RE/MAX International, Inc. v. Rodrigo
Mendoza
Claim
Number: FA0501000399346
Complainant is RE/MAX International, Inc. (“Complainant”),
8390 East Crescent Parkway, Suite 600, Greenwood Village, CO 80111. Respondent
is Rodrigo Mendoza (“Respondent”),
Corcega, 54 6-2, Barcelona, Calatunya ES 08029, Spain.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <remaxhavana.net>, registered with Onlinenic,
Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
James
A. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on January
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on January 10, 2005.
On
January 10, 2005, Onlinenic, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <remaxhavana.net> is
registered with Onlinenic, Inc. and that Respondent is the current registrant
of the name. Onlinenic, Inc. has verified that Respondent is bound by the Onlinenic,
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
January 13, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of February 2, 2005 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@remaxhavana.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
February 10, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration 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 <remaxhavana.net>
domain name is confusingly similar to Complainant’s REMAX mark.
2. Respondent does not have any rights or
legitimate interests in the <remaxhavana.net> domain name.
3. Respondent registered and used the <remaxhavana.net>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, a
provider of franchise services for real estate brokerages and related services,
has used the RE/MAX and REMAX marks in connection with its services since at
least as early as 1973. Complainant and its franchisees have spent
approximately $4.5 billion on advertisements and promotions for services
offered under its marks. Complainant’s use of the mark in connection with
millions of home sale transactions has resulted in approximately two trillion
dollars in sales in connection with its marks since 1973. Complainant holds
several worldwide trademark registrations for its marks, including U.S. Reg.
Nos. 2,054,698 and 2,106,387 for REMAX (issued April 22, 1997 and October 21,
1997, respectively), which are on file at the United States Patent and
Trademark Office. Complainant also operates a website at the <remax.com>
domain name, among others.
Respondent
registered the <remaxhavana.net> domain name on July 23, 2004. The
domain name resolves to a website that prominently features Complainant’s logos
and marks in addition to photographs of what appear to be real estate
opportunities. The website also includes several links pertaining to various services
provided by Respondent, including real estate brokerage services that directly
compete with Complainant. Respondent is not authorized or licensed to use
Complainant’s marks for any purpose.
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 that it has rights in the REMAX mark through registration with the
United States Patent and Trademark Office and through continuous use of the
mark in commerce since 1973. 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 Janus Int’l Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that
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).
The <remaxhavana.net>
domain name is confusingly similar to Complainant’s REMAX mark because it
merely adds the “.net” generic top-level domain and the geographic term
“Havana,” to Complainant’s mark. The addition of a generic top-level domain and
a geographic term do not distinguish the disputed domain name from
Complainant’s mark. See Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar); see also Net2phone Inc.
v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that
Respondent’s registration of the domain name <net2phone-europe.com> is
confusingly similar to Complainant’s mark because “the combination of a geographic term with the mark does not prevent a
domain name from being found confusingly similar”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000)
(finding that the domain name, <walmartcanada.com> is confusingly similar
to Complainant’s famous mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments unrefuted. In the absence of a
response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly contradicted by the evidence. Because Respondent has
failed to submit a response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <remaxhavana.net>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO
Mar. 9, 2000) (finding that by not submitting a response, Respondent has failed
to invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also Vertical 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 the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii) because Respondent is using the disputed domain name to redirect
unsuspecting Internet users to a website that provides services that are in
competition with Complainant’s real estate brokerage services. The Panel infers
that Respondent commercially benefits from this diversion. Respondent makes
opportunistic use of Complainant’s mark in order to capitalize on the goodwill
and fame associated with the REMAX mark; thus, Respondent fails to establish
rights or legitimate interests in the domain names. See 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); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO
Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of
services in a respondent’s operation of [a] web-site using a domain name which
is confusingly similar to the Complainant’s mark and for the same business.”); see
also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that as Respondent attempted
to pass itself off as Complainant online, through wholesale copying of
Complainant’s website, Respondent had no rights or legitimate interests in the
disputed domain name).
