TM Acquisition Corp. v.
Jimmy Nevius a/k/a Nevius, J.
Claim Number:
FA0302000146634
PARTIES
Complainant is TM Acquisition Corp., Las
Vegas, NV (“Complainant”) represented by Kathryn S. Geib. Respondent is
Jimmy Nevius a/k/a Nevius, J., Henderson, NV, (“Respondent”) represented by
Jimmy L Nevius.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The domain names at issue are <century21express.com>,
<century21express.net> and <c21express.net>,
registered with Network Solutions, Inc., and <c21express.com>,
registered with Namesdirect.
PANEL
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.
R. Glen Ayers served as Panelist.
PROCEDURAL
HISTORY
Complainant submitted a Complaint to the
National Arbitration Forum (the “Forum”) electronically on February 25, 2003;
the Forum received a hard copy of the Complaint on February 26, 2003.
On February 27, 2003, Network Solutions, Inc.
confirmed by e-mail to the Forum that the domain names <century21express.com>,
<century21express.net> and <c21express.net> are
registered with Network Solutions, Inc., and that the Respondent is the current
registrant of the names. On March 6, 2003, Namesdirect confirmed by e-mail to
the Forum that the domain name <c21express.com> is registered with
Namesdirect and that the Respondent is the current registrant of the name.
Network Solutions, Inc. and Namesdirect have verified that Respondent is bound
by their respective registration agreements and they have 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 March
7, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of March 27,
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@century21express.com,
postmaster@century21express.net, postmaster@c21express.com, and
postmaster@c21express.net by e-mail.
A timely Response was received and determined to
be complete on March 25, 2003.
On April 2, 2003, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the Forum
appointed R. Glen Ayers as Panelist.
RELIEF
SOUGHT
Complainant requests that the domain names be
transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
1.
Complainant
Complainant assets that it holds a very large
number of trademarks related to the “CENTURY 21" real estate
business. Complainant licenses the
right to use 93 registered marks and claims the rights to ownership of numerous
common-law marks, which it also licenses.
Century 21 is used in the context of real estate
sales. Century 21, Inc., the licensee,
is a Delaware corporation. That
Delaware corporation sublicenses all the Century 21 marks to franchisees,
including a franchisee doing business as “CENTURY 21 Express” in Las Vegas,
Nevada. Complainant alleges that
Respondent, who “appears to be a resident of Nevada,” is a person who offers
real estate services in competition with the Las Vegas franchisee. Complainant asserts that Respondent is not a
franchisee or licensee. Complainant
does allege that Respondent had some relationship with the Las Vegas
franchisee. Complainant alleges that
Respondent registered the four domain names in dispute and listed above on
January 10, 2001.
Those
domain names originally resolved to a web page on which Respondent identified
himself as a person who served as a Las Vegas area real estate agent. Complainant alleges that it sent letters
requesting resolution of this problem and offered to pay costs incurred.
Thereafter, Respondent arranged that these domain names resolve to a separate,
non-profit, web page, which remains undeveloped but which purports to deal with
issues related to the twenty-first century.
Complainant
asserts that the four domain names in dispute are confusingly similar to its
marks. Complainant alleges that
Respondent has no rights or legitimate interests in the names and has never
made a bona fide offering of commercial
services under those names.
Complainant alleges that Respondent apparently initially registered the
names thinking that he might go to work for or with the Las Vegas
franchisee. Complainant asserts that
Respondent has never been known by the domain names and that Respondent is
“clearly not making a non-commercial, fair use of the domain names.”
Finally,
Complainant asserts bad faith based upon Policy ¶¶ (4)(b)(i), (ii), (iii), and
(iv).
Complainant alleges that Respondent answered its
demand letter by seeking to sell the domain names in violation of Policy ¶ (4)(b)(i). Complainant alleges that bad faith is
shown under Policy ¶ (4)(b)(ii) because the
registration of the domain prevents use by the Las Vegas franchisee and
others. Complainant asserts that bad
faith exists under Policy ¶ (4)(b)(iii) because the
registration was “for the purpose of disrupting the business of a
competitor.”
Finally, Complainant asserts that Policy ¶ (4)(b)(iv) allows “a finding of bad faith where
the Respondent intentionally attempted to attract, for commercial gain,
Internet users to its web site.”
As to
the bad faith issues, Complainant states that Respondent used the famous
“CENTURY 21" mark to divert customers to his own real estate business.
2.
Respondent
Respondent
spends much of the initial portion of his response disputing the contentions of
Complainant that Respondent was in some way involved or hoped to be involved
professionally with the Las Vegas CENTURY 21 franchisee. Respondent has provided affidavits and other
evidence that he never intended to or would never have gone to work for the
CENTURY 21 franchisee.
Respondent
does specifically deny that he offered to sell the domain names. Further, he states that in response to his
request for reimbursement and expenses, he never received an answer from
Complainant. In fact, as Respondent
points out, Complainant’s e-mail did not contain a firm offer but merely stated
that Complainant “maybe willing to pay you the registration fees you
incurred.” In response to the various
legal arguments, Respondent denies any confusing similarity or identity. Respondent asserts that his Las Vegas office
is seven miles from the Complainant’s franchise and that he does not actively
work in Las Vegas. Respondent asserts that
he works in California. Respondent asserts that the local franchisee is
actually licensed as “Express Realty Corporation.” Respondent asserts that the claimed franchisee has not even filed
a copy of the franchise agreement with the State of Nevada. Respondent denies that his profession has
anything to do with the issue of bad faith.
