ERA Franchise Systems LLC v. Slawomir Bruszewski
Claim Number: FA1102001370591
Complainant is ERA Franchise Systems LLC (“Complainant”), represented by Linda M. Dooley of Realogy Corporation, New Jersey, USA. Respondent is Slawomir Bruszewski (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <erateam.com>, registered with GoDaddy.com, Inc. (“Domain Name”).
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.
Robert A. Fashler, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2011; the National Arbitration Forum received payment on February 4, 2011.
On February 1, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <erateam.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 4, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2011 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@erateam.com. Also on February 4, 2011, 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 February 23, 2011.
On February 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert A. Fashler as Panelist.
On March 10, the Panelist extended the time period within which the Decision is to be rendered to March 25, 2011.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complaint asserts or provides evidence of the following facts:
Complainant is a Delaware limited liability company, established in 1971, with its principal place of business in New Jersey.
Complainant is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices that operate under the trademark ERA and additional trademarks that feature ERA as a dominant element. Those trademarks are owned by Complainant, which licenses their use to franchisees.
In the U.S., Complainant owns a number of registered and common law trademarks that feature ERA as a dominant element. Four U.S. registrations are for the ERA word mark alone. Complainant asserts that it owns sixteen additional U.S. registrations for trademarks that contain ERA as a dominant element. Complainant asserts that it owns registrations in over 80 additional countries for trademarks that feature ERA as a dominant element.
Complainant’s ERA trademarks include the following trademarks registered in the U.S. Patent and Trademark Office (“U.S.P.T.O.”):
ERA, Reg. No. 1,078,060, registered November 22, 1977, for “real estate brokerage services”.
ERA, Reg. No. 1,251,827, registered September 20, 1983, for “franchising services, namely, rendering technical assistance to others in the establishment and/or operation of real estate brokerage businesses”.
TEAMERA, Reg. No. 1,645,223, registered May 21, 1991, for “newsletter about real estate marketing”.
ERA & design, Reg. No. 2,121,860, registered December 16, 1997, for “real estate brokerage services”.
ERA & design, Reg. No. 2,875,845, registered August 24, 2004, for “real estate brokerage services”.
ERA, Reg. No. 3,073,417, registered March 28, 2006, for “printed materials, namely manuals, magazines, brochures, pamphlets, leaflets and printed instructional materials in the field of real estate brokerage; stationery; business cards”.
ERA & design, Reg. No. 3,073,418, registered March 28, 2006, for “printed materials, namely manuals, magazines, brochures, pamphlets, leaflets and printed instructional materials in the field of real estate brokerage; stationery; business cards”.
ERA REAL ESTATE & design, Reg. No. 3,082,137, registered April 18, 2006 for “real estate brokerage services”.
ERA & design, Reg. No. 3,316,400, registered on October 23, 2007 for “real estate brokerage services”.
Some of the Registration Certificates for those trademarks indicate that they are owned by ERA TM LLC, TM Acquisition Corp., or others, rather than Complainant. Complainant asserts that all of those registrations have, in fact, been assigned to Complainant, and that the assignments have been duly recorded with the U.S.P.T.O. Complainant did not provide copies of the assignments or proof that they have been recorded with the U.S.P.T.O. It would have been helpful to the Panel if Complainant had done so. However, as Respondent does not deny Complainant’s ownership of all of the U.S. registrations, the Panel accepts Complainant’s assertions of ownership.
The Panel is relying only on the registered U.S. trademarks identified above (“ERA Marks”). There is no need to consider any common law marks in the U.S. or any registrations in countries outside the United States.
As part of its franchising operation, Complainant licenses the right to use the ERA Marks to real estate brokerage offices throughout the United States and to master franchisees operating in over 40 other countries and territories.
Complainant asserts that since 1971, it has grown to become one of the world’s leading residential franchise brokerage networks, having approximately 30,000 brokers and sales associates and approximately 2,500 offices throughout the United States and 41 countries and territories.
Complainant asserts that for more than 30 years it has spent millions of dollars advertising its business in connection with the ERA Marks in the U.S. and abroad. In 2007 alone, Complainant asserts to have spent approximately $12 million in advertising to promote its brand. As a result of continuous and widespread use, Complainant asserts that the ERA Marks have become famous. Complainant asserts that in 2010, Complainant was recognized by Franchise Times as one of the top 200 U.S.-based franchise companies across all industries – the eleventh year in which it has been so recognized.