No
evidence before the Panel suggests that Respondent is commonly known by the
<remaxhavana.net> domain name under Policy ¶ 4(c)(ii).
Respondent’s WHOIS information indicates that the registrant of the disputed
domain name is known as “Rodrigo
Mendoza” and is not known by the confusingly similar second-level domain
that infringes on Complainant’s REMAX mark. Moreover, Respondent is not
authorized or licensed to use Complainant’s mark for any purpose. 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
is using a confusingly similar variation of Complainant’s well-known REMAX mark
within the <remaxhavana.net> domain name to ensnare unsuspecting
Internet users. Respondent then redirects the users to its commercial website.
The Panel infers that Respondent profits from this diversion. Such infringement
is what the Policy was intended to remedy. Thus, the Panel finds that
Respondent registered and used the domain name in bad faith under Policy ¶
4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933
(Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used
the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent
was using the confusingly similar domain name to attract Internet users to its
commercial website); see also Kmart v. Khan, 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)).
Respondent
registered and used a domain name that is confusingly similar to Complainant’s
mark for the purpose of directing Internet users to a website that offers
services that directly compete with Complainant’s real estate brokerage
services. Respondent’s use of the <remaxhavana.net> domain name
establishes that Respondent registered the domain name for the purpose of
disrupting the business of a competitor, which evidences bad faith registration
and use under Policy ¶ 4(b)(iii). See 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.
Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith
where Respondent’s sites pass users through to Respondent’s competing
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)).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration of the domain name, additional factors
can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser,
FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a
domain name has been registered in bad faith, the Panel must look at the
“totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph
4(b) are intended to be illustrative, rather than exclusive.”).
The <remaxhavana.net>
domain name resolves to a website that prominently features Complainant’s
registered logos and marks. Moreover, because the website purports to provide
real estate brokerage services, the Panel finds that Respondent has
deliberately attempted to pass itself off as Complainant for commercial gain.
Passing off is strong evidence of bad faith registration and use under Policy ¶
4(a)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb.
Forum May 30, 2003) (finding that the disputed domain name was registered and
used in bad faith where Respondent hosted a website that “duplicated
Complainant’s mark and logo, giving every appearance of being associated or
affiliated with Complainant’s business . . . . In a nutshell, Respondent used
the disputed domain name to perpetrate a fraud.”); see also Monsanto
Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding
that Respondent’s use of <monsantos.com> to misrepresent itself as
Complainant and to provide misleading information to the public
supported a finding of bad faith); see also Fendi Adele S.r.l. v. O’Flynn, D2000-1226 (WIPO Nov. 13, 2000)
(transferring the domain name <fendiboutique.com> where the likelihood of
confusion with the trademark FENDI is increased since Complainant’s fashion
products are typically sold in boutiques and where Respondent obviously tried
to pass himself off as a legitimate source for FENDI products).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds a common geographic term, suggests
that Respondent knew of Complainant’s rights in the REMAX mark. Additionally,
Complainant’s trademark registration, on file at the United States Patent and
Trademark Office, gave Respondent constructive notice of Complainant’s mark.
Moreover, Respondent’s knowledge of Complainant’s rights in the mark is
evidenced by the fact that its website competes with Complainant and uses
Complainant’s logos and marks. Thus, the Panel finds that Respondent chose the
<remaxhavana.net> domain name based on the distinctive and
well-known qualities of Complainant’s mark, which evidences bad faith
registration and use pursuant to Policy ¶ 4(a)(iii). See Pfizer, Inc. v.
Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between
Complainant’s mark and the content advertised on Respondent’s website was
obvious, Respondent “must have known about Complainant’s mark when it
registered the subject domain name”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000)
(finding that Respondent demonstrated bad faith where Respondent was aware of
Complainant’s famous mark when registering the domain name as well as aware of
the deception and confusion that would inevitably follow if he used the domain
names); see also 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 Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is
listed on the Principal Register of the USPTO, a status that confers
constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <remaxhavana.net> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
February 24, 2005
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