RealtyTrac, Inc. v. K H
Claim Number: FA1009001345361
Complainant is RealtyTrac, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is K H (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com>, registered with Godaddy.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2010.
On September 8, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 September 9, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 29, 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 postmaster@raltytrac.com, postmaster@realttrac.com, postmaster@realtyrac.com, postmaster@realtytrax.com, postmaster@reatytrac.com and postmaster@realtytrc.com by e-mail. Also on September 9, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names are confusingly similar to Complainant’s REALTYTRAC mark.
2. Respondent does not have any rights or legitimate interests in the <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names.
3. Respondent registered and used the <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RealtyTrac, Inc., was founded in 1996 and uses its REALTYTRAC mark in connection with real estate services and foreclosure information. Complainant’s official website <realtytrac.com> is an online marketplace for consumers, investors and real estate professionals looking to locate, evaluate, buy and sell properties. Complainant holds trademark registrations for its REALTYTRAC mark with United State Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,027,046 issued December 13, 2005 ).
Respondent, K.H., registered the disputed domain names on November 25, 2003. Respondent’s disputed domain names resolve to websites with generic links to third-party websites, some of which directly compete with Complainant’s real estate and foreclosure business.
Complainant has submitted evidence of a prior UDRP proceeding involving Complainant and Respondent wherein Respondent had registered multiple domain names infringing on Complainant’s REALTYTRAC mark and the disputed domain names were transferred to Complainant. See RealtyTrac, Inc. v. K H, FA 1253146 (Nat. Arb. Forum Apr. 24, 2009).
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.
Complainant contends it has established rights in the REALTYTRAC mark. The Panel finds that Complainant need not establish rights based on a registered trademark and that a finding of common law rights in its REALTYTRAC mark is sufficient to establish Complainant’s rights under Policy ¶ 4(a)(i). 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 Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant asserts common law rights in its REALTYTRAC mark through its continuous use in promotion and operation of its real estate services since 1995. Complainant registered the <realtytrac.com> domain name on November 1, 1995 to promote and advertise its services as a real estate website. Complainant holds trademark registrations for the REALTYTRAC mark with the USPTO (e.g., Reg. No. 3,078,577 issued April 4, 2006) which shows a first use in commerce date of January 1, 1996. The Panel finds that Complainant has provided sufficient evidence to support a finding of common law rights in the REALTYTRAC mark pursuant to Policy ¶ 4(a)(i). See RealtyTrac, Inc. v. K H, FA 1253146 (Nat. Arb. Forum Apr. 24, 2009) (finding that “Complainant has demonstrated sufficient secondary meaning in the [REALTYTRAC] mark to establish its common law rights in the mark under Policy ¶ 4(a)(i) dating back to 1996.”); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Complainant argues that Respondent’s disputed domain names are confusingly similar to Complainant’s REALTYTRAC mark. The disputed domain names differ from Complainant’s mark only by removing a single letter or by replacing a single letter with another and the addition of the top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD fails to properly distinguish the disputed domain name from Complainant’s mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The Panel also finds that differentiation of a single character fails to properly distinguish the disputed domain names from Complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
Additionally, the Panel finds that the misspelling of the REALTYTRAC mark fails to properly distinguish the disputed domain names from Complainant’s mark. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks). Thus, the Panel finds that Respondent’s disputed domain names are 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 alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has made a prima facie case. Due to Respondent’s failure to respond to the Complainant, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the disputed domain names, that Respondent is not sponsored or legitimately affiliated with Complainant in any way, and that Respondent does not have permission to use Complainant’s mark in a domain name. The Panel finds no evidence in the record that would provide a basis for finding that Respondent is commonly known by the domain name. The WHOIS information identifies the Respondent as “K.H.” which is not similar to the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under the 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant contends that Respondent is using the disputed domain names to redirect Internet users to websites featuring hyperlinks to third-party websites, some of which directly compete with Complainant’s real estate and foreclosure business. Respondent likely receives pay-per-click fees from these linked websites. The Panel finds the use of confusingly similar disputed domain names to operate a website featuring links to Complainant’s competitors is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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)).
Respondent’s disputed domain names include Complainant’s mark while only changing one letter which is a common typographical error. Complainant argues that the typographical errors in the disputed domain names capitalize on Internet users making common typing errors by redirecting users to Respondent’s website. The Panel finds that Respondent’s use of the disputed domain name is further evidence that Respondent lacks rights or legitimate interests. See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered six disputed domain names that are confusingly similar to Complainant’s REALTYTRAC mark. The Panel finds that Respondent’s registration of the disputed domain names is evidence of a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (“Registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names . . . [and t]he registration of multiple domain names that infringe on Complainant’s trademarks is evidence of a pattern of conduct.”); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith).
Respondent alleges that Respondent is a serial cybersquatter. In a previous UDRP proceeding involving Complainant and Respondent, a panel found that Respondent’s registration of multiple infringing domain names was evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(ii) and ordered the infringing names transferred to Complainant. See RealtyTrac, Inc. v. K H, FA 1253146 (Nat. Arb. Forum Apr. 24, 2009). The Panel finds that in the instant case, Respondent has again registered and used multiple domain names that infringe upon Complainant’s REALTYTRAC mark and as such finds evidence of Respondent’s bad faith under Policy ¶ 4(b)(ii) with regard to the <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Yahoo! Inc. v. Deiana, FA 339579 (Nat. Arb. Forum Nov. 22, 2004) (“It is found and determined that Respondent is in violation of Policy ¶ 4(b)(ii) because Respondent registered the disputed domain names to prevent Complainant from reflecting its YAHOO! mark in the corresponding domain names. The registration of the [<ayhooo.com>, <ayhooo.net >, <ayhooo.org>, <ayhoooindia.com>, <ayhoookids.com>, <ayhooorealty.com>, <ayhooorealty.net>, <ayhoooshopping.com>, <ayhooo-uk.com>, and <searchayhooo.com>] domain names herein constitutes a pattern of registering trademark-related domain names in bad faith.”).
Respondent’s disputed domain names redirect Internet users to a website featuring a directory of hyperlinks, some of which directly compete with Complainant’s real estate business. Complainant alleges that Respondent’s use of the disputed domain names disrupts its business because Internet users intending to access Complainant’s real estate and foreclosure information are redirected to competitor sites and may use competitor information instead as a result of Respondent’s use of the disputed domain names. The Panel finds that Respondent’s use of the disputed domain names does disrupt Complainant’s real estate business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
The Panel infers that Respondent receives pay-per-click fees from the previously mentioned hyperlinked websites. Internet users searching for Complainant may instead find Respondent’s website because of Respondent’s confusingly similar disputed domain names. Internet users may become confused as to Complainant’s sponsorship of and affiliation with the disputed domain names, redirecting websites, and featured links. Respondent attempts to profit off this confusion through pay-per-click fees. The Panel finds that Respondent’s use of the disputed domain names constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
As established previously, Respondent has engaged in typosquatting which the Panel finds is itself evidence of bad faith under 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 Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <raltytrac.com>, <realttrac.com>, <realtyrac.com>, <realtytrax.com>, <reatytrac.com> and <realtytrc.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: October 23, 2010
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