RE/MAX
International, Inc. v. Domain Active Pty. Ltd.
Claim
Number: FA0302000145277
Complainant is
RE/MAX International, Inc., Greenwood Village, CO, USA (“Complainant”)
represented by Nancy L. Dempsey, of LeBoeuf, Lamb, Greene &
MacRae LLP. Respondent is Domain Active Pty. Ltd., Clayfield,
AUSTRALIA (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <remaxmainstreet.com>, registered with Fabulous.com
Pty 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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 12, 2003; the Forum received a hard copy of the
Complaint on February 13, 2003.
On
February 13, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that
the domain name <remaxmainstreet.com> is registered with Fabulous.com
Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that
Respondent is bound by the Fabulous.com Pty Ltd. 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
February 17, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 10, 2003 by which Respondent could file a Response to the
Complaint, was transmitted to 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@remaxmainstreet.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 28, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed the Honorable Charles K.
McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <remaxmainstreet.com>
domain name is identical and confusingly similar to Complainant’s RE/MAX
MAINSTREET and RE/MAX marks, respectively.
2. Respondent does not have any rights or
legitimate interests in the <remaxmainstreet.com> domain name.
3. Respondent registered and used the <remaxmainstreet.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
exclusively used the RE/MAX mark in connection with its residential real estate
operations in the United States and abroad since 1973. Complainant’s real estate services have
grown to include approximately 58,000 sales agents who provide services under
the RE/MAX mark. Since the mark’s
inception, Complainant has invested nearly $3 billion in promoting its RE/MAX
real estate brokerage services.
Complainant has
secured trademark protection of its RE/MAX mark with the United States Patent
and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,139,014; 1,339,510; 2,403,626
and 2,468,858).
In addition,
Complainant has an interest in the RE/MAX MAINSTREET mark through use of the
mark in connection with its corporate extranet. This service “provides members
of the RE/MAX Network a secure, online location to, among other things, perform
property searches; exchange referrals; obtain resource materials, files, forms,
and software; and participate in real-time online conversation.” Complainant has used the RE/MAX MAINSTREET
mark since 1997. A USPTO registered
trademark for the RE/MAX MAINSTREET mark was issued to Complainant on August
14, 2001.
Respondent
registered the disputed domain name on September 18, 2002. Respondent has used the domain name to
provide links to commercial websites. A
number of links connect to websites that offer real estate brokerage services,
which are in direct competition with Complainant’s RE/MAX services. Some of the links at the resulting <remaxmainstreet.com>
website connect to websites that display adult-related content. Not only does the disputed domain name
provide access to adult-oriented websites but some of the links provided at the
domain name’s website grant access to online gambling websites. Moreover, when Internet users attempt to
close out of the web-browser, they are inundated with pop-up
advertisements.
Although
Complainant franchises out the right to use the RE/MAX mark, Complainant never
granted Respondent permission to use the RE/MAX mark or the RE/MAX MAINSTREET
mark for any reason.
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.
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 has
demonstrated an interest in both the RE/MAX and RE/MAX MAINSTREET marks through
its substantial use of the marks and trademark registration with the
USPTO.
First,
Respondent’s <remaxmainstreet.com> domain name contains
Complainant’s RE/MAX mark without the forward slash and with the addition of
the common phrase “mainstreet.” The
permissible content in second level domains, such as “remaxmainstreet” in the
disputed domain name, extends only to letters, numbers and hyphens. Since the forward slash in the RE/MAX mark
may not be duplicated in a domain name, the use of “remax” in a domain name is
an appropriation of Complainant’s RE/MAX mark.
The addition of the generic term “mainstreet” does not create the
distinction necessary to overcome the confusing similarity between the disputed
domain name and Complainant’s mark.
Moreover, the dominant portion of the <remaxmainstreet.com>
domain name remains Complainant’s distinct RE/MAX mark. Therefore, Respondent’s <remaxmainstreet.com>
domain name is confusingly similar to Complainant’s RE/MAX mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb.
Forum Apr. 24, 2000) (finding that punctuation is not significant in
determining the similarity of a domain name and mark); see also Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the Complainant combined with a generic
word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive word . . . nor the suffix
‘.com’ detract from the overall impression of the dominant part of the name in
each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Second,
Respondent’s <remaxmainstreet.com> domain name reflects
Complainant’s entire RE/MAX MAINSTREET mark.
