RE/MAX International, Inc. v. Bertan
Claim
Number: FA0404000256992
Complainant is RE/MAX International, Inc. (“Complainant”),
is represented by Shelley K. Barton, of Greenberg Traurig, LLP,
1200 Seventeenth Street, Suite 2400, Denver, CO 80202. Respondent is Bertan (“Respondent”),
205 Ashmore Road, London W9 3DB, United Kingdom.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <remax-mortgages.com>, registered with Go
Daddy Software, Inc.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 15, 2004; the Forum received a hard copy of the
Complaint on April 19, 2004.
On
April 16, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <remax-mortgages.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
April 22, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 12, 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@remax-mortgages.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
May 25, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Louis E. Condon 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 <remax-mortgages.com>
domain name is confusingly similar to Complainant’s RE/MAX mark.
2. Respondent does not have any rights or
legitimate interests in the <remax-mortgages.com> domain name.
3. Respondent registered and used the <remax-mortgages.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
RE/MAX International, Inc., is a real estate brokerage service provider set up
as a network of franchisees and affiliated independent contractor/sales
associates who are authorized by RE/MAX to use its trademark in connection with
these services. Complainant registered
the RE/MAX mark with the United States Patent and Trademark Office (Reg. No.
1,339,510, issued June 4, 1985 for insurance brokerage services, Reg. No. 2,403,626,
issued November 14, 2000 for a website featuring information in the field of
real estate, Reg. No. 2,468,858, issued July 17, 2001 for computer software
relating to setting up a RE/MAX real estate business, Reg. No. 2,054,698,
issued April 22, 1997 for franchise services namely establishing and operating
a real estate business, Reg. No. 2,106,387, issued October 21, 1997 for real
estate brokerage services).
Complainant has
had franchisees and sales agents affiliated with the RE/MAX network since
1973. Currently, Complainant comprises a
network of approximately 4,200 individual offices with a worldwide force of
sales agents numbering approximately 73,000.
Complainant has used the RE/MAX mark continuously and extensively since
1973 in advertising and home sale transactions. Thus, the RE/MAX mark enjoys a high degree of recognition in the
United States.
Respondent
registered the <remax-mortgages.com> domain name on June 19,
2003. Respondent has parked the domain
name which points to its registrar’s website 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.
Complainant
established with extrinsic proof in this proceeding that it has rights to the
RE/MAX mark as evidenced by its registration with the United States Patent and
Trademark Office. See 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.”); see also Wal-Mart Stores, Inc. v. MacLeod,
D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of Complainant to
register all possible domain names that surround its substantive mark does not
hinder Complainant’s rights in the mark. “Trademark owners are not required to
create ‘libraries’ of domain names in order to protect themselves”).
The domain name
registered by Respondent, <remax-mortgages.com>, is confusingly
similar to Complainant’s RE/MAX mark because the domain name incorporates a
combination of Complainant’s mark and a generic or descriptive term, “mortgages,”
related to Complainant’s services. The mere addition of a generic or
descriptive term that describes a piece of Complainant’s business does not
negate the confusing similarity of Respondent’s domain name pursuant to Policy
¶ 4(a)(i). See Oki Data Americas,
Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain
name incorporates a Complainant’s registered mark is sufficient to establish
identical or confusing similarity for purposes of the Policy despite the
addition of other words to such marks”); see also G.D. Searle &
Co. v. Mahoney, FA 112559 (Nat. Arb. Forum June 12, 2002) (holding the
domain name to be confusingly similar where
<e-viagra-xenical-celebrex-propecia.com> merely includes the addition of
related industry-specific words, namely, the marks of Complainant’s
competitors); see also Brown & Bigelow,
Inc. v. Rodela, FA 96466 (Nat. Arb. Forum
Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is
confusingly similar to Complainant’s HOYLE mark, and that the addition of
“casino,” a generic word describing the type of business in which Complainant
is engaged, does not take the disputed domain name out of the realm of
confusing similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no right or legitimate interests in the domain
name. Due to Respondent’s failure to
respond to the Complaint, it is assumed that Respondent lacks rights and
legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights
or legitimate interests once Complainant establishes a prima facie case
pursuant to Policy ¶ 4(a)(ii). 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 Woolworths
plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that absent
evidence of preparation to use the domain name for a legitimate purpose, the
burden of proof lies with Respondent to demonstrate that it has rights or
legitimate interests).
Respondent is
wholly appropriating Complainant’s mark and has passively held the domain name
since the time of registration. The
Panel finds that this use of a domain name that is confusingly similar to
Complainant’s mark is not a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the
domain name, pursuant to Policy ¶ 4(c)(iii).
See Pharmacia & Upjohn
AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or
legitimate interests where Respondent failed to submit a Response to the
Complaint and had made no use of the domain name in question); see also Boeing Co. v. Bressi, D2000-1164 (WIPO
Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has
advanced no basis on which the Panel could conclude that it has a right or
legitimate interest in the domain names, and no use of the domain names has
been established); see also Chanel,
Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or
legitimate interests where “Respondent registered the domain name and did
nothing with it”).
Nothing
in the record, including the WHOIS domain name registration information,
suggests that Respondent is commonly known by the domain name or by
Complainant’s mark pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered a domain name, <remax-mortgages.com> that
contains in its entirety Complainant’s well-known mark. Respondent has failed to market any bona
fide goods or services, other than its registrar’s website services. Respondent’s passive holding of a domain
name confusingly similar to Complainant’s mark evidences bad faith registration
and use pursuant to Policy ¶ 4(a)(iii).
See Telstra Corp. v.
Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is
possible, in certain circumstances, for inactivity by the Respondent to amount
to the domain name being used in bad faith”); see also DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of
the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see
also Caravan Club v. Mrgsale, FA
95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of
the domain name or website that connects with the domain name, and that passive
holding of a domain name permits an inference of registration and use in bad
faith).
Respondent’s
registration of the disputed domain name, a domain name that incorporates
Complainant’s well-known registered mark in its entirety and deviates only with
the addition of a generic or descriptive term, suggests that Respondent knew of
Complainant’s rights in the RE/MAX mark.
Furthermore, the generic or descriptive term incorporated in the domain
name describes Complainant’s business.
Thus, the Panel finds that Respondent likely chose the <remax-mortgages.com>
domain name based on the distinctive and well-known qualities of
Complainant’s mark. See Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. 2002) (finding that "[w]here an alleged infringer chooses a mark he
knows to be similar to another, one can infer an intent to confuse"); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given the worldwide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <remax-mortgages.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
June 8, 2004