TM Acquisition Corp. v. CowellBanker,
Inc. a/k/a John Cowell
Claim
Number: FA0402000241920
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is CowellBanker, Inc. a/k/a John Cowell (“Respondent”), 500 Glenwood Circle, Suite 118, Monterey, CA
93940.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <cowellbanker.com>, registered with Register.com.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 24, 2004; the Forum received a hard copy of the
Complaint on February 25, 2004.
On
February 25, 2004, Register.com confirmed by e-mail to the Forum that the
domain name <cowellbanker.com> is registered with Register.com and
that Respondent is the current registrant of the name. Register.com has
verified that Respondent is bound by the Register.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
February 26, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 17, 2004 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@cowellbanker.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
February 25, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq.,
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 <cowellbanker.com>
domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
2. Respondent does not have any rights or
legitimate interests in the <cowellbanker.com> domain name.
3. Respondent registered and used the <cowellbanker.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
filed a registration application for the COLDWELL BANKER service mark on May
17, 2000. On May 22, 2001, the United
States Patent and Trademark Office (“USPTO”) granted Complainant the
registration for the COLDWELL BANKER service mark (Reg. No. 2,453,334). The
COLDWELL BANKER mark has been used in commerce since February 15, 2000 in
connection with mortgage banking services within Class 36.
Complainant
licenses the COLDWELL BANKER mark to Coldwell Banker Real Estate Corporation,
which is a franchisor of a system of businesses that promote and assist
independently owned and operated real estate brokerage offices.
Respondent
registered the disputed domain name <cowellbanker.com> on October
22, 2002. Respondent uses the domain name to operate a website that provides
real estate brokerage services.
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.
It is
established that a complainant has rights in a mark that is registered with the
USPTO. In this case, Complainant registered the COLDWELL BANKER mark with the
USPTO. Thus, Complainant has established rights in the COLDWELL BANKER service
mark. See Janus Int’l Holding Co.
v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the
registration of a mark is prima facie evidence
of validity, which creates a rebuttable presumption that the mark is inherently
distinctive. Respondent has the burden
of refuting this assumption); see also Men’s Wearhouse, Inc. v. Wick, FA
117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered
marks hold a presumption that they are inherently distinctive and have acquired
secondary meaning.”).
Under Policy ¶
4(a)(i), the determination of whether a domain name is identical or confusingly
similar to a mark, in which a complainant has rights, is made by merely
comparing the text of the domain name with the text of the mark. See Porto
Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that
the issue of identicality or confusing similarity is to be resolved “by
comparing the trademark and the disputed domain name, without regard to the
circumstances under which either may be used”); see also Desktop Media, Inc. v. Desktop Media, Inc.,
FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the
domain name dispute resolution process[,] a low threshold of proof is all that
is required to meet the first element.”).
It has been held
that a domain name that contains a mark, but merely deletes letters from the
mark renders the name confusingly similar to the mark. In this case, the
disputed domain name <cowellbanker.com> has merely deleted the
consecutive letters “ld” from Complainant’s COLDWELL BANKER mark. See
State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the
domain name <statfarm.com> is confusingly similar to Complainant's mark);
see also Compaq
Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain
name <compq.com> is confusingly similar to Complainant’s COMPAQ mark
because the omission of the letter “a” in the domain name does not
significantly change the overall impression of the mark); see also Victoria's
Secret v. Internet Inv. Firm Trust, FA
94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name
<victoriasecret.com> to be confusingly similar to Complainant’s
trademark, VICTORIA’S SECRET).
Complainant has
established Policy ¶ 4(a)(i).
Respondent has
inopportunely failed to respond to the Complaint, which means that
Complainant’s assertions are uncontested. In this light, the Panel is free to
infer that Respondent lacks rights to and legitimate interests in the disputed
domain name and to make any reasonable inferences from Complainant’s
assertions. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654
(WIPO Aug. 21, 2000) (finding no rights or legitimate interests where
Respondent fails to respond); see also Vert. Solutions Mgmt., Inc. v.
Webnet-marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in the allegations of Complainant to be deemed true).
