National
Arbitration Forum
DECISION
RE/MAX International, Inc. v. Tech, RS
Claim Number: FA0508000551110
PARTIES
Complainant
is RE/MAX International, Inc. (“Complainant”), represented by Nancy L. Dempsey, 8390 E. Crescent Parkway, Suite 600, Greenwood Village, CO 80111. Respondent is Tech, RS (“Respondent”),
a trading style used by RoboticService.com
Ltd., represented by John C. Mason, 1810 Creekwood Dr.,
Troy, OH 45272.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <remaxprofessionals.com> and <remaxprofessionals.org> (together, the “Domain Names”), registered with Network Solutions, Inc.
PANEL
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in serving as Panelist in this
proceeding.
Robert
A. Fashler as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 30,
2005; the Forum received a hard copy of the Complaint on September 1, 2005.
On
September 2, 2005, Network Solutions, Inc. confirmed by e-mail to the Forum
that the <remaxprofessionals.com> and <remaxprofessionals.org> domain names are registered with Network
Solutions, Inc. and that the Respondent is the current registrant of the
names. Network Solutions, Inc. has
verified that Respondent is bound by the Network Solutions, 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
September 7, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 27, 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@remaxprofessionals.com
and postmaster@remaxprofessionals.org by e-mail.
A
timely Response was received and determined to be complete on September 27,
2005.
On
October 3, 2005 a timely Additional Submission from Complainant was received
and determined to be complete.
On October 5, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Robert A.
Fashler as Panelist.
On October 17, 2005, an Additional Submission from
Respondent was received after the deadline for submissions, which has not been
considered by the Panel.
RELIEF SOUGHT
Complainant
requests that the Domain Names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Primary Submissions
Complainant
asserts that:
B. Respondent’s
Primary Submissions
Respondent
asserts that:
C. Complainant’s Additional Submission
Complainant
asserts in its Additional Submission that:
D. Respondent’s Late Additional
Submission
The
Panel sees no reason to consider the Additional Submission filed by Respondent
out of time and with no basis under any of the applicable rules, and is not
considering that submission at all.
FINDINGS
The Panel finds that Complainant has
proven that: the Domain Names are confusingly similar to the RE/MAX Marks; that
Respondent does not have rights or legitimate interests in respect of the
Domain Names; and that Respondent registered and is using the Domain Names in
bad faith.
The Panel therefore orders that
Respondent transfer the Domain Names to Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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.”
Paragraph
4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
(1) Identical and/or Confusingly Similar
The first element that Complainant must
establish is that the Domain Names are identical or confusingly similar to the
RE/MAX Marks.
The Domain Names consist of the word
“REMAX” followed by the word “professionals,” and the top level domains “.com”
and “.org.”
Complainant asserts it has rights in the
RE/MAX Marks, arising from various registrations around the world and from its
widespread use of the RE/MAX Marks.
Complainant’s evidence includes U.S. certificates of registration for
RE/MAX and REMAX, as well as lists of various other registrations in the United
States and internationally.
The copies of the certificates of
registration found at Annex D of the Complaint establish Complainant’s
trade-mark rights in the RE/MAX Marks in the United States. Complainant’s U.S. certificates of
registration demonstrate that Complainant holds incontestable trade-mark
registrations for both RE/MAX and REMAX.
Those registrations are prima
facie evidence of validity and create a rebuttable presumption that the
trade-mark is distinctive: Janus Int’l
Holding Co. v. Rademacher,
D2002-0201 (WIPO Mar. 5, 2002).
Respondent contends that because members
of the RE/MAX Network are “independently owned and operated,” no consumer would
associate “REMAX PROFESSIONALS” with any one business or entity. Complainant asserts that each member of the
RE/MAX Network uses the RE/MAX Marks under licence from Complainant, and
Respondent does not provide any evidence to rebut this assertion.
Complainant has not provided a sample of
the license agreement that it uses with members of the RE/MAX Network, nor has
it provided any evidence of the standard language in its standard license
agreement that would tend to support Complainant’s assertion that all use by
members of the RE/MAX Network has enured exclusively to the benefit of
Complainant. The Panel would have
appreciated receiving such evidence.
Nonetheless, Respondent has not challenged Complainant’s assertions in
any way and the Panel accepts Complainant’s assertions of licensing and
enurement at face value. The Panel
finds that all use of the RE/MAX Marks by members of the RE/MAX Network has
enured, and continues to enure, to the exclusive benefit of Complainant. The Panel also finds that the RE/MAX Marks
are distinctive of Complainant.
Complainant provides lists in Annex E and
Annex F of the Complaint which purport to identify Complainant’s various other
trade-mark registrations in the United States and around the world. Without an explanation of the provenance,
authenticity or reliability of these lists, the Panel gives them little
weight. Complainants seeking to
establish their trade-mark rights should tender more substantial evidence than
unsubstantiated lists of purported registrations. Similarly, Complainant provides minimal evidence to support its
claims of extensive use and promotion of the RE/MAX Marks.
