National Association of Realtors v. Park
Sungjo
Claim Number: FA0212000137218
PARTIES
National Association of Realtors
430 North Michigan Avenue,
Chicago, IL, 60611-4087, U.S.A.
Georges Nahitchevansky
Fross Zelnick
Lehrman & Zissu P.C.
866 United Nations Plaza,
New York, New York 10017
Seongjo Park
9-303 Samhwan, Garak-Dong,
Songpa-Gu, Seoul City, REPUBLIC OF KOREA
(Address for responses:
8-623 Miseong Apt., Shincheon-Dong, Songpa-Gu, Seoul City, REPUBLIC OF KOREA)
REGISTRAR AND
DISPUTED DOMAIN NAME
The disputed domain name is <realtors.biz>, which
is registered with Hangang
Systems Co., Ltd. (d/b/a Doregi.com).
PANEL
The
below
listed Panel hereby certifies that it has
acted independently and impartially and to the best of its knowledge has no known conflict in serving as Panel in this proceeding.
Panel: Kim Young
PROCEDURAL
HISTORY
Complainant
submitted a Notification of Complaint to
the National Arbitration Forum (the “Forum”) by electronic mail on December 19, 2002;
the Forum received a printed
copy of the Complaint on December 23,
2002.
On
December
20, 2002, Hangang Systems
Co., Ltd. (d/b/a Doregi.com) confirmed
by e-mail to the Forum that the domain name <realtors.biz> is registered with Hangang Systems
Co., Ltd. (d/b/a Doregi.com)
and that the Respondent is the current registrant of the name. Hangang Systems Co., Ltd. (d/b/a Doregi.com) has verified that the Respondent is bound by the Hangang Systems
Co., Ltd. (d/b/a Doregi.com)
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
January
3, 2003, a Notification of Complaint and
Commencement of Administrative Proceeding (the “Commencement Notification”) were transmitted to the Respondent via e-mail, post and fax, to
all entities and persons listed on Respondent’s registration as technical,
administrative and billing contacts, and to postmaster@realtors.biz by e-mail. The Commencement
Notification set a deadline of January 23, 2003 by which Respondent could file
a Response to the Complaint.
The Respondent’s
Response was submitted before the above deadline on January 12, 2003.
On January 24, 2003, pursuant to Complainant’s
request, a one-member panel was appointed.
RELIEF SOUGHT
Complainant
requests that the Disputed Domain Name
be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Contention
Rights to the Complainant’s Trademark and Similarity between the Trademark
and Domain Name
The Complainant chose and began to use the REALTOR
mark in the USA in 1916 and currently continues to use it for the purpose of
distinguishing the approximately 800,000 members of the National Association of
Realtors (“NAR”), which is the Complainant, from non-members, through an
organization in 54 states (sic) in the US of approximately 1,700 local
associations/boards of administration and 57 international organizations in 47
countries.
The Complainant has also acquired registrations of the REALTOR mark and/or
REALTOR logo in 40 countries of the world, including the USA. In many areas,
including Korea (Korea filing number: 43-2000-66), filings are underway for
registration of the REALTOR mark and/or REALTOR logo.
Because the
REALTOR.BIZ domain name is not adequately distinguishable from the REALTOR mark
of the Complainant as the difference involves just adding or deleting an “S”,
it is similar enough as to bring about confusion with the REALTOR mark of the
Complainant.
Legitimate Rights
of the Respondent
Because the
Respondent is not using the Domain Name for the good faith provision of goods
or services, he cannot prove or demonstrate legitimate rights to the Domain
Name. Furthermore, the Complainant has not granted the Respondent any license,
permission or other rights to own or use a domain name that includes the
REALTOR mark. The Respondent is not a member of the NAR, which is the
Complainant, and so does not have any right to use the REALTOR mark and is not
known by the Disputed Domain Name. Therefore, the Respondent does not have any
rights or legitimate usage rights to the Disputed Domain Name.
Bad Faith
Registration and Use of the Domain Name by the Respondent
The fact that the Respondent is not using the Domain Name in good faith
says that the Respondent does not have legitimate rights to use the Domain
Name. Except for showing the words “Under Constructions” on the page of the
Domain Name until recently, the Respondent has not used the Domain Name at all
and beginning one week before submission of the Notification of Complaint of
this case, was only using the Domain Name in order to direct web traffic to a
page on a web site (www.jatong.org) dealing
in political matters and cases in Korea and which has absolutely no relationship
with NAR, real estate, the real estate business or related information.
The fact that the
Respondent does not have legitimate rights to the Domain Name can be demonstrated
by the fact that the Respondent had registered multiple domain names based on
the trademarks and names of 3rd parties in order to obtain unjust
enrichment.
The Respondent was revealed in previous Forum panel decisions to be a
business that registers and trades in names respective to trademarks owned by 3rd
parties, such as <innerware.info>, <seaq.info>, <seraglio.info>,
<e.toefl.info>, <e-daewoo.info>, and <e-lotte.info>. Looking
at this fact, it is clear that the Respondent is a business trading illegally
in domain names.
In conclusion, it is clear that the Respondent registered the Domain Name
for the purpose of selling, renting or transferring it or to prevent its
legitimate use by the Complainant.