Complainant
asserted that Respondent is not using the disputed domain name in connection
with a bona fide offering of goods or services under Policy ¶ 4(c)(i). Past
cases stand for the proposition that the offering of goods or services under a
domain name that is identical or confusingly similar to a third-party mark is
not bona fide where the domain name is used to sell goods or services
that compete with the third-party. Such
use has also been consistently held not to be a legitimate noncommercial or
fair use of the disputed domain name under Policy ¶ 4(c)(iii). Thus, Respondent
lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See
Computerized Sec. Sys., Inc. d/b/a SAFLOK v. Hu, FA 157321 (Nat. Arb. Forum
June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark
to market products that compete with Complainant’s goods does not constitute a
bona fide offering of goods and services); see also Clear Channel
Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2,
2003) (finding that Respondent, as a competitor of Complainant, had no rights
or legitimate interests in a domain name that utilized Complainant’s mark for
its competing website); see also Chip
Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding
that the disputed domain names were confusingly similar to Complainant’s mark
and that Respondent’s use of the domain names to sell competing goods was
illegitimate and not a bona fide offering of goods).
Complainant has
also asserted that Respondent is not commonly known by the disputed domain name
under Policy ¶ 4(c)(ii). Indeed, there
is no evidence in the record that would support the Panel finding anything to
the contrary. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting
Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the
domain name prior to registration of the domain name to prevail”).
Since Respondent
has failed to rebut Complainant’s assertions, which are supported by the
evidence, the Panel finds that Respondent lacks rights to and legitimate
interests in the disputed domain name under Policy ¶ 4(a)(ii).
Complainant
licenses the COLDWELL BANKER mark to the Coldwell Banker Real Estate
Corporation, which is the franchisor of businesses that provide real estate
brokerage services. Respondent is using the disputed domain name to provide
real estate brokerage services, the same type of service that Complainant’s
licensee provides. Therefore, the Panel
finds that Respondent and Complainant’s licensee, the Coldwell Banker Real
Estate Corporation, are competitors.
Bad faith
registration and use of a domain name can be established if a respondent registered
the name primarily for the purpose of disrupting the business of a
competitor. The plain meaning of Policy
¶ 4(b)(iii) does not require that a complainant be the competitor. In this case, Coldwell Banker Real Estate
Corporation qualifies as “a competitor.” The fact that Respondent registered a
domain name that is confusingly similar to Complainant’s mark and then
proceeded to offer services that directly compete with Complainant’s licensee
suggests that Respondent was attempting to siphon customers, who were seeking
Coldwell Banker Real Estate Corporation, to its own attached website. The
primary effect of such diversion is to disrupt the business of a competitor.
Primary effects often evidence primary purposes. Thus, the Panel finds that
Respondent registered the domain name primarily for the purpose of disrupting
the business of a competitor under Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v.
Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the
competitive relationship between the respondent and the owner of the mark, the
respondent likely registered the disputed domain name with the intent to
disrupt the business of its competitor and create Internet user confusion); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385
(Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from
Complainant's marks suggests that Respondent, Complainant’s competitor,
registered the names primarily for the purpose of disrupting Complainant's
business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has
diverted business from Complainant to a competitor’s website in violation of
Policy 4(b)(iii)).
Complainant has
also asserted that Respondent intentionally attempted to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s well-known service mark as to the source of the
website. If true, this assertion would establish that Respondent both
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iv).
Respondent
registered a domain name that is confusingly similar to Complainant’s service
mark. Respondent also uses the domain name for commercial gain and profit
through its real estate brokerage business.
These two facts, taken together, establish that the effect of
Respondent’s registration of the name was to attract Internet users to its
website by creating a likelihood of confusion with Complainant’s COLDWELL
BANKER mark as to the source of the website.
Thus, the question turns on whether Respondent acted with intent. Such
an inquiry is determined by the evidence presented to the Panel. In this case, Respondent has not submitted
any evidence and Complainant’s assertions in this regard are left uncontested.
Therefore, the Panel finds that Respondent registered and used the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312
(Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in
question is obviously connected with Complainant’s well-known marks, thus
creating a likelihood of confusion strictly for commercial gain); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (finding that Respondent intentionally attempted to attract
Internet users to his website for commercial gain by creating a likelihood of
confusion with Complainant’s mark and offering the same services as Complainant
via his website); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321
(Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the
<saflock.com> domain name to offer goods competing with Complainant’s
illustrates Respondent’s bad faith registration and use of the domain name,
evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); see
also TM Acquisition Corp. v. Carroll,
FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent
used the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant).
Complainant has
established Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <cowellbanker.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
April 12, 2004
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