Respondent
engages in an extensive discussion as to the validity of the trademarks,
pointing out that “CENTURY,” “21,” “Express” and other terms are relatively
common generic words.
As to
the issue of rights to the names, Respondent says that he used and made
preparation to use the four domain names in dispute in order to offer services
prior to receiving notice of the dispute and that he is commonly known by the
domain names. Respondent also asserts
that he has made fair use of the domain names.
Respondent places much stress upon his intent to create a domain that
would deal with issues arising in the twenty-first century. Respondent complains to be commonly known by
these domain names. Respondent says
that he is making clear use for a not-for-profit service.
Respondent
also denies bad faith. He points out
that the response to his request for reimbursement was never received and that
it contained no specific agreement to reimburse Respondent’s expenses. Respondent denies that he ever offered the
domain name for sale and asserts that he has no bad faith in attempting to
establish web sites dealing with issues related to the twenty-first Century.
Respondent
denies any attempt to block use of the domain names by Complainant. Respondent denies that he is a competitor
and argues that “REALTORS ® do not compete with one another.”
Respondent
denies that he ever attempted to attract Internet users for personal gain at
the expense of the Complainant.
In conclusion, the Respondent asserts that the
“Complaints [sic] claims are more than false, they’re deliberate lies to
mislead the Panel and further use the Panel for their financial gain.”
FINDINGS
First,
and notwithstanding Respondent’s repeated contentions that “REALTORS ® do not
compete with one another,” that statement is objectively false. Irrespective of the desires of Respondent,
real estate agency and brokerage are as competitive as any other business and
persons employed in the industry compete for clients and commissions.
Respondent is a real estate agent or sales person active in the Nevada area
(even if he has removed the center of his activity from Nevada to California).
Further, the Panel finds that the three domain
names in dispute, <century21express.com>, <century21express.net>,
<c21express.net>, and <c21express.com>, are identical or
confusingly similar to one or more of the trademarks held and licensed by the
Complainant. Whether the Complainant’s
franchisee is known as “CENTURY 21 Express” or “Express Realty Corporation” is
really irrelevant. The franchisee does
not own the trademarks. Complainant
owns the trademarks.
The
Panel further finds that no one in the real estate business would have
registered such domain names unless they had some interest in identifying
themselves with the CENTURY 21 network.
Respondent
offered no persuasive evidence that he is known by these domain names. Respondent offered no persuasive evidence
that he made any bona fide use of the domain names prior to being notified of
the dispute. Bona fide use means some
use other than a use that infringes on the mark of another.
Use of the domain names to lead an Internet user
to Respondent’s real estate sales website isobviously bad faith. Changing the resolution to an undeveloped
website devoted to “twenty-first century issues” is a little like closing the
barn door after the horse leaves.
These facts, complete with the listing of the
names for sale, leads to the conclusion that
once Respondent was caught with his hand in the cookie jar, he started
dreaming up excuses for his conduct.
The Panel finds “bad faith” exists and that, at
the present time, Respondent is maintaining the domain names in an attempt to
block use by Complainant.
The various decisions cited by Respondent have
been reviewed. None seems to support a
different set of findings.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 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.
Identical and/or Confusingly Similar
First,
it is obvious that the domain names and marks held by Complainant are either
identical or confusingly similar to the domain names in dispute. While Respondent asserts that the names and
marks contain generic terms, Respondent ignores the simple fact that Complainant
holds 93 registered marks, many of which are identical or confusingly similar
to the four domain names in dispute.
That variations of these domain names are available does not mean that
those domain names can be registered by persons other than persons associated
with Complainant and its franchise system.
Respondent also asserts that he is attempting to register a competing
mark. Again, that is irrelevant. Registration of marks is a matter for the United States Patent and
Trademark Office.
While it
is true that the Uniform Domain Dispute Resolution Policy (UDRP) does not cover
every possible violation of trademark rights, this case is clearly within scope
of the UDRP.
The Panel thus finds that Policy ¶ 4(a)(i) has
been satisfied.
Respondent
is certainly not known by any of these domain names. Respondent asserts that he has an idea for some sort of website
dealing with twenty first century issues (and he had the idea years ago). That does not mean that Respondent is known
by these names. Further, Respondent has
never made a bona fide offering of goods and services. Apparently, as set forth in the Complaint,
Respondent did make an offering of goods and services, which was in direct
competition with the Complainant’s rights and interests.
Respondent
is certainly not making fair use of the domain names. Apparently, he chose to cause these domain names to resolve to
his “not for profit” website only after being caught with his hand in the
cookie jar.
The Panel thus finds that Policy ¶
4(a)(ii) has been satisfied.
As to bad faith, while it seems clear that the
Respondent has offered to sell the domain names, the evidence that Complainant
has cited may not be sufficient for a finding of bad faith.
What is sufficient for a finding of bad
faith is the clear evidence that the Respondent, a real estate agent,
registered four domain names that resemble trademarks held by a nationwide
franchisor of real estate services. He
caused those domain names to resolve to a website at which Respondent offered
to handle real estate transactions.
That, in its simplest form, is bad faith prohibited by Policy ¶
4(b). In doing so, Respondent attempted
to attract Internet users, for commercial gain, by creating a likelihood of
confusion with the Complainant’s mark.
After being confronted by Complainant, Respondent caused the domain
names to resolve to a website that is undeveloped.
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly,
it is Ordered that the <century21express.com>, <century21express.net>,
<c21express.com> and <c21express.net> domain names be
TRANSFERRED from Respondent to Complainant.
R.
GLEN AYERS, Panelist
Dated: April 15, 2003
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