TM Acquisition Corp. v. SAI Domains
Claim
Number: FA0502000430743
Complainant is TM Acquisition Corp. (“Complainant”),
represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is SAI Domains (“Respondent”), 4300 South U.S. Highway 1, Suite 168,
Jupiter, FL 33477.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <erahomes.com>, registered with Moniker
Online Services, 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.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on February
24, 2005; the National Arbitration Forum received a hard copy of the Complaint
on February 28, 2005.
On
February 24, 2005, Moniker Online Services, Inc. confirmed by e-mail to the
National Arbitration Forum that the domain name <erahomes.com> is
registered with Moniker Online Services, Inc. and that Respondent is the
current registrant of the name. Moniker Online Services, Inc. has verified that
Respondent is bound by the Moniker Online Services, 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
March 2, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 22, 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@erahomes.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 28, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration Forum appointed Tyrus R.
Atkinson, Jr., 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 <erahomes.com>
domain name is confusingly similar to Complainant’s ERA mark.
2. Respondent does not have any rights or
legitimate interests in the <erahomes.com> domain name.
3. Respondent registered and used the <erahomes.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM
Acquisition Corp., is the owner of numerous ERA marks and has licensed the ERA
marks to ERA Franchise Systems, Inc.
Both Complainant and ERA Franchise are subsidiaries of Cendant
Corporation. ERA Franchise is a
franchisor of a system of business for the promotion and assistance of
independently owned and operated real estate brokerage offices, including
policies, procedures and techniques designed to enable such offices to compete
more effectively in the real estate sales market. ERA Franchise licenses its franchisees the right to use the ERA
marks in their real estate brokerage offices throughout the United States and
has licensed the ERA marks to master franchisors operating in at least
thirty-two other countries. At present,
there are approximately 1,200 franchised offices in the United States and
another approximately 1,500 franchised offices in other countries, with a total
worldwide network of more than 28,000 sales associates.
Complainant has
been marketing real estate services under the trademark, ERA, since at least
November 1971. Complainant holds
registrations with the United States and Patent and Trademark Office for the
ERA mark (Reg. No. 1,078,060 issued November 22, 1997; Reg. No. 1,251,827
issued September 20, 1983 and Reg. No. 2,691,643 issued February 25, 2003).
Complainant’s
main website is operated at the <era.com> domain name. Complainant also owns the
<erahomes.net> domain name, which directs Internet users to the website
located at <era.com>.
Respondent
registered the <erahomes.com> domain name on August 15, 2003.
Complainant
first became aware of Respondent’s registration of the disputed domain name in
March 2004. At that time, the domain
name resolved to a web page located at <landing.domainsponsor.com>, which
contained numerous links to real estate sites in direct competition with
Complainant. On March 17, 2004
Complainant’s attorney sent a letter via email to Respondent putting it on
notice of Complainant’s rights in the ERA mark. Respondent failed to reply to this email. On April 8, Complainant’s attorney sent a
follow-up letter via email to Respondent stating that its failure to respond
would force Complainant to take all appropriate steps to protect its
rights. On April 8, Respondent emailed
Complainant’s attorney in response and apparently agreed to cease and desist
from using the domain name. After
trying to visit the website, Complainant’s attorney confirmed that Respondent
had ceased use of the domain name by removing the web page. At least as early as May 18—a little more
than a month after Respondent’s April 8 email—Respondent resumed use of the
domain name. Currently, Respondent is
using the website to redirect Internet users to a web portal directory page
that contains numerous links to real estate-related websites in direct
competition with Complainant.
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 ERA mark through registration with the United States
Patent and Trademark Office and its use in commerce since 1971. 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).
Respondent’s <erahomes.com>
domain name is confusingly similar to the ERA mark because the domain name
fully incorporates the mark and merely adds the generic or descriptive term
“homes” and the generic top-level domain (“gTLD”) “.com.” The mere additions of the term “homes” and
the gTLD “.com” do not significantly distinguish the domain name from the
mark. See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA
93636 (Nat. Arb. Forum Mar. 13, 2000) (“[L]ikelihood of confusion is further
increased by the fact that the Respondent and [Complainant] operate within the
same industry”); see also Arthur
Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar.
