TM Acquisition Corp. v. S.E.A. Domains
Claim
Number: FA0305000156800
Complainant is
TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented
by Kathryn S. Geib. Respondent is S.E.A. Domains, Singapore, SG
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <c21expressrealty.com>, <ccentury21.com>,
<kathryngeib.com> and <vandavis.net>, registered with
Enom, Inc.
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 May 7, 2003; the Forum received a hard copy of the Complaint
on May 8, 2003.
On
May 8, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <c21expressrealty.com>,
<ccentury21.com>, <kathryngeib.com> and <vandavis.net>
are registered with Enom, Inc. and that Respondent is the current registrant of
the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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
May 9, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 29, 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@c21expressrealty.com, postmaster@ccentury21.com, postmaster@kathryngeib.com
and postmaster@vandavis.net 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
June 5, 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <c21expressrealty.com>
and <ccentury21.com> domain names are confusingly similar to
Complainant’s CENTURY 21 and C21 marks. Respondent’s <kathryngeib.com>
and <vandavis.net> are identical to Complainant’s KATHRYN GEIB and
VAN DAVIS marks.
2. Respondent does not have any rights or
legitimate interests in the <c21expressrealty.com>, <ccentury21.com>,
<kathryngeib.com> and <vandavis.net> domain names.
3. Respondent registered and used the <c21expressrealty.com>,
<ccentury21.com>, <kathryngeib.com> and <vandavis.net>
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM
Acquisition Corp., holds numerous trademark registrations on the Principal
Register of the United States Patent and Trademark Office (“USPTO”), including
the CENTURY 21 mark (U.S. Reg. No. 1,063,488, registered on April 12, 1977) and
the C21 mark (U.S. Reg. No. 1,257,866, registered on November 15, 1983).
Complainant sub-licenses its CENTURY 21 marks to its franchises for real estate
brokerage services. The CENTURY 21 family of marks has been used continuously
in the United States in commerce since April 16, 1972.
Among its
various licensees is a franchisee of Complainant operating as CENTURY 21
Express in Las Vegas, Nevada. Since November 2000, Mr. F. Van Davis has been
the President and Chief Executive Officer of Century 21 Real Estate
Corporation, and since February 1996, Kathryn S. Geib has been an in-house
attorney for that same entity.
Respondent,
S.E.A. Domains, registered the <c21expressrealty.com>, <ccentury21.com>
and <kathryngeib.com> domain names on April 17, 2003, and the <vandavis.net>
domain name on April 22, 2003. Respondent is not licensed or authorized to use
Complainant’s CENTURY 21 mark for any purpose, and has no affiliation with Van
Davis or Kathryn Geib.
In addition to
the four disputed domain names, Respondent operates a website at the
<seadomains.com> domain name. This website posts complaints and opinions
stemming from an administrative Panel’s decision in the case TM Acquisition
Corp. v. Jimmy Nevius, FA 146634 (Nat. Arb. Forum April 15, 2003). In that
case, four domain names that included the CENTURY 21 mark along with the word
“express” were transferred to Complainant. The website at the
<seadomains.com> domain name includes the home address of many of the
individuals involved in the Jimmy Nevius decision, disparaging comments
on their character, and the warning that “This
company or person is believed to act unethical and deceitful! Use extreme
caution with this business or person.” Each of the disputed domain names redirect Internet users
to the <seadomains.com> domain name, and were registered within days of
the Jimmy Nevius decision.
Complainant was
notified by email from Respondent that it had registered the <c21expressrealty.com>,
<ccentury21.com> and <kathryngeib.com> domain names
on April 21, 2003. Respondent sent another email on April 22 informing Mr. Van
Davis and nearly every sales associate at the CENTURY 21 Express office in Las
Vegas, Nevada, of its registration of the <vandavis.net> domain
name. On April 25, 2003, Complainant sent a letter to Jimmy Nevius, the
Respondent in the Jimmy Nevius decision, putting him on notice of
Complainant’s rights in the CENTURY 21 and C21 marks. On April 28, Mr. Nevius
responded with the claim that he had “no affiliation” with the domain names at
issue in this dispute.
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
established rights in the CENTURY 21 and C21 mark through registration of the
mark on the Principal Register of the U.S. Patent and Trademark Office, as well
as though widespread and continuous use of the mark in commerce.
