RE/MAX, LLC v.
Claim Number: FA1005001325776
Complainant is RE/MAX, LLC (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <remaxllc.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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2010.
On May 21, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <remaxllc.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 May 25, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to firstname.lastname@example.org. Also on May 25, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 14, 2010.
On June 17, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, and
Respondent’s accession to that request, the National Arbitration Forum
In its Response, although Respondent contested the allegation of bad faith registration and use, Respondent consented to the transfer of the disputed domain name to Complainant and requested that the Panel issue an order to that effect without providing a substantive decision on the merits of Complainant’s allegation of abusive cybersquatting. On June 18, 2010, Complainant filed a proposed Additional Submission, in which it urged the Panel to deny Respondent’s request to the extent it sought a simple transfer order; instead, Complainant requested that the Panel issue a complete decision on the merits.
On June 21, 2010, the Panel issued a procedural order, stating:
submission, received by the Forum on June 18, 2010, has been accepted as an
Additional Submission by the Panel because the submission directly addresses
contentions raised in the Response that Complainant could not have
anticipated. See Welch v. Internet Realty
Investments Exchange, Inc., NAF Case No. FA 1246221 (March 31, 2009). Because the Panel has discretion to request
or accept any further statements from the parties, see UDRP Rule 12, the Panel
has determined that no additional fees need be submitted by Complainant
notwithstanding Rule 7 of the NAF Supplemental Rules. See
Elec. Commerce Media, Inc. v.
Because the Rules provide that “the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” UDRP Rule 10(b), Respondent is hereby permitted to submit a further statement as well, if it would like, though it is not obligated to do so. Welch, supra. Any such further statement shall address only the arguments raised in Complainant’s Additional Submission, and shall be filed with NAF by email by 8 pm Eastern Daylight Time on June 25, 2010.
Under Rule 10(c), the deadline for the Panel’s decision is hereby extended to July 9, 2010.
On June 25, 2010, Respondent submitted an Additional Submission in which it reiterated its view that the Panel should issue a simple transfer order. Respondent cited several panel decisions supporting the practice of issuing simple transfer orders when adverse parties requested identical relief (even where respondents disputed some of the allegations in the complaint). Respondent further noted that nothing in the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) or prior panel decisions compels the Panel to provide a substantive decision on the merits in a case such as this. Respondent also stressed that it sought to comply with Complainant’s request by contacting Complainant by telephone and e-mail and by attempting to transfer the disputed domain name to Complainant prior to the filing of the Complaint.
Complainant requests that the domain name be transferred from Respondent to Complainant.
is the owner of Pat Newton Properties, a North Carolina-based company whose
principal area of business is not known.
Respondent registered the disputed domain name <remaxllc.com> in September 2005. Until very recently, the
domain name resolved to a pay-per-click (“PPC”)
landing page that included advertising delivered by the
Complainant asserts that the disputed domain name is confusingly similar to the RE/MAX marks. Complainant cites Respondent’s adoption of Complainant’s full corporate name as evidence of Respondent’s efforts to deliberately confuse consumers. In addition, Complainant contends that the corporate identifier “LLC” – an abbreviated version of “limited liability company” – is a generic term that does little to distinguish the disputed domain name from Complainant’s corporate website.
also argues that Respondent has no rights or legitimate interests in the disputed
domain name. Complainant believes that
Respondent has never used the domain name for any legitimate non-commercial or
fair use purpose; rather, Complainant notes that the website has functioned
primarily as a PPC landing page that displays paid advertising links to the
websites of Complainant’s competitors. Complainant
states that Respondent has never been licensed by or affiliated with RE/MAX,
that Respondent is commonly known as “Pat Newton Properties”, and that no company
associated with the name “Remax, LLC” exists in
Complainant alleges that Respondent’s registration and use of the disputed domain name was in bad faith for a variety of reasons. Complainant maintains that, given its nearly forty-year history and extensive marketing campaigns, Respondent must have been aware of the notoriety and value of Complainant’s marks. In addition, Complainant notes that Respondent has a history of registering domain names containing trademarks. Complainant claims that Respondent used the disputed domain name solely to attract advertisers and Internet users to its website for commercial gain. Complainant believes that, despite its statements to the contrary, Respondent held the domain name passively for the last five years either to prohibit Complainant from registering the domain name or to coax Complainant or others into purchasing the domain name from Respondent. Complainant believes that Respondent registered the disputed domain name with the intent to confuse consumers.