Complainant operates its principal website at <era.com>, which was first registered on August 25, 1997. For over thirteen years, Complainant has featured this domain name as a centerpiece in its advertising and marketing. Complainant also owns and actively uses the domain names <teamera.com>, <era.biz>, <eraonline.com>, and <erahouses.com> (collectively, the “ERA Domains”), among others.
In March of 2010, Complainant first learned that two individuals - Respondent, Slawomir “Slavek” Bruszewski, and his wife Amelia Bruszewski, were actively using the Domain Name. The Domain Name is registered in the name of Mr. Bruszewski. The Domain Name is currently used to perform one narrow function – to redirect Internet users to the website of Mrs. Bruszewski (“Respondent’s Website”). Respondent’s Website is designed and hosted by Mr. Bruszewski. The primary Internet address for Respondent’s Website is <ameliabruszewski.com>.
Mrs. Bruszewski has been working as a real estate broker and salesperson since at least as early as 1995 until the present time. Mr. Bruszewski was a real estate broker and sales person at least between 1996 and October of 2002. Mrs. Bruszewski and Mr. Bruszewski both worked for a franchisee of Complainant, ERA American Towne Realty, Inc. (“Franchisee”), for at least six years. Mrs. Bruszewski began working at the Franchisee in 1995, and Mr. Bruszewski began working there in 1996.
Respondent registered the Domain Name around 1996. Between that date and October of 2002:
(a)
Mr. and Mrs. Bruszewski both worked for the Franchisee;
(b)
the Domain Name was the primary Internet address used by Mr. and Mrs.
Bruszewski for Respondent’s Website;
(c) Mr. and Mrs. Bruszewski both used Respondent’s Website to promote their real estate services as part of Complainant’s franchise and real estate network; and
(d)
Respondent’s Website made extensive use of the ERA Marks.
Mr. and Mrs. Bruszewski both ceased working for the Franchisee in October of 2002. Fairly soon after that, Mrs. Bruszewski began working at Crossroads Realty, Inc. (“Competitor”), which is not an ERA franchisee. The Franchisee and the Competitor both operate in the same geographic area in New Jersey. Competitor competes directly with all ERA franchisees operating in that area.
Complainant asserts that Complainant’s standard Policies and Procedures Manual and Corporate Identity Guidelines (collectively, the “Policies”) operated to prohibit Respondent’s registration of the Domain Name in 1996. Specifically, Complainant asserts that although ERA sales associates are authorized to use the ERA Marks while they are affiliated with the ERA Franchise System, they are not authorized by ERA to register and use domain names unless they adhere to certain guidelines, including, but not limited to, that the domain names contain the franchisee’s business name and do not contain any of the ERA Marks if it will cause such domain name to be confused with Complainant’s website(s).
It would have been very helpful to the Panel if Complainant had provided a copy of the applicable Policies and explained the legal mechanism by which the Policies became binding on Respondent. However, as Respondent has not contested Complainant’s assertions, the Panel accepts those assertions.
When Mr. and Mrs. Bruszewski left the Franchisee to work for the Competitor, they ceased use of Complainant’s trademarks in the usual manner and they changed the primary Internet address for Respondent’s Website to <ameliabruszewski.com>.
Respondent has maintained the Domain Name and has set it up so that it redirects Internet traffic to Respondent’s Website. It serves no other active function.
In the Spring of 2010, legal counsel for Complainant sent a cease and desist letter to Respondent informing him that his registration and use of the Domain Name constitutes trademark infringement and demanding that Respondent transfer the Domain Name to Complainant.
