TM Acquisition Corp. v. Noel Huelsenbeck
Claim
Number: FA0502000419106
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is Noel Huelsenbeck (“Respondent”), 12707 High Bluff Drive #200, San
Diego, CA 92130.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <caldwellbanker.com>, registered with Network
Solutions, Inc.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks
Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically February
11, 2005; the National Arbitration Forum received a hard copy of the Complaint February
14, 2005.
On
February 16, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <caldwellbanker.com> is
registered with Network Solutions, Inc. and that Respondent is the current
registrant of the name. Network
Solutions, Inc. verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and thereby has 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 16, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of March 8, 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@caldwellbanker.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 National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
March 12, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain name that Respondent
registered, <caldwellbanker.com>, is confusingly similar to
Complainant’s COLDWELL BANKER mark.
2. Respondent has no rights to or legitimate
interests in the <caldwellbanker.com> domain name.
3. Respondent registered and used the <caldwellbanker.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM
Acquisition Corp., is a Delaware corporation with its principal place of
business in Nevada. It is the holder of
various COLDWELL BANKER marks and has licensed the COLDWELL BANKER marks to
Coldwell Banker Real Estate Corporation.
Complainant has 41 trademark registrations in the United States,
registered with the U.S. Patent and Trademark Office (“USPTO”); including
COLDWELL BANKER (Reg. No. 1,154,155 issued May 12, 1981). Coldwell Banker operates real estate
brokerage offices throughout the United States.
Respondent
registered the <caldwellbanker.com> domain name January 8,
1999. Respondent’s domain name resolves
to a website at the <myfico.com> domain name that offers competing real
estate financing 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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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 by extrinsic proof in this proceeding that it has rights in the
COLDWELL BANKER mark through registration of the mark with the USPTO. See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark); 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.”).
The domain name
that Respondent registered, <caldwellbanker.com>, is confusingly
similar to Complainant’s COLDWELL BANKER mark because Respondent’s domain name
incorporates Complainant’s mark in its entirety and merely replaces the letter
“o” in “coldwell” with the letter “a.”
Such a minor change is not enough to overcome a finding of confusing
similarity between Respondent’s domain name and Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001)
(finding the <belken.com>
domain name confusingly similar to Complainant's BELKIN mark because the name
merely exchanged the letter “i” in Complainant's mark with the letter “e”).
Furthermore, the addition of the generic top-level domain “.com”
and the omission of the space in between the terms of Complainant’s mark are
insufficient to negate a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27,
2002) (finding it is a “well
established principle that generic top-level domains are irrelevant when
conducting a Policy ¶ 4(a)(i) analysis”); see also Hannover
Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001)
(finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are
impermissible in domain names and a generic top-level domain such as ‘.com’ or
‘.net’ is required in domain names”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
failed to respond to the Complaint.
Therefore, the Panel may accept all reasonable assertions and
allegations set forth by Complainant as true and accurate. See Bayerische Motoren Werke AG v.
Bavarian AG, FA 110830 (Nat. Arb. Forum June 17, 2002) (finding that
in the absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do); see also Talk
City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence
of a response, it is appropriate to accept as true all allegations of the
Complaint.”).
Complainant
asserted that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <caldwellbanker.com> domain
name pursuant to Policy ¶ 4(a)(ii). 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 Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent
lacks rights and legitimate interests in the disputed domain name.”).
Respondent is
using the <caldwellbanker.com> domain name, which is confusingly
similar to Complainant’s COLDWELL BANKER mark, to operate a website that offers
competing real estate financing services.
Such competing use is not a use in connection with a bona fide offering
of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial
or fair use pursuant to Policy ¶ 4(c)(iii).
See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb.
Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name
to redirect Internet users to a financial services website, which competed with
Complainant, was not a bona fide offering of goods or services); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no rights or legitimate interests
in a domain name that diverted Internet users to Respondent’s competing website
through the use of Complainant’s mark).
Furthermore,
nothing in the record indicates that Respondent is commonly known by the <caldwellbanker.com>
domain name and nothing suggests that Respondent is authorized to register
domain names featuring Complainant’s COLDWELL BANKER mark. Thus, the Panel finds that Respondent lacks
rights and legitimate interests in the domain name pursuant to Policy ¶
4(c)(ii). 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 Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests
where Respondent was not commonly known by the mark and never applied for a
license or permission from Complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <caldwellbanker.com> domain name, which is confusingly similar
to Complainant’s COLDWELL BANKER mark, to operate a website that offers
competing real estate financing services.
The Panel finds that such competing use constitutes disruption and is
evidence that Respondent registered and used the disputed domain name in bad
faith pursuant to Policy ¶ 4(b)(iii). See
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)); 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).
Since Respondent
is using the <caldwellbanker.com> domain name, which is
confusingly similar to Complainant’s COLDWELL BANKER mark, to operate a website
that offers services comparable to those offered by Complainant, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
The Panel finds that Respondent’s commercial use of the domain name
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000)
(finding bad faith where Respondent's use of the domain name at issue to
resolve to a website where similar services are offered to Internet users is
likely to confuse the user into believing that Complainant is the source of or
is sponsoring the services offered at the site); see also Am. Univ.
v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration
and use of a domain name that incorporates another's mark with the intent to
deceive Internet users in regard to the source or affiliation of the domain
name is evidence of bad faith.”).
Furthermore, Respondent registered the <caldwellbanker.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the COLDWELL BANKER mark due to Complainant’s registration of the mark with the
USPTO. Moreover, the Panel infers that
Respondent had actual knowledge of Complainant’s rights in the mark due to the
obvious connection between the content featured on Respondent’s website and
Complainant’s business. Thus, the Panel
finds that Respondent registered and used the disputed domain name in bad faith
pursuant to Policy ¶ 4(a)(iii) because Respondent registered a domain name that
is confusingly similar to Complainant’s mark despite having actual or
constructive knowledge of Complainant’s rights in the mark. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24,
2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably
should have been aware of Complainant’s trademarks, actually or
constructively.”); 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.”); see also 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 the Complainant’s mark when it registered the subject domain name”).
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 <caldwellbanker.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 28, 2005.
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