As noted above, Respondent indicated that it consents to the transfer of the domain name and requested that the Panel issue a simple transfer order, without including a decision on the merits. However, Respondent also used its Response to dispute the Complainant’s allegation that Respondent registered and used the domain name in bad faith. (Respondent did not make any contentions with regard to the confusing similarity between the disputed domain name and the RE/MAX marks and whether Respondent had any rights or legitimate interests in the disputed domain name.) In particular, Respondent contested Complainant’s claims that Respondent registered the domain name for the purpose of selling it to Complainant or profiting from advertising. To the contrary, Respondent states that it never intended to sell the domain name and never received advertising revenues from the links posted on its website.
Respondent stated that, in previous instances where it had sold domain names, the purchasing party had initiated contact with Respondent in every instance. Respondent maintains that it abided by Complainant’s requests and attempted to transfer the disputed domain name to Complainant without compensation. Respondent questions Complainant’s contention that the registration of the disputed domain name prevented Complainant’s use, noting that it had owned the domain name for nearly five years before being contacted by Complainant. Respondent admits that it does not compete with Complainant, that it does not work in real estate, and that it does not offer real estate services. Finally, Respondent asserts that, prior to the receipt of Complainant’s cease and desist letter, it did not know that advertisements for Complainant’s competitors were appearing on its website and that, when it learned of these links, it instructed the site’s registrar to remove them.
C. Additional Submissions
In its Additional Submission, Complainant asked the Panel to deny Respondent’s request to immediately issue an order to transfer the disputed domain name to Complainant. Rather, Complainant requested that the Panel issue a full decision on the merits. Complainant noted that, because Respondent disputes Complainant’s allegation of bad faith, the Panel should not forego its traditional, three-step UDRP analysis.
In its Additional Submission, Respondent reiterated its request that the Panel issue a transfer order. Respondent noted that both parties were requesting the same relief and such an order would facilitate arbitral efficiency.
DISCUSSION AND FINDINGS
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.”
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.
It is clear,
as Respondent notes, that the Panel has the authority to issue an immediate order
to transfer a disputed domain name to a complainant when a respondent consents
to such a transfer. See
In considering whether to issue a simple transfer order or a full decision on the merits, one relevant consideration, as Respondent has noted, is arbitral efficiency. However, there are other relevant factors as well that should be considered. One factor is whether the complainant consents to the immediate transfer order. Another is whether the complainant may want to obtain a decision in order to deter cybersquatting by third parties. An additional factor that may be relevant is whether the respondent is a serial cybersquatter who is trying to avoid a decision on the merits that may be cited against the respondent in other cases as showing a pattern of bad faith.
case, Complainant has expressly requested that the Panel proceed to a full
decision. If Complainant is willing to
take the risk of a negative decision, and, having paid the fee for a UDRP
proceeding, is requesting a full decision on the merits, that is a factor that
weighs in favor of the issuance of a decision. Moreover, in this case, because Respondent has
demonstrated a pattern of registering domain names containing well-known
trademarks, the Panel believes that it is in the public’s interest to identify
Respondent’s conduct as constituting abusive cybersquatting, both for the
purposes of specific deterrence (to discourage Respondent from continuing to
engage in such misconduct) and for the purposes of general deterrence (to
discourage other parties from engaging in similar conduct by making it clear
that a cybersquatter may be publicly identified as such in a UDRP
In opposing this request, Respondent asserts that it tried to resolve this dispute with the Complainant prior to the filing of the UDRP proceeding. If that were true, it would be a factor that would weigh in Respondent’s favor with respect to the question of whether the Panel should issue a detailed decision or a simple transfer order. A review of the documentary evidence, though, shows that assertion to be untrue. On April 20, 2010, Complainant wrote to Respondent to complain about the inappropriate advertisements on the website to which the domain name resolved and to demand that Respondent “cease use of the domain remaxllc.com and promptly transfer it, and any other domain that [Respondent] own[s] that includes the term ‘remax,’ to [Complainant].” Although Respondent did remove the objectionable advertisements, it did not agree to transfer the domain name at that time. Rather, it took the position that the removal of the advertisements was sufficient. When Complainant proceeded to file this action, Respondent objected to filing and requested that the Panel not issue a decision on the merits. In connection with that request, Respondent disingenuously stated that it thought the removal of the advertisements was sufficient to address Complainant’s concerns. That claim is demonstrably untrue, as Complainant very clearly had demanded transfer of the domain name. Under the circumstances, Respondent’s efforts to transfer the domain name to Complainant after the filing of this proceeding (which efforts were thwarted by the Registrar Lock imposed by virtue of the filing of the Complaint) were too late, and should not weigh in favor of Respondent’s request that the Panel issue a simple transfer order, without commenting on the merits of Complainant’s allegations of abusive cybersquatting.