On April 9, 2010, Complainant received a response to that letter from attorney Matthew J. Heagn, on behalf of Respondent and Mrs. Bruszewski. The substantive content of that letter is repeated in its entirety as follows:
Please be advised that I represent Slawomir and Amelia Bruszewski. I am in receipt of your letter dated March 29, 2010. Therein you allege that there is an unauthorized use of the ERA mark in the domain name “erateam.com”. I suppose it is your impression that the use of the letters “era” create some infringement. I do not believe that is accurate. The truth is that my client, specifically Amelia Bruszewski, acted an as agent for ERA American Towne Realty in Toms River, New Jersey several years ago. During the time frame, which was lengthy, that she acted as agent for that company, she set up this account. This was not set up by ERA or ERA American Towne Realty or its management. This was something that my client set up on her own to market herself as an agent in the area. Thereafter, she utilized that website to market herself and continues to utilize that website as a realtor in the area. During the time when she was with ERA American Towne, she had many clients that accessed her through the erateam.com site. This is the means for those clients to continue to access her. This site is not stale and I do not see any trademark infringement.
As such, at this time, it is not our intention to relinquish the use of that site as it continues to be an integral part of her business. I certainly invite further discussion on this issue. Should your client be interested in negotiating a purchase, that is something that can be discussed.
Complainant responded several times to that communication, but never received a response.
Complainant asserts that
the Domain Name is confusingly similar to the ERA Marks because:
(a)
Respondent has simply appropriated a domain name containing the
distinctive, well-known ERA Mark followed by the descriptive term “team”, which
is related to Complainant’s real estate business and the provision of real
estate services;
(b)
the addition of the generic term “team” to the Complainant’s ERA Mark
does not serve to distinguish the Domain Name from the ERA Marks;
(c) the Domain Name is particularly confusingly similar to Complainant’s trademark TEAMERA, which it first began using in May of 1990, and Complainant’s domain name <teamera.com>, which was registered in July of 1995;
(d)
the Domain Name simply reverses the identical elements constituting that
trademark and that domain name; and
(e) given that Respondent is a former ERA sales associate who registered the Domain Name with full knowledge of Complainant’s rights in and to the ERA Marks, the Domain Name was, and continues to be, confusingly similar to the ERA Marks and Complainant’s corporate websites located at <era.com> and <teamera.com>.
Complainant asserts that
Respondent has no rights or legitimate interests in the Domain Name because:
(a)
Respondent and Complainant operate in the same field of business, and as
a consequence, Respondent’s use of the Domain Name does not constitute a bona
fide offering of services in accordance with Policy paragraph 4(c)(i);
(b)
Using an infringing domain name to offer competing goods or services
does not constitute a bona fide offering of goods or services within the
meaning of Policy 4(c)(i) or a legitimate noncommercial or fair use
under Policy 4(c)(iii);
(c)
Respondent has not made a bona fide use of the Domain Name for
its services because Respondent is using the well-known trademark ERA to offer
real estate brokerage services in direct competition with Complainant’s
franchisees;
(d)
Respondent is not commonly known by the Domain Name, Respondent is not a
sales associate of Complainant, Respondent has no affiliation with Complainant
or any of its related companies, and Complainant has not granted Respondent any
right to use the ERA Marks since October of 2002;
(e)
Nothing in the WHOIS information suggests that Respondent has any
connection with “ERA” or <erateam.com>;
(f)
Respondent’s status as a former ERA sales associate does not establish
Respondent’s rights or legitimate interests in the disputed Domain Name under
Policy 4(a)(ii);
(g)
Although Respondent had, at one time, limited authorization to use the
ERA Marks, such license never permitted registration and use of the Domain
Name;
(h)
Because Respondent was an ERA sales associate, he knew of Complainant’s
rights in the ERA Marks and its use of the ERA Marks since at least 1972;
(i)
Respondent is not now and has never been authorized by Complainant to
use the ERA Marks as depicted in the Domain Name;
(j)
Respondent is not making a
noncommercial, fair use of the Domain Name because he is using the Domain Name
to divert Internet users to Respondent’s Website, which offers competing real
estate brokerage services.
Complainant asserts that Respondent has intentionally registered and is
using the Domain Name in bad faith because:
(a)
In registering the Domain
Name, Respondent disrupted Complainant’s business by intentionally depriving
Complainant of “the chance to be contacted by prospective customers” for whom
both companies compete;
(b)
Prospective customers of
Complainant, as well as franchisees of Complainant (and their respective sales
associates), who use the Domain Name in an effort to find an official site for
Complainant are diverted to Respondent’s website, which disrupts Complainant’s
business;
(c)
Respondent is trying to
commercially benefit from the ERA Marks because the Domain Name is obviously
connected with Complainant because Complainant’s trademark ERA is the primary element
of the Domain Name, hence, registration of the Domain Name by anyone other than
Complainant suggests that the Domain Name was registered in bad faith; and
(d) Respondent attempted to sell the Domain Name to Complainant in April 2010.