23, 2001) (finding confusing similarity where the domain name in dispute
contains the identical mark of complainant combined with a generic word or
term); see also Sony Kabushiki
Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied).
Therefore,
Complainant has established that the disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has
alleged that Respondent has no rights or legitimate interests in a domain name
that contains in its entirety Complainant’s mark. The burden shifts to Respondent to show that it does not have
rights or legitimate interests once Complainant establishes a prima facie
case pursuant to Policy ¶ 4(a)(ii). Due
to Respondent’s failure to respond to the Complaint, the Panel will assume that
Respondent lacks rights and legitimate interests in the disputed domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving
that the Respondent has no rights or legitimate interests in…the Domain Name
requires the Complainant to prove a negative…[I]t is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent…[T]he common approach is for respondents to
seek to bring themselves within one of the examples of paragraph 4(c) or put
forward some other reason why they can fairly be said to have a relevant right
or legitimate interests”); see also
G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1,
2002) (holding that, where the complainant has asserted that the respondent has
no rights or legitimate interests with respect to the domain name it is
incumbent on the 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
Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no rights or legitimate interests is sufficient to shift the
burden of proof to the respondent to demonstrate that such rights or legitimate
interests do exist).
Respondent is
using the <erahomes.com> domain name to redirect Internet users to
a web portal directory page that contains numerous links to real estate-related
websites that directly compete with Complainant. Respondent’s use of a domain name that is confusingly similar to
Complainant’s ERA mark to redirect users interested in Complainant’s products
or services to a commercial website that offers links to real estate-related
websites is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i)
and is not a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to competitors of the complainant, was not a bona fide offering of
goods or services); see also Avery Dennison Corp. v. Steele, FA 133626
(Nat. Arb. Forum Jan 10, 2003) (finding that the respondent had no rights or
legitimate interests in the disputed domain name where it used the
complainant’s mark, without authorization, to attract Internet users to its
business, which competed with the complainant).
Nothing in the
record, including the WHOIS domain name registration information, for the <erahomes.com>
domain name dispute suggests that Respondent is commonly known by the
domain name or by Complainant’s ERA 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 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").
Therefore,
Complainant has established Policy ¶ 4(a)(ii).
Respondent
intentionally registered the <erahomes.com> domain name that contains,
in its entirety, Complainant’s mark.
Furthermore, Respondent is using the disputed domain name to attract,
for commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant as to the source, sponsorship, affiliation or
endorsement of its website pursuant to Policy ¶ 4(b)(iv). The Panel infers that Respondent is
receiving click through fees from the third party links on its website. Therefore, Respondent is unfairly and
opportunistically benefiting from the goodwill and reputation associated with
Complainant’s mark. See G.D. Searle
& Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002)
(finding that the respondent registered and used the domain name in bad faith
pursuant to Policy ¶ 4(b)(iv) because the 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 the respondent profits from its diversionary use of the complainant's mark
when the domain name resolves to commercial websites and the respondent fails
to contest the Complaint, it may be concluded that the respondent is using the
domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
respondent directed Internet users seeking the complainant’s site to its own
website for commercial gain).
Complainant’s
registration of its ERA mark with the United States Patent and Trademark Office
put Respondent on constructive notice of Complainant’s rights in its mark. In addition, Respondent must have known
about Complainant’s mark because the link between the real estate content on
the website and Complainant’s business is apparent. Thus, the Panel concludes that Respondent acted in bad faith
pursuant to Policy ¶ 4(a)(iii) when it registered the <erahomes.com>
domain name because it had constructive knowledge of Complainant’s ERA mark
prior to registering the disputed domain name.
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 Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000)
(finding that the respondent had actual and constructive knowledge of
Complainant’s EXXON mark given the worldwide prominence of the mark and thus
the respondent registered the domain name in bad faith); 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. Papol Suger, D2002-0187 (WIPO Apr. 24, 2002)
(finding that, because the link between the complainant’s mark and the content
advertised on the respondent’s website was obvious, the respondent “must have
known about the complainant’s mark when it registered the subject domain
name”).
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 <erahomes.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
April 11, 2005
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