First Team Realty-Orange County v. Tom
Pelton
Claim Number: FA0506000495288
Complainant is First Team Realty-Orange County (“Complainant”),
represented by Jennifer L. Webber,
of Fulwider Patton Lee & Utecht, LLP,
6060 Center Drive, 10th Floor, Los Angeles, CA 90036. Respondent is Tom Pelton (“Respondent”),
5140 Box Canyon Ct. E., Yorba Linda, CA 92887.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <firstteamagents.com>
and <firstteamagent.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
11, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 13, 2005.
On
June 13, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain names <firstteamagents.com> and <firstteamagent.com> are
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified
that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names
Worldwide 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
June 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 5, 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@firstteamagents.com and
postmaster@firstteamagent.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
July 11, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <firstteamagents.com> and <firstteamagent.com> domain names are confusingly similar to
Complainant’s FIRST TEAM mark.
2. Respondent does not have any rights or
legitimate interests in the <firstteamagents.com>
and <firstteamagent.com>
domain names.
3. Respondent registered and used the <firstteamagents.com> and <firstteamagent.com> domain names
in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
provider of real estate brokerage and mortgage services. Complainant has registered its FIRST TEAM
mark with the United States Patent and Trademark Office (“USPTO”) (Reg. Nos.
1,617,949 issued October 16, 1990; 1,870,781 issued December 27, 1994).
Respondent, who
was at one time a real estate agent employed by Complainant and is now employed
by one of Complainant’s competitors, registered the <firstteamagents.com> and <firstteamagent.com> domain names on August 19, 2003. Respondent is using the domain names in
connection with its competing 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 will draw such
inferences as the Panel considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that the respondent’s failure to respond allows all reasonable inferences of
fact in the allegations of the complaint to be deemed true); 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.”).
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 FIRST TEAM mark through registration of the mark with
the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”); see also U.S. Office of
Personnel Mgm’t v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003)
(“[O]nce the USPTO has made a determination that a mark is registrable, by so
issuing a registration, as indeed was the case here, an ICANN panel is not
empowered to nor should it disturb that determination.”).
Respondent’s
<firstteamagent.com> and <firstteamagents.com> domain names are confusingly similar to Complainant’s FIRST TEAM mark, as the
domain names incorporate the mark entirely and add the terms “agent” and
“agents,” which are clearly connected to Complainant’s real estate brokerage
services. Respondent’s domain names
additionally add the generic top-level domain “.com” and omit the space between
the terms of Complainant’s FIRST TEAM mark.
The Panel finds that such minor differences are not enough to
distinguish Respondent’s domain names from Complainant’s mark, and that the
domain names are confusingly similar to the mark pursuant to Policy ¶ 4(a)(i).
See 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 the complainant combined with a generic word or term); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Nev. State Bank v. Modern Ltd. –
Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been
established that the addition of a generic top-level domain is irrelevant when
considering whether a domain name is identical or confusingly similar under the
Policy.”); 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.
Complainant has
asserted that Respondent lacks rights and legitimate interests in the <firstteamagent.com> and <firstteamagents.com> domain
names pursuant to Policy ¶ 4(a)(ii), and Respondent, in not submitting a
response, has failed to rebut Complainant’s assertions. Thus, the Panel interprets Respondent’s
failure to respond as evidence that Respondent lacks rights and legitimate
interests in the disputed domain names under Policy ¶ 4(a)(ii). See
Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond); 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.”).
Nothing
in the record or in the WHOIS information indicates that Respondent is commonly
known by the disputed domain names.
Thus, the Panel finds that Respondent has not established rights or
legitimate interests in the <firstteamagent.com>
and <firstteamagents.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”); see
also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
Sept. 25, 2003) (finding that without demonstrable evidence to support the
assertion that a respondent is commonly known by a domain name, the assertion
must be rejected).
Respondent
is using the disputed domain names, which are confusingly similar to
Complainant’s FIRST TEAM mark, to operate a website that advertises
Respondent’s real estate services that directly compete with the services
offered by Complainant. The Panel finds
that 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580
(Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain
name in connection with a bona fide offering of goods and services because
Respondent is using the domain name to divert Internet users to
<visual.com>, where services that compete with Complainant are
advertised.”); see also Hale
Prods., Inc. v. Hart Int’l Inc.,
FA 198031 (Nat. Arb. Forum Dec. 2, 2003) (finding that the respondent lacked
rights and legitimate interests in the <jawsoflife.com> domain name where
it was being used to divert Internet users to the website for Phoenix Rescue
Tools, one of the complainant’s direct competitors).
The
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <firstteamagents.com>
and <firstteamagent.com>
domain names to operate a website that advertises its competing real estate
brokerage services. Such use
constitutes disruption and is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where the respondent and the
complainant were in the same line of business in the same market area); see also Puckett, Individually v. Miller,
D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted
business from the complainant to a competitor’s website in violation of Policy
¶ 4(b)(iii)).
Furthermore, by
using the confusingly similar domain names in connection with its competing
real estate services website, Respondent has intentionally attempted to
attract, for commercial gain, Internet users to its website by taking advantage
of the likelihood of confusion between Respondent’s domain names and
Complainant’s mark. Such commercial use
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See
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); see also Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum
Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct
competition with Complainant, and giving the impression of being affiliated
with or sponsored by Complainant, this circumstance qualifies as bad faith
registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
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 <firstteamagents.com>
and <firstteamagent.com>
domain names be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
July 22, 2005
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