As previously mentioned, the absence of the forward slash in the domain
name does not alter the analysis under Policy ¶ 4(a)(i) because the forward
slash may not be reproduced in a domain name.
There are two other altering features of the <remaxmainstream.com>
domain name that are inconsequential.
First, spaces are not permitted in second level domains. Second, top-level domains, such as “.com,”
are required in every domain name.
Hence, those variations in the <remaxmainstreet.com> domain
name are of no significance and Respondent’s domain name is identical to
Complainant’s RE/MAX MAINSTREET mark. See
Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan.
7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as
spaces are impermissible in domain names and a generic top-level domain such as
‘.com’ or ‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) is satisfied.
Respondent has
failed to come forward and answer Complainant’s allegations. Complainant submitted a prima facie
Complaint, which alleges that Respondent has no rights or legitimate interests
in the <remaxmainstreet.com> domain name. In the absence of a Response, the Panel is
permitted to infer that all allegations in the Complaint are true, and will
draw all reasonable inferences in Complainant’s favor. See 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”); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw
adverse inferences from Respondent’s failure to reply to the Complaint).
Respondent
directs the <remaxmainstreet.com> domain name to a website that
contains multiple links to a variety of websites. Those websites include real estate brokerage sites in direct
competition with Complainant, adult-oriented sites, and gambling sites. In addition, when a user tries to back out
of the resulting website a number of pop-up windows appear, advertising
gambling and pornographic websites. It
is reasonable to infer that Respondent commercially profits from the various
uses of the <remaxmainstreet.com> domain name. Respondent’s use of the <remaxmainstreet.com>
domain name fails to ensure rights or legitimate interests in the domain name
under the provisions of Policy ¶¶ 4(c)(i) or (iii). See Vapor Blast Mfg.
Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001)
(finding that Respondent’s commercial use of the domain name to confuse and
divert Internet traffic is not a legitimate use of the domain name); see
also Ticketmaster Corp. v.
DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
Furthermore,
Respondent is not commonly known as <remaxmainstreet.com>
or RE/MAX or RE/MAX MAINSTREET.
Therefore, Respondent has no rights or legitimate interests in the <remaxmainstreet.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name or using the domain name in connection with a
legitimate or fair use).
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the <remaxmainstreet.com>
domain name; thus, Policy ¶ 4(a)(ii) is satisfied.
Respondent’s
attempt to profit by its diversionary use of the <remaxmainstreet.com>
domain name constitutes bad faith under Policy ¶ 4(b)(iv). Since some links at the resulting website
direct Internet traffic to websites that offer real estate services in direct
competition with Complainant, individuals using the <remaxmainstreet.com>
domain name could become confused as to Complainant’s affiliation. In addition, Respondent’s use of the
disputed domain name in connection with websites containing adult content and
gambling access represents an opportunistic attempt to trade on Complainant’s
RE/MAX services and associated goodwill.
See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Luck's Music Library v. Stellar
Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the
Respondent had engaged in bad faith use and registration by linking the domain
name to a website that offers services similar to Complainant’s services,
intentionally attempting to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with the Complainant’s marks); see
also Geocities v. Geociites.com,
D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked
the domain name in question to websites displaying banner advertisements and
pornographic material).
Registering a
domain name with knowledge of another entity’s interest in a mark reflected in
the domain name constitutes bad faith registration. Given the variety of infringing uses of the <remaxmainstreet.com>
domain name and the well-established goodwill of the RE/MAX mark, the Panel
infers that Respondent had knowledge of Complainant’s interest in the RE/MAX
mark. Therefore, the Panel finds that
Respondent registered the <remaxmainstreet.com> domain name in bad
faith. See Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a
legal presumption of bad faith, when Respondent reasonably should have been
aware of Complainant’s trademarks, actually or constructively”); see also
Chanel, Inc. AG v. Designer Exposure,
D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use
of the famous CHANEL mark suggests opportunistic bad faith).
The Panel finds
that Policy ¶ 4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <remaxmainstreet.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
April 2, 2003
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