As Complainant
has established rights in the CENTURY 21 and C21 marks, the Panel must go on to
determine if the disputed domain names are identical or confusingly similar to
these marks. Respondent’s <c21expressrealty.com> and <ccentury21.com>
domain names each incorporate Complainant’s marks. One of the domain names
includes the name of one of Complainant’s franchisees, while the other is a
simple misspelling of Complainant’s mark. Both of these domain names are
confusingly similar to marks in which Complainant has rights. See Victoria’s Secret v. Zuccarini, FA 95762
(Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding
letters to words, a Respondent does not create a distinct mark but nevertheless
renders the domain name confusingly similar to Complainant’s marks); see
also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business).
However,
in order to prevail under Policy ¶ 4(a)(i) with respect to the <kathryngeib.com> and <vandavis.net> domain
names, Complainant must demonstrate that it has rights in a mark that is
identical or confusingly similar to these domain names. Complainant apparently
contends that it has rights in the KATHRYN GEIB and VAN DAVIS mark by virtue of
the fact that both individuals are employed by Complainant. However, the Panel
is unwilling to find that an employer “has rights” under the UDRP for each
individual employed for that company, notwithstanding the fact that personal
names are non-inherently distinctive terms which require proof of secondary
meaning for protection under the common-law. See McCarthy on Trademarks and Unfair
Competition, § 13:2 (4th
ed. 2002). Without addressing the merits of any claim that Ms. Geib or Mr. F.
Van Davis may have against Respondent in their own right, the Panel finds that
Complainant does not have standing to bring a claim against Respondent for the <kathryngeib.com>
and <vandavis.net> domain names. See NBA Prop., Inc. v. Adirondack
Software Corp., D2000-1211 (WIPO
Dec. 8, 2000) (denying Complaint because Complainant was not the owner of the
trademarks); see also See CMG
Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (denying the Complaint
because Complainant was not the owner of the trademark). Therefore,
further analysis of the dispute will focus solely on the <c21expressrealty.com>
and <ccentury21.com> domain names. See CyberImprints.com, Inc.
v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding it
unnecessary to determine whether Respondent has rights or interests in a domain
name or whether it registered and used the name in bad faith when the
Complainant fails to establish rights under Policy ¶ 4(a)(i)).
Accordingly, the
Panel finds that the <c21expressrealty.com> and <ccentury21.com>,
domain names are confusingly similar to
Complainant’s CENTURY 21 and C21 marks under Policy ¶ 4(a)(i). The Panel
further finds that Complainant has failed to establish rights in a mark that is
identical or confusingly similar to the <kathryngeib.com>
and <vandavis.net> domain names, and finds for Respondent under
Policy ¶ 4(a)(i) with respect to these two domain names.
Respondent did not respond to the Complaint. Therefore, the Panel finds
it appropriate to infer that Respondent admits to having no rights or
legitimate interests in the disputed domain names. See Pavillion Agency, Inc.
v. Greenhouse Agency Ltd.,
D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond
can be construed as an admission that they have no legitimate interest in the
domain names); see also BIC
Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”).
Furthermore,
Complainant can meet its burden under the UDRP of demonstrating that Respondent
lacks rights or legitimate interests in the disputed domain names by showing
that the “safe harbor” provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to
Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has
no rights or legitimate interests with respect to the domain name it is
incumbent on Respondent to come forward with concrete evidence rebutting this
assertion because this information is “uniquely within the knowledge and
control of the respondent”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests with respect to the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
Respondent’s use of the <c21expressrealty.com> and <ccentury21.com> domain
names evidence its lack of rights or legitimate interests. Redirecting a domain
name to a complaint website is by no means prima facie evidence that
Respondent lacks rights or legitimate interests in its domain names. Respondent
is free to direct any number of websites to the <seadomains.com> domain
name, so long as it doesn’t infringe on Complainant’s trademarks, as it has
done in this dispute. Respondent’s use of the <c21expressrealty.com>
and <ccentury21.com> domain names in this capacity is not a bona
fide offering of goods or services or a legitimate noncommercial fair use of
the domain names pursuant to Policy ¶¶ 4(c)(i) and (iii), and Respondent is
clearly not “commonly known by” the disputed domain names pursuant to Policy ¶
4(c)(ii), making each of these provisions inapplicable to Respondent. See Weekley Homes, L.P. v. Fix My House Or
Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment
of a website containing criticism is not a legitimate use of the
<davidweekleyhome.com> domain name because the disputed domain name is
confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); see
alsoMonsanto Co. v. Rowena Tollitt, FA 110795 (Nat. Arb. Forum June 4, 2002) (acknowledging that analysis of the merits
of a complaint site are beyond the scope of an administrative proceeding, while
holding that “even if the purpose of the Respondent’s domain is to offer valid
criticism of the Complainant, that admirable purpose does not legitimize [sic]
the use of the Complainant’s name to attract persons looking for the
Complainant”); see also E. &
J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding
that establishing a legitimate free speech/complaint site does not give rights
to use a famous mark in its entirety).
