Century 21 Real Estate LLC v. C21 LLC / Lisa Watson
Claim Number: FA 1358686
Complainant is Century 21 Real Estate LLC (“Complainant”), represented by Matthew A. Stratton of Harvey Siskind LLP, California, USA. Respondent is C21 LLC / Lisa Watson (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <safec21.info>, registered with Directi Internet Solutions Pvt. Ltd. Directi Internet Solutions Pvt. Ltd..
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2010; the National Arbitration Forum received payment on November 16, 2010.
On November 17, 2010, Directi Internet Solutions Pvt. Ltd. Directi Internet Solutions Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <safec21.info> domain name is registered with Directi Internet Solutions Pvt. Ltd. Directi Internet Solutions Pvt. Ltd. and that Respondent is the current registrant of the names. Directi Internet Solutions Pvt. Ltd. Directi Internet Solutions Pvt. Ltd. has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. Directi Internet Solutions Pvt. Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 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 postmaster@safec21.info. Also on November 24, 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 December 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <safec21.info> domain name is confusingly similar to Complainant’s C21 mark.
2. Respondent does not have any rights or legitimate interests in the <safec21.info> domain name.
3. Respondent registered and used the <safec21.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Century 21 Real Estate LLC, is a franchisor of a system of business for the promotion of real estate brokerage offices. Complainant operates under the C21 mark, which is registered with the United States Patent and Trade Office (“USPTO”) (Reg. No. 2,933,408 issued March 15, 2005).
Respondent, C21 LLC / Lisa Watson , registered the disputed domain name <safec21.info> on September 19, 2010. The domain resolves to a page that purports to offer real estate rental services.
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 sufficient rights in its C21 mark. It offers the trademark registration with the USPTO for its C21 mark (Reg. No. 2,933,408 issued March 15, 2005) as evidence. Many previous panels have established that such a registration sufficiently evidences the necessary rights. See Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)); see Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). Therefore, the Panel finds Complainant has demonstrated the necessary right pursuant to Policy ¶ 4(a)(i).
Complaint also contends that Respondent’s <safec21.info> domain name is confusingly similar to its C21 mark. Respondent has made only two minor variations to the mark in order to form its domain name. Respondent’s fist addition is the addition of the generic term “safe” to the front of the mark. Generic terms, when added to a preexisting mark, do not distinguish the new domain name from the preexisting mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Respondent’s other addition, the generic-top-level domain “.info,” is irrelevant to the Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark.
The Panel finds Policy ¶ 4(a)(i) is met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <safec21.info> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or 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). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant contends that Respondent is not commonly known by the disputed domain name. While the WHOIS information identifies the domain name registrant as “C21 LLC / Lisa Watson,” Complainant contends that there is no evidence that Respondent is actually known by the disputed domain name. After examining the record, the Panel agrees. There is no information in the record indicating that Respondent is known by any form of “C21” other than the WHOIS information. In light of Respondent’s failure to respond to these allegations, the Panel finds that Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(c). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
The Panel finds that Respondent has failed to demonstrate a bona fide offering of goods or services or a noncommercial or fair use. Respondent uses the confusingly similar domain name to divert Internet users seeking rental properties offered by Complainant to its own website. Complainant alleges that Respondent then attempts to scam Internet users out of a security deposit on a property the Internet users may be interested in. The Panel presumes that Respondent receives some financial benefit from this use. This type of diversion of Internet users evidences a lack of a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s use of the disputed domain name to solicit pharmaceutical orders without a license or authorization from the complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i)); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The Panel finds accordingly.
The Panel finds Respondent’s attempt to pass itself off as Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain name. Respondent’s domain name uses Complainants logo on its webpage and attempts to engage Internet users in business under Complainants name. Previous panels have found similar evidence to indicate a lack of rights and legitimate interest on the part of a respondent. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Therefore, the Panel finds Respondent’s attempt to pass off as Complainant as evidence that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii).
The Panel finds Policy ¶ 4(a)(ii) is met.
The Panel finds Respondent’s registration and use manifest an intent to disrupt Complainant’s business. Respondent registered and is now using the disputed domain name to intercept Internet users looking for Complainant and engage them in a scam related to Complainant’s services. Registration and use in this manner indicates bad faith pursuant to Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”); see Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Therefore, the Panel views Respondent’s intent to disrupt Complainant’s business as an indication of bad faith registration and use under Policy ¶ 4(b)(iii).
The Panel also finds Respondent’s registration and use of the confusingly similar domain name manifests an intent to create confusion regarding the source or affiliation of the website in order to attract Internet users to its website and scam. Respondent intends to confuse Internet users into believing that it is affiliated with Complainant. Respondent intends to foster this confusion in order to increase the hits its website receives and thus, proportionately increase the number of potential victims of its scam. This type of attraction for gain is an indication of bad faith under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). Therefore the Panel finds Respondent attempt to attract Internet users using a confusingly similar domain name is evidence of bad faith pursuant to ¶4(b)(iv).
Accordingly, the Panel finds Respondent’s attempt to pass itself off as Complainant, as discussed above in the preceding section, is also an indication of bad faith. Many previous panels have found that such attempts are also an indication of the presence of a bad faith registration and use as well as evidence that Respondent lacks rights and interests. See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s mark was appropriated at registration, and a copy of the complainant’s website was used at the domain name in order to facilitate the interception of the complainant’s customer’s account information, the respondent’s behavior evidenced bad faith use and registration of the domain name). The Panel finds such evidence of bad faith under Policy ¶ 4(a)(iii) in Respondent’s registration and use.
The Panel finds Policy ¶ 4(a)(iii) is 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 <safec21.info> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 22, 2010
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