B. Response of the Respondent
Legitimate Rights
of the Respondent
The word <realtor> is being used as the service mark of the National
Association of Realtors in the USA and to indicate a real estate agent
belonging to the National Association of Realtors but it is also used as an
ordinary noun to indicate a real estate agent in other English-speaking
countries, such as the UK and Australia. There are dictionaries which describe <realtor>
with only the meaning of this kind of ordinary noun.
Also, many companies and persons around the world who are not connected
with the Complainant are known to own multiple domain names or trademarks
related to <realtor(s)>.
Rights and interests in a domain are decided based on the principle of
first-registration in the case of registration of a domain name made up of
ordinary nouns or common words. Therefore, the Complainant has legitimate
rights and interests as the first registrant of the Disputed Domain Name of
this case.
Bad Faith
Registration and Use of the Domain Name by the Respondent
At the time of registering the Disputed Domain Name, the Respondent could
not know of the existence of the Complainant and the Complainant is not well
known in the Republic of Korea.
The Complainant asserts that the Respondent has registered multiple domain
names related to the trademarks and company names of 3rd parties and
is doing business illegally for their sale. But most of the domain names
referred to by the Complainant are ordinary nouns that can be found in the
dictionary. Also, several of the cases were decided with English as the
administrative language by the Forum even though the administrative language
was supposed to be Korean and they are unfair cases which were decided without
the Respondent even being able to submit a response.
It is true that the Respondent has used the Disputed Domain Name for the
purpose of directing web traffic to one page on the www.jatong.org web site. But the use of the
Disputed Domain Name in order for the Respondent to make political issues known
is unrelated to bad faith of the Respondent.
The
Respondent did not register the Disputed Domain Name in bad faith whatsoever.
FINDINGS
The Complainant has acquired registrations of the REALTOR mark and/or
REALTO logo in 40 countries of the world, including the USA. In many areas,
including Korea (Korea filing number 43-2000-66), filings are underway for
registration of the REALTOR mark and/or REALTOR logo.
The Complainant has currently
not used the Disputed Domain Name of <realtors.biz> for any purpose other
than to link to another web site that is regarding political matters in Korea.
DISCUSSION
According to Paragraph 15(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), the Panel is 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.
Identicalness or
Confusing Similarity of the Trademark and Domain Name
This Domain Name is similar enough to be confusingly
similar to the REALTOR trademark of the Complainant. The Respondent did not
dispute this.
Rights or
Legitimate Interest of the Respondent
As this Domain
Name is an ordinary noun, the Respondent asserts that he has legitimate rights
and interest to use the Domain Name based on the principle of
first-registration of the domain but, other than that, has not asserted or
submitted evidence that the Respondent was commonly known by the name of the
Domain Name or was using the Domain Name in connection with the good-faith
provision of goods and services before this Complaint was filed. Therefore, the
above assertion regarding ordinary nouns is handled in the following paragraph
and is not decided separately.
Bad Faith of the
Respondent
This Panel
considers that the Complainant has not proven bad faith of the Respondent
regarding the registration and use of this Domain Name.
The term “realtor”
is also listed in the dictionary as an ordinary noun to indicate a real estate
agent, in addition to meaning the Complainant and there are multiple companies
and persons other than the Complainant that have registered and own multiple
domain names and trademarks related to “realtor(s)”. Namely, it is thought that
the term “realtor” may have been recognized only as the trademark of the
Complainant at first but then its use became ordinary and it gradually lost its
function as a trademark and has become an ordinary noun. Therefore, there is
not enough proof to say that the Respondent knew of the existence of the
Respondent and then registered this Domain Name with the intent of acquiring
unjust enrichment from it.
The applicant
asserts that since the Respondent was judged to be an illegal seller of domain
names as a party in multiple previous Forum cases, he should also be recognized
as having bad faith in this case also. But, it is not appropriate to apply all
the recognized facts of other cases to this case based only on the fact of
being a party in another case and so even if it is recognized that the
Complainant registered this Domain Name with the purpose of selling it, as long
as “realtor”, which is the main part of the domain name of this case, is also
being used in some dictionaries as a common noun to indicate real estate
agents, the Respondent’s bad faith cannot be demonstrated by those other cases
alone.
It is true that
the Respondent is merely linking this Domain Name to another site but the
linked site has no relationship with the business of the Complainant and also
is not a commercial site so it cannot be considered that the Respondent is
using the similarity of the Domain Name to indicate a cooperative or service
supply relationship with the Complainant or trying to obtain unjust business
enrichment or cause business damages to the Complainant by causing confusion with
the Complainant’s web site.
DECISION
In order to transfer a Disputed Domain Name, the
Complainant must prove all three of the elements in Article 4(a) of the Policy
and, as reviewed above, this Panel considers that the Complainant has not been
able to prove bad faith of the Respondent in regards to the registration and
use of the domain name of this case. Therefore, as per Article 4 of the Policy
and Article 15 of the Rules, the Panel dismisses the request for transfer of
the Disputed Domain Name to the Complainant.
Young Kim
Decision Date: February
6, 2003
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