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<c21expressrealty.com> and <ccentury21.com> domain
names under Policy ¶ 4(a)(ii).
Respondent’s use
of Complainant’s mark to redirect Internet users to a website dedicated to
criticizing Complainant is evidence that the <c21expressrealty.com>
and <ccentury21.com> domain names were registered and used in bad
faith. Respondent knowingly incorporated Complainant’s mark into its domain
names, and used Complainant’s mark to attract Internet users to a website which
aimed criticism at Complainant.
Complainant has
made no effort to distinguish the disputed domain names from Complainant’s
mark. See Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that
“[i]n domain name disputes it is critical whether the accused domain name
itself signifies parodic or critical purposes, as opposed to imitation of
trademark”); compare People for the Ethical Treatment of Animals v.
Doughney, 113 F.Supp.2d 915, 919 (E.D.Va.2000) ("PETA"), aff’d
263 F.3d 359, 355 (4th Cir. 2001) (citing Planned Parenthood Federation
of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1435 (S.D.N.Y.1997)) ("
'[Using someone else's mark for parody] is likely to prevent Internet users
from reaching [PETA]'s own Internet web site.
The prospective users of [PETA]'s services who mistakenly access
Defendant's web site may fail to continue to search for [PETA]'s own home page,
due to anger, frustration, or the belief that the Plaintiff's home page does
not exist.' "). This type of infringing behavior is not protected
by the First Amendment, and is evidence of bad faith on the part of Respondent.
See Monsanto Co. v. Rowena Tollitt, FA 110795 (Nat. Arb.
Forum June 4, 2002) (finding that Respondent’s complaint website, which
utilized Complainant’s mark, was being used in bad faith, and that Respondent’s
registration of the disputed domain name with full knowledge of Complainant’s
mark evidenced bad faith registration); see also Northwest
Airlines, Inc. v. Jorgenson,
FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (finding bad faith where the
"purpose of Respondent in choosing the domain name is to cause the persons
seeking information on the Complainant’s activities to be drawn into the
Respondent’s web site and thereby to be exposed to contrary and critical
views").
Evidence of Respondent’s bad faith can also be inferred from its
decision not to include any disclaimer on its website. While any Internet user
who accesses the disputed domain names will quickly realize that they have not
reached a website affiliated with Complainant, the fact remains that Respondent
makes no effort to distinguish itself from Complainant. While the initial
interest confusion that results from using Complainant’s mark in the <c21expressrealty.com> and <ccentury21.com> domain
names is enough to warrant a finding of bad faith, Respondent’s lack of a
prominent disclaimer further reinforces the previously mentioned evidence of
bad faith. See Mikimoto Co. v.
Asanti Fine Jewellers Ltd., AF-0126 (eResolution Apr. 8, 2000)
("[A]lthough this is the type of domain name that naturally leads to
consumer confusion, I find it particularly telling that Respondent did not
offer to take reasonable measures, for example disclaimers of association with
Complainant or warnings in meta tags, to help consumer confusion"); see
also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001)
(holding that Respondent’s failure to post a disclaimer on a website that was
designed to foster a likelihood of confusion with Complainant’s mark was
evidence that the domain name was being used in bad faith).
The Panel thus
finds that Respondent registered and used the <c21expressrealty.com>
and <ccentury21.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
With respect to
the <c21expressrealty.com> and <ccentury21.com> domain
names, Complainant has established all three elements required under ICANN
Policy and the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <c21expressrealty.com> and <ccentury21.com>
domain names be TRANSFERRED from Respondent to Complainant.
Complainant’s
request for relief with respect to the <kathryngeib.com> and <vandavis.net>
domain names shall be DISMISSED without prejudice.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
June 12, 2003
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