B. Respondent
The substantive submissions set out in the Response are repeated below in their entirety:
After careful review of your correspondence, I respectfully decline to transfer the domain name of ERATEAM.COM to ERA TM LLC, or to cease the use of said domain, which you request therein on behalf of ERA Franchise Systems LLC, for various professional reasons. My wife, and business partner, Amelia Bruszewski, and I are willing to let our case be heard before a single-member Administrative Panel for a formal decision.
First, the allegation of my wife and I practicing in unlawful “cybersquatting” simply isn’t accurate in reference to the definition of such practice. The domain name ERATEAM.COM has been registered to and paid for by us continuously, and since, July 10, 1996, during which time we were both employed by an ERA franchise in Toms River, New Jersey. The domain name has never been “parked,” offered for sale, or held for any purpose other than good faith business practice by us, the registrants, and Amelia’s and my previous affiliation with ERA is both clear and documented. Uniform Domain-Name Dispute-Resolution policy clearly outlines indicators of bad faith practices, and in this particular case, our prior use of the domain name is in clear connection with the good faith offering of goods and services.
Second, in
regards to the allegations of “willful trademark infringement,” I have not
advertised the domain name ERATEAM.COM, or used the mark of ERA, in any form or
in any medium, since leaving ERA American Towne Realty in October of 2002. The
domain name ERATEAM.COM has thus been retained by us only to ensure that the
many years of personal clientele of our real estate team, consisting of Amelia
Bruszewski, our two licensed daughters, and I, would be able to contact us and
revisit our personal website should they require to. Additionally, both my
wife and I have considered in the past, and are considering currently, making a
move back to an ERA franchise office, which would make our domain name once
again useful. The domain name now resolves to the main website at
AMELIABRUSZEWSKI.COM. In this case, it is clear that we, the registrants, have
made no intent to divert to a site that could harm the trademark owner's
goodwill, or intended to tarnish the complainant’s mark by creating the
likelihood of confusion as to source, sponsorship or affiliation, or
endorsement of the site, as no current advertisement of the domain name
ERATEAM.COM exists since my wife and I left ERA American Towne Realty.
We, as the registrants, have reasonable grounds to believe that the use of the
domain name ERATEAM.COM falls under the definition of fair and legitimate use
since registering it in July of 1996 with NETWORKSOLUTIONS.COM, and then
transferring the domain to GODADDY.COM in 2003. My wife, Amelia Bruszewski, has
been a top Realtor for almost 20 years, and we have put substantial time, money
and effort into building her name as an agent and as a brand, and not simply to
promote the commercial gain of the various agencies she has worked under.
Please know that we do understand and respect ERA Franchise Systems LLC’s interest in the ownership of the domain name ERATEAM.COM. However, we simply do not believe it is fair we just “hand over” the domain name considering all these points. And being that we are considering a move back to the franchise in the near future, please understand that my wife and I have a vested interest in keeping the domain name we have paid for and maintained for 15 years. We are hopeful that the single-member Administrative Panel will understand our right to keep our domain name, and we look forward to seeing this matter resolved soon.
FINDINGS
The Panel finds that Complainant has satisfied its burden under all three elements of paragraph 4(a) of the Policy, and orders that the Domain Name be transferred to 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."
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:
(a)
the domain name registered by Respondent is identical or confusingly
similar to a trademark or service mark in which Complainant has rights; and
(b)
Respondent has no rights or legitimate interests in respect of the
domain name; and
(c) the domain name has been registered and is being used in bad faith.
Complainant has clearly established that it holds rights in the ERA Marks. It holds several U.S. registrations, at least three of which issued well before Respondent registered the Domain Name.
The remaining question is whether the Domain Name is
confusingly similar to the ERA Marks. It is instructive to begin this inquiry
by looking at statements made by or on behalf of Respondent, specifically, the
letter from Respondent’s lawyer, Matthew J. Heagen, dated April 9, 2010
(“Heagen Letter”) and the Response. Those communications contain admissions
supporting Complainant’s position.