The Domain Names are not identical to the
RE/MAX Marks. There are two minor
differences which are of little consequence: the fact that the Domain Names do
not contain the forward slash found in Complainant’s RE/MAX trade-marks, and
the presence of top-level domain indicators “.com” and “.org.” These minor differences do not distinguish
the Domain Names from the RE/MAX Marks.
The primary difference between the RE/MAX
Marks and the Domain Names is the word “professionals,” which appears after the
word REMAX in the Domain Names.
“Professionals” is a generic and descriptive phrase that does not serve
to distinguish the Domain Names from the RE/MAX Marks. Adding a generic word such as
“professionals” to a distinctive trade-mark in a domain name does not prevent
confusing similarity between the domain name and the trade-mark. See, e.g.,
Dr.
Ing. h.c. F. Porsche AG v.
Terkin, D2003-0888 (WIPO Jan. 6,
2004); Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001). In
fact, the use of “Professionals” in conjunction with REMAX reinforces the
intended meaning of the word REMAX.
Complainant operates a network of real estate professionals. When one sees the word “professionals”
together with REMAX, there can be no doubt what is meant by REMAX. The result might be different if the second
word was completely unrelated to the business of Complainant, such as “fertilizer,”
“automobiles,” or “engineers.”
Moreover, Respondent’s own evidence makes
it abundantly clear that the only reason that Respondent acquired and used the
Domain Names is because the word REMAX effectively distinguishes Complainant
and members of the RE/MAX Network.
Respondent originally registered the <remaxprofessionals.com>
domain name on behalf of a particular member of the RE/MAX Network. Respondent later attempted to sell services
exclusively to members of the RE/MAX Network.
Those services were intended to create value for those businesses based
on public recognition of the word RE/MAX (with or without a slash) and its
identification with an international real estate network. The service that Respondent purported to
offer would have no value if the public did not recognize the word REMAX and
identify it with Complainant and the RE/MAX Network.
The Panel finds that the Domain Names are confusingly
similar to the RE/MAX Marks.
(2) Rights or Legitimate Interests
The second element which Complainant must
establish under the Policy is that Respondent does not have rights or
legitimate interests in the Domain Names.
Complainant has made a prima facie case that Respondent does
not have rights or legitimate interests in the Domain Names. In particular, the following points made by
Complainant, which Respondent either has confirmed or has not contradicted,
suggest an absence of rights or legitimate interests:
The burden therefore shifts to Respondent
to show that it has rights or legitimate interests in the Domain Names under
section 4(a)(ii) of the Policy. See
Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO, Aug. 21, 2000).
Respondent claims that it has rights or
legitimate interests in the Domain Names because of the web-related services it
provided to a customer from 2001 to 2004.
Respondent says that it was retained by a customer that carried on
business as REMAX Professionals to provide website design and hosting
services. As part of that arrangement,
Respondent registered the <remaxprofessionals.com> domain name,
developed a website for customer, and provided the use of <remaxprofessionals.com>
to the customer until 2004.
Respondent provides the following
evidence to support this claim:
This evidence is not sufficient to support Respondent’s
claim that it has rights or legitimate interests in the Domain Names. In fact, Respondent’s evidence proves the
opposite.
Even assuming that Respondent’s customer
did indeed own and operate a “REMAX Professionals” realty office and did hire
Respondent to develop a website for it, Respondent’s argument and evidence do
not explain why:
Respondent’s own evidence (Response,
Annex D) makes it abundantly clear that the customer for whom Respondent
registered <remaxprofessionals.com> was a member of the RE/MAX
Network and, presumably, a licensee of Complainant. As Respondent was hired by that customer to create and maintain a
website accessed via that Domain Name, one would have expected Respondent to
register that Domain Name for and on behalf of the customer. This Domain Name was selected exclusively
because it incorporated the business name/trade-mark used by the customer. Respondent invoiced the customer for
registration of the Domain Name. The
Domain Name resolved to the customer’s website.
As far as Respondent knew at the time,
all rights and legitimate interests in those words resided not in Respondent
but in Respondent’s customer or Complainant.
Alternatively, if it better suited the customer’s interests, Respondent
might have registered the Domain Name in Respondent’s own name, but only as
bare trustee for the benefit of the customer.
In contrast to Respondent’s treatment of
the Domain Name, Respondent clearly recognized that it had no rights or
interests in the content of the web pages that it designed for the
customer. Respondent caused those web
pages to bear notices identifying the customer as the copyright owner
(Response, Annex D). On what basis did
Respondent treat the Domain Name differently?
Being hired by a member of the RE/MAX
Network to provide web development and hosting services, including registering <remaxprofessionals.com>,
does not, in itself, give Respondent any rights or legitimate interests in that
domain name, or the right to register that domain name in Respondent’s own
name: RC Ritzenhoff Cristal AG v. Mitsuhashi, D2000-1796 (WIPO, Feb. 19,
2001).
