ERA Franchise Systems LLC v. Internacional Web Group
Claim Number: FA1201001422122
Complainant is ERA Franchise Systems LLC (“Complainant”), represented by Linda M. Dooley of Realogy Corporation, New Jersey, USA. Respondent is Internacional Web Group (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <erapropertymovers.net>, registered with Go Daddy, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2012; the National Arbitration Forum received payment on January 4, 2012.
On January 3, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <erapropertymovers.net> domain name is registered with Go Daddy and that Respondent is the current registrant of the domain name. Go Daddy has verified that Respondent is bound by the Go Daddy 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 January 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 25, 2012 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@erapropertymovers.net. Also on January 5, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 January 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant owns federal registrations for the ERA service mark, on file with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,078,060, registered November 22, 1977).
Complainant is a franchisor of real estate brokerage services and uses the mark as the franchise name in this industry.
Respondent registered the disputed domain name on October 31, 2011.
The disputed domain name resolves to a website at which timeshare owners are asked to sell their timeshares to clients of Respondent.
This use competes directly with Complainant’s franchisees and their property listings business.
Respondent’s <erapropertymovers.net> domain name is confusingly similar to Complainant’s ERA mark.
Respondent is not commonly known by the disputed domain name.
Respondent is not licensed to use Complainant’s ERA mark in a domain name.
Respondent does not have any rights to or legitimate interests in the domain name <erapropertymovers.net>.
Respondent registered and uses the <erapropertymovers.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has rights in the ERA mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <erapropertymovers.net> domain name is confusingly similar to Complainant’s ERA mark. The disputed domain name includes the entire mark, while adding the descriptive terms “property” and “movers,” which describe Complainant’s business and that of its franchisees. The domain name also includes the generic top-level domain (“gTLD”) “.net.” These additions to the mark, made in forming the contested domain name, are insufficient to distinguish the two, thereby making the domain name confusingly similar to the mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another under Policy ¶ 4(a)(i)); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
The Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent has no rights to or legitimate interests in the contested domain name. Once Complainant has made out a prima facie showing in support of this assertion, the burden shifts to Respondent to demonstrate that it has such rights or interests. See, for example, Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights or legitimate interests in a disputed domain name).
Complainant has made out the requisite prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to offer a response to the allegations of the Complaint filed in this proceeding, we are free to presume that Respondent lacks rights to or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.
Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent is not licensed to use Complainant’s ERA mark in a domain name. Moreover, the pertinent WHOIS information identifies the registrant of the disputed domain name only as “Internacional Web Group,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the <erapropertymovers.net> domain name so as to have demonstrated that it has rights to or legitimate interests in the domain under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name, and so had no rights to or legitimate interests in that domain under Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain).
We also note that Complainant asserts, without objection from Respondent, that Respondent is not making a bona fide offering of goods or services by means of the disputed <erapropertymovers.net> domain name, nor is it making a legitimate noncommercial or fair use of the domain. The record reflects that Respondent’s domain name resolves to a website that offers timeshare brokerage services which compete with Complainant’s franchisees’ business. This is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is it a legitimate non-commercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services); to the same effect, see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s disputed domain name disrupts Complainant’s business by operating the resolving website in the manner alleged in the Complaint, thus demonstrating bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005):
Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).
See also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that a respondent’s registration of a domain name substantially similar to a complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that that respondent registered and used the domain name to disrupt the complainant’s business in bad faith under Policy ¶ 4(b)(iii)).
In addition, in the circumstances here presented, we may comfortably presume that Respondent registered and is using the disputed domain name in the manner alleged in the Complaint for its commercial gain. This evidences bad faith registration and use of the domain under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent used a disputed domain name to sell services that targeted a complainant’s market); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that a respondent engaged in bad faith registration and use of domain names that were identical or confusingly similar to a complainant’s mark by using them to redirect Internet users to a website that offered services similar to those offered by that complainant).
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <erapropertymovers.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: February 7, 2012
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