During the period of time beginning in 1996, when Respondent registered the Domain Name, and continuing until October of 2002, when Mr. and Mrs. Bruszewski left the employ of the Franchisee, they incorporated the Domain Name in their overall branding as ERA brokers. The branding was a single package that strongly emphasized that Mr. and Mrs. Bruszewski were ERA brokers.
The Heagen Letter acknowledges the connection between the Domain Name and the ERA Marks:
The truth is that my client, specifically Amelia Bruszewski, acted an as agent for ERA American Towne Realty in Toms River, New Jersey several years ago. During the time frame, which was lengthy, that she acted as agent for that company, she set up this account. …During the time when she was with ERA American Towne, she had many clients that accessed her through the erateam.com site. This is the means for those clients to continue to access her.
The Response goes further:
The domain name ERATEAM.COM has been registered to and paid for by us continuously, and since, July 10, 1996, during which time we were both employed by an ERA franchise in Toms River, New Jersey. …The domain name has never been “parked,” offered for sale, or held for any purpose other than good faith business practice by us, the registrants, and Amelia’s and my previous affiliation with ERA is both clear and documented.
… Additionally, both my wife and I have considered in the past, and are considering currently, making a move back to an ERA franchise office, which would make our domain name once again useful.
… Please know that we do understand and respect ERA Franchise Systems LLC’s interest in the ownership of the domain name ERATEAM.COM. However, we simply do not believe it is fair we just “hand over” the domain name considering all these points. And being that we are considering a move back to the franchise in the near future, please understand that my wife and I have a vested interest in keeping the domain name we have paid for and maintained for 15 years. (emphasis added).
It is clear that Mr. and Mrs. Bruszewski always understood and intended that the “era” in <erateam.com> would perform one function, namely, to represent a connection with the Complainant through use of the ERA Marks. This is the very embodiment of a confusingly similar domain name.
There are additional grounds for finding that the Domain Name is confusingly similar to the ERA Marks.
The Domain Name consists of the word “era” combined with the common term “team”. The addition of the word “team” to ERA does not serve to distinguish the Domain Name from the ERA Marks. See The Cartoon Network, Inc. v. bog@girls-pee.com, FA 1172983 (Nat. Arb. Forum May 13, 2008) (where the panel found confusing similarity between the respondent’s domain name, <cartoon-network-games.com>, and the complainant’s mark, CARTOON NETWORK, in spite of the addition of the common term “games” to the domain name); see also Express Serv., Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat Arb. Forum June 20, 2002) (where the panel held that “The mere addition of descriptive or generic words to a valid mark, however, does not eliminate the similarity between the domain name and the trademark.” The trademark considered in that case was EXPRESS and the domain names were <personnelexpress.com> and <expressjobs.com>.). Furthermore, the confusing similarity is increased because both parties operate in the same field. See Express Serv., Inc. v. Express Temp, FA103936 (Nat Arb. Forum Feb. 22, 2002).
Finally, even if, at the time that the Domain Name was registered (which is not being suggested by the Panel), a member of the public might not have perceived instantly that the Domain Name incorporated the ERA Marks and functioned as an ERA Mark itself, that perception would certainly have changed by the time that Respondent and Mrs. Bruszewski left the Franchisee. While they were employed by the Franchisee, they made significant use of the Domain Name together with a wide range of ERA-branded marketing material. That activity would have increased the connection between the Domain Name and the ERA Marks tremendously and would have caused it to be perceived as just one component of the portfolio of ERA trademarks and branding elements.
Complainant has satisfied its burden in relation to paragraph 4(a)(i) of the Policy.
Rights or Legitimate Interests
Respondent registered the Domain Name while he and Mrs. Bruszewski were working for the Franchisee. It is inconceivable to the Panel that Respondent did not understand full well that ERA is Complainant’s registered trademark and that Respondent was not entitled to use that trademark except as expressly permitted under license and related documents, such as the Policies. That is implicitly acknowledged by Respondent in the Response. That is, Respondent points to the legitimate employment relationship that he and Mrs. Bruszewski had with Complainant as justifying registration and use of the Domain Name.