Accordingly, the Panel denies Respondent’s request to issue a simple order transferring the disputed domain name to Complainant and will instead proceed to issue a full decision on the merits.
Complainant has registered the RE/MAX marks with the United States Patent and Trademark Office, and all of these marks have achieved incontestability under 15 U.S.C. § 1065. These registrations provide prima facie proof of Complainant’s rights to the RE/MAX marks.
The <remaxllc.com> domain name is
confusingly similar to the RE/MAX trademark.
The domain name incorporates the word “RE/MAX” in its entirety, except
for the forward slash character that cannot, in any event, be used in a domain
name. See RE/MAX
International, Inc. v.
of the corporate identifier “LLC” does not reduce the confusing similarity
between the disputed domain name and the RE/MAX marks. To the contrary, because the term “LLC” will likely
be understood as an abbreviation for “limited liability company”,
its inclusion may enhance the level of confusion because Internet users may
understand the domain name to be associated with Complainant’s corporate
website. See, e.g., Altec Industries, Inc. v Gopal Pai, FA
1252471 (Nat. Arb. Forum April 30, 2009); Spence-Chapin
Services to Families and Children v. Spence-Chapin, LLC a/k/a
Accordingly, because Complainant has made a prima facie showing that it owns rights in the RE/MAX marks and that the disputed domain name is confusingly similar to those trademark rights, and because Respondent does not dispute Complainant’s contentions, the Panel concludes that Complainant has sustained its burden of showing that the disputed domain name is confusingly similar to Complainant’s trademarks.
Paragraph 4(c) of the Policy instructs the Panel to find that Respondent has rights or legitimate interests in the disputed domain name if any of the following conditions are satisfied:
(i) Before any notice to Respondent of the dispute, Respondent used, or demonstrated preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent made a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant has alleged sufficient evidence to make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
First, there is no evidence that Respondent ever used the disputed domain name in connection with a bona fide offering of goods or services. The available evidence suggests that, other than the delivery of PPC advertising, Respondent has never offered or sold any products or services on its website, which suggests that it has not used the website and domain name in connection with the bona fide offering of goods or services. See Ziegenfelder Co. v. VMH Enterprises, Inc., WIPO Case No. D2000-0039.
Second, Respondent is not affiliated with Complainant, has never been given a license to use the RE/MAX marks, and is not commonly known by the name “REMAXLLC”. Respondent further admitted that, despite that its corporate name includes the word “Properties,” it is not involved in any way with the real estate industry. It thus appears that Respondent does not have any right to use the RE/MAX marks under license and is not itself commonly known by the name “REMAXLLC”.
Third, for the past five years, the disputed domain name has been used exclusively to host paid search links. The advertisements at issue have included links to the websites of businesses that directly compete with Complainant. The use of PPC landing pages with advertisements keyed off of the trademark value of a domain name cannot constitute a legitimate noncommercial or fair use. See e.g., mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141 (“[PPC] landing pages arguably provide little societal benefit”); Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (holding that PPC landing pages are “neither a bona fide offering of goods or services . . . nor a legitimate non-commercial or fair use”); Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (PPC landing pages function as “deceptive bait and switch advertising practices”).
