scope of the UDRP and dismisses the Complaint.
In Love, the panel was concerned with possible causes of action for breach of contract. According to the panel in Love, complex cases such as the one presented here may be better decided by the courts than by a UDRP panel:
When the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.
The panel in Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005) concurred with this reasoning:
[The Policy’s purpose is to] combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trade mark disputes .… The issues between the parties are not limited to the law of trade marks. There are other intellectual property issues. There are serious contractual issues. There are questions of governing law and proper forum if the matter were litigated. Were all the issues fully ventilated before a Court of competent jurisdiction, there may be findings of implied contractual terms, minimum termination period, breach of contract, estoppels or other equitable defenses. So far as the facts fit within trade mark law, there may be arguments of infringement, validity of the registrations, ownership of goodwill, local reputation, consent, acquiescence, and so on.
Based upon the reasoning outlined in the aforementioned cases and the record, the Panel concludes that the instant dispute contains a question of contractual interpretation, and thus falls outside the scope of the UDRP. The Panel finds that the complaint should be dismissed. See Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“The Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); see also Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007) (“The Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); see also Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).
In accordance with the findings and discussions set forth above, it is Ordered that this Complaint be and the same is hereby DISMISSED
Daniel B. Banks, Jr., Panelist
Dated: August 31, 2009
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