Complainant asserts that at the time that Respondent registered the Domain Name, he was subject to the Policies, which prohibited registration of domain names that do not contain the Franchisee’s business name and do not contain any of the ERA Marks if it will cause such domain name to be confused with ERA’s website(s). While that Policy is not as definitive as one might expect, there is no doubt that the Domain Name offended the Policy from the moment it was registered. Specifically, the Domain Name does not contain the Franchisee’s name and is likely to be confused with the ERA Marks.
Even though the Domain Name may have violated Complainant’s Policies, the evidence shows that Respondent and Mrs. Bruszewski used the Domain Name during the term of their employment by the Franchisee for the purpose of communicating to the public their connection with Complainant and its real estate network. If that was not their purpose, they would have used one or more different domain names, including the one currently used by Mrs. Bruszewski, namely <ameliabruszewski.com>.
In any event, although Complainant did permit Respondent, while he was an employee of the Franchisee, to make some use of the ERA Marks that permission was pursuant to an express license. Once Respondent and Mrs. Bruszewski left the Franchisee, they lost all permission to utilize and take the benefit of the ERA Marks. The employment relationship ended approximately seven years ago, but Respondent continues to maintain the Domain Name and cause it to direct Internet users to Respondent’s Website. The Respondent’s Website has long since ceased all other use of the ERA Marks.
Complainant has established, on a prima facie basis, that Respondent has no rights or legitimate interests in the Domain Name. The burden now shifts to Respondent to show that it does have rights or legitimate interests in the Domain Name.
Respondent relies on paragraph 4(c)(i) of the Policy, asserting that he used the Domain Name in a bona fide offering of services before receiving notice of the dispute.
The first question to ask is whether Respondent’s activities constitute a bona fide offering of services. The panels in Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island, D2004-0711 (WIPO Nov. 15, 2004), Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001), and Philip Morris Incorporated v. Alex Tsypkin, D2002-0946 (WIPO Feb. 13, 2003), enunciated minimum cumulative requirements that a respondent must prove in order to establish a bona fide offering of goods or services pursuant to paragraph 4(c)(i), as follows:
(a)
Respondent must actually be offering the marked goods or can show
demonstrable preparations to use the domain name in connection with a bona
fide offering; and
(b)
Respondent must use the website to promote and sell only the marked
goods to the exclusion of other marked goods in order to avoid baiting Internet
users and then switching them to other goods; and
(c)
Respondent’s Website must accurately disclose the registrant’s
relationship with the mark’s owner; it may not, for example, falsely suggest
that it is the trademark owner or that the website is the official site if, in
fact, it is only one of many sales agents.
The evidence in this case demonstrates that Respondent does not qualify under any of those criteria.
However, Respondent points to his use of the Domain Name going back to 1996, asserting that he was engaged in a bona fide offering of services at that time, well before the cease-and-desist letter of March 2010. The Panel finds that the Respondent did, in fact, receive notice of the dispute back in 1996, before he registered the Domain Name. Complainant’s Policies did constitute notice to Respondent that he had no right to register or use the Domain Name. He knew, or ought to have known, that violating the Policies would result in this dispute. As well, the registrations for the ERA Marks serve as constructive notice of Complainants trademark rights. As a sales agent with Franchisee, who demonstrated acute awareness of the ERA Marks and their importance to his and his wife’s livelihood, if Respondent was not aware of the Policies and the registrations, that could only be as a consequence of willful blindness.
In any event, after Respondent and Mrs. Bruszewski left the Franchisee, they lost the last vestige of any possible right or legitimate interest in the Domain Name. Several U.D.R.P. cases have found that once licensed rights end, any vestige of rights or legitimate interests that may have existed before the license ended, terminate completely. This principle is well expressed in Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA112624 (Nat. Arb. Forum June 20, 2002), as follows:
At one time, Respondent owned license rights in Complainant’s EXPRESS marks by virtue of the parties’ Franchise Agreement. However, these rights were extinguished in 1997 with the termination of the Franchise Agreement. “Once a license has expired, use of the formerly licensed trademark constitutes infringement. To say that the licensee has acquired rights that survive the legal termination of that license destroys the entire concept of a license.” Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 94392 (Nat. Arb. Forum (May 5, 2000), quoting United States Jaycees v. Philadelphia Jaycees, 693 F.2d 134, 143 (3d Cir. 1981).