Accordingly, on the strength of the evidence submitted by Complainant, and because Respondent has not rebutted or contested Complainant’s prima facie showing, Complainant has shown that Respondent lacks rights and legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy instructs the Panel to find that Respondent’s registration and use of the disputed domain name was in bad faith if:
(i) circumstances indicate that Respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant or to a competitor of Complainant; or
(ii) Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name, provided that Respondent engaged in a pattern of such conduct; or
(iii) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on Respondent’s web site or location.
Complainant alleges several bases for finding bad faith in this case, including Respondent’s apparent registration of this domain name for the purpose of selling it to Complainant, Respondent’s registration of this domain name which prevented Complainant from reflecting its corporate name in a corresponding domain name coupled with a pattern of registering domain names that incorporated the trademarks of other corporations, and Respondent’s improper use of the domain name to resolve to a PPC landing page which created a likelihood of confusion between the disputed domain name and the RE/MAX marks. Each of these allegations serves as an independent basis for finding bad faith.
First, Respondent’s registration of this domain name, coupled with its admission that it has sold other domain names to trademark owners, gives rise to a fair inference that Respondent registered this domain name for the purpose of selling it to Complainant. That Respondent has sold domain names in the past only after first being contacted by the trademark owners is no defense. Cybersquatters have become more sophisticated since the early years of the Internet, and have learned that contacting trademark owners to offer a domain name for sale is very likely to result in an accusation of cybersquatting. Respondent’s approach of lying in wait, and trying to sell domain names only after first being contacted by the trademark owner, does not change the fact that the underlying conduct constitutes cybersquatting.
Respondent’s registration of the disputed domain name, which corresponds to
Complainant’s corporate name, gives rise to the fair inference that Respondent
registered the domain name in order to prevent Complainant from reflecting its
mark and corporate name in the corresponding domain name. That inference, when coupled with the fact
that Respondent has apparently registered an entire portfolio of domain names
consisting of famous marks along with the corporate designator LLC, provides an
independent basis for concluding that Respondent has registered and used the
domain names in bad faith. See e.g., Scania CV AB v. Michael Montrief Case,
WIPO No. D2009-1149;
use of the disputed domain name as a PPC landing page provides yet another
independent basis for finding bad faith registration and use. It is now well accepted that PPC landing
pages that deliver advertisements keyed to the trademark value of a domain name
constitute bad faith because such pages appear designed to divert web traffic
to competing websites. See e.g., No Zebra Network Ltda. v. Baixaki.com, Inc.,
WIPO Case No. D2009-1071; Asian World of Martial Arts Inc., supra. It seems
unlikely that Respondent, as an owner of nearly one thousand domain names and a
presumed sophisticated user of web-related services, did not realize that his
website could or would be used to display paid advertising links. Even if the Panel were to credit Respondent’s
claim that it was unaware of the links, Respondent is “ultimately responsible
for the content the registrar posted on the website”.
Accordingly, the Panel concludes that Complainant has sustained its burden of showing that Respondent registered and used the disputed domain name in bad faith.
Having established all three elements required under the Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remaxllc.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: July 9, 2010
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National Arbitration Forum
 The Panel notes that there is a difference in provider practices with respect to potential settlements consummated between the filing of a UDRP action and the appointment of a panel. For cases filed at WIPO, if the parties are able to reach a settlement prior to the appointment of a panel, WIPO will refund a substantial part of the filing fee to the complainant. In contrast, at NAF, once the filing fee is paid, it is non-refundable, even if the parties are able to reach a settlement after the filing of a complaint but before the appointment of a panel. This practice may have the effect of discouraging settlement because there is no financial incentive for a complainant to settle, even if a respondent indicates a willingness to transfer the domain name immediately, in response to the filing of a complaint. The Panel notes that it has seen an increasing number of efforts to settle cases following the filing of a complaint; it would encourages Providers in the UDRP system to consider modifying their supplemental rules to maximize the incentives for settlement without giving cybersquatters the ability to game the system and avoid the issuance of decisions when publication of such decisions would be in the public interest.