The facts in this case are similar to those in RE/MAX International Inc. v. NCR Northcoast Realty, FA1266756 (Nat. Arb. Forum Aug. 4, 2009). The respondent in that case was a former franchisee of the complainant who registered and used the disputed domain name while a franchisee, although apparently without the authority, consent, or acquiescence of the complainant. The panel held that the respondent did not have rights or legitimate interests:
No doubt exists that Bommarito’s right to use the RE/MAX mark terminated when the franchise terminated. Nevertheless Respondent has since termination of the franchise used the disputed domain name in furtherance of its real estate business and in competition with Complainant. This use is not a bona fide offering of goods and services. See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007).
Respondent has failed to establish that he has rights or legitimate interests in the Domain Name under paragraph 4(c)(i) of the Policy.
Complainant has satisfied its burden in relation to paragraph 4(a)(ii) of the Policy.
No matter how hard Respondent attempts to explain away his methods and motivations, Respondent and his lawyer freely admit that:
(a)
the ERA Marks are distinctive of and denote Complainant;
(b)
the Domain Name is related to the ERA Marks (why else
would moving back to an ERA franchise office “make our domain name once
again useful”?);
(c)
Respondent has set up the Domain Name so that it redirects Internet
users to Respondent’s Website; and
(d) Respondent’s Website is used to promote the services of Mrs. Bruszewski, which are directly competitive with the services sold by Complainant’s licensees, including the Franchisee (which previously employed Respondent and his wife).
In RE/MAX International Inc. v. NCR Northcoast Realty, noted above, the facts of which were similar the facts of this case, the panel held:
Even if NCR Northcoast Realty were deemed to be the party that registered the disputed domain name on June 15, 1998, the right to register a domain name was governed by Complainant’s trademark manual, and the disputed domain name violates that standard. Therefore, even if Respondent can be deemed to have made the registration, the registration was in bad faith. This fact, coupled with the overwhelming evidence of Respondent’s subsequent unlicensed use of the domain name to divert Internet users to Respondent’s real estate services in competition with Complainant, is sufficient to prove Respondent’s bad faith. See ERA TM LLC v. Era Sierra Props., FA 1239255 (Nat. Arb. Forum. Feb. 18, 2009).
See also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (where the panel found that respondent’s expected use of the redbull.org domain name would lead visitors to the belief that the domain name was affiliated with complainant, therefore making the registration alone equal to use in bad faith); see also TM Acquisition Corp. v. Internet and Mail Order Marketing, FA 169053 (Nat. Arb. Forum Aug. 21, 2003) (where the panel found bad faith because respondent registered the <century21homesforsale.com> domain name in order to attract visitors to respondent’s website, which was undeniably based on its infringing use of complainant’s mark and associated goodwill).
The Panel finds that Respondent is intentionally attempting to attract, for commercial gain, Internet users to Respondent’s Website by creating a likelihood of confusion with the ERA Marks.
Additionally, Respondent’s lawyer, on behalf of Respondent, offered to sell the Domain Name to Complainant. In the words of Attorney Heagen:
As such, at this time, it is not our intention to relinquish the use of that site as it continues to be an integral part of her business. I certainly invite further discussion on this issue. Should your client be interested in negotiating a purchase, that is something that can be discussed.
Although Mr Heagen did not mention a price, the message is clear - Respondent was seeking a price in excess of the “documented out-of-pocket costs related to the domain name.” Attorney Heagen was attempting to initiate a negotiation. There is no evidence that, as of the time that Respondent registered the Domain Name, he intended to sell the Domain Name to Complainant for a price in excess of the “documented out-of-pocket costs related to the domain name”. Accordingly, the Panel has no basis to find that paragraph 4(b)(i) of the Policy applies. However, for Respondent to propose such a sale in 2010 clearly exhibits extreme bad faith in a general sense.
Complainant has satisfied its burden in relation to paragraph 4(a)(iii) of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <erateam.com> domain name be TRANSFERRED from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: 25 March 2011
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