This Panel has considered the line of domain name decisions
dealing with distributors who register domain names consisting of their
suppliers’ trade-marks. Some of those
cases have recognized that, in certain limited circumstances, the distributors
may have rights or legitimate interests in those domain names. However, these situations differ markedly
from the contractual arrangement pursuant to which a service provider (e.g., a
web developer), as part of the services provided to its client, registers on
its own behalf a domain name that incorporates the client’s trade-mark. The client pays for the domain name. The domain name identifies the client’s
business using the client’s trade-mark or business name. The domain name is used exclusively in
connection with the client’s own website.
Everything that the service provider does in connection with the domain
name is exclusively for the benefit of the client. In what manner can that arrangement confer on the service
provider any right or interest of its own in such a domain name?
In the view of this Panel, when a service
provider claims that it has rights or legitimate interests in a domain name
that features a client’s business name or trade-mark in such circumstances, the
service provider bears the onus of providing convincing evidence of its own
rights or legitimate interests. Respondent
has not satisfied that burden.
The analysis is not dependent on
Respondent’s customer being a licensee of Complainant. Either way, it is absolutely clear that
Respondent held no independent rights or interests of its own in the word
“REMAX” and had no basis for “allowing” the customer or anyone else to use
REMAX in a domain name or otherwise.
Furthermore, Respondent’s own evidence
(Response, Annex D) clearly demonstrates that Respondent’s customer was a
member of the RE/MAX Network and, presumably, a licensee of Complainant. If the customer was, in fact, licensed by
Complainant to use the RE/MAX Marks, then all use of the <remaxprofessionals.com>
domain name would have enured exclusively to the benefit of Complainant. There is no evidence that Complainant
authorized Respondent to register the Domain Name used by Respondent’s
customer. To the contrary, the evidence
shows that Complainant did not learn that the Domain Names had been registered
by Respondent in its own name until well after Respondent has ceased providing
services to the customer for whom it had registered the <remaxprofessional.com>
domain name in the first place.
From 2004 onwards, Respondent used the
Domain Names to operate websites which purported to provide information about
the RE/MAX Network, and which also contained links to various unrelated
websites (including other websites of Respondent). Respondent’s evidence demonstrates that Respondent was attempting
to sell linking services to members of the RE/MAX Network. That is, Respondent was offering to sell to
members of the RE/MAX Network the benefit of Internet traffic attracted to
Respondent’s website as a consequence of Respondent’s unauthorized use of the
RE/MAX Marks. Those circumstances do
not demonstrate rights or legitimate interests under Section 4(c) of the Policy. They demonstrate the opposite.
The Panel finds that Respondent has not
demonstrated rights or legitimate interests in the Domain Names from 2001 to
2004.
(3) Registration and Use in Bad Faith
The third element that Complainant must
establish is that Respondent registered and used the Domain Names in bad
faith.
There are four circumstances that
indicate that Respondent registered and is using the Domain Names in bad faith.
First, Respondent had both constructive
and actual notice that Complainant’s RE/MAX Marks were registered in the United
States. Complainant’s existing
trade-mark registrations on the Principal Register of the USPTO serve as
constructive notice of Complainant’s ownership of the RE/MAX Marks: Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec.
18,2000). Respondent also admits that
it searched the USPTO database and identified thirty-four live records
containing “RE/MAX” and “REMAX” before it registered the Domain
Names. That constitutes actual notice
of Complainant’s rights in the RE/MAX Marks.
Registering a domain name with full knowledge that doing so could
infringe another party’s trade-mark rights is evidence of bad faith
registration. See, e.g., V& S Vin & Sprit AB v. Ooar Supplies, D2004-0962
(WIPO Dec. 27, 2004).
Second, the
evidence shows that Respondent acquired the <remaxprofessionals.com> domain name
entirely on behalf of a customer who was a member of the RE/MAX Network. As already noted, the Domain Name was
identical to the business name/trade-mark used by Respondent’s customer, the
customer paid Respondent for the registration, and the Domain Name was used
exclusively by the customer in connection with its own website. Respondent has not demonstrated, or even
alleged, any good faith basis for having acquired, and used, the Domain Name in
Respondent’s own name for its own benefit.
Third, Respondent used the Domain Names
to attract, for commercial gain, Internet users to its own website as a
consequence of confusion with the RE/MAX Marks. Specifically, Respondent states that through its “diligent hard
work” both of the Domain Names acquired high rankings on major search
engines. These rankings were due
primarily to Respondent’s use of the RE/MAX Marks on websites associated with
the Domain Names. Indeed, Respondent
admits that it did not remove this content until this proceeding was underway
in order to preserve those high rankings.
Respondent also admits that it thought the high rankings would make the
Domain Names and websites desirable to members of the RE/MAX Network. The websites associated with the Domain
Names contained links to Respondent’s other websites, through which Respondent
offered goods and services wholly unrelated to Complainant’s services. By incorporating the RE/MAX Marks into the
Domain Names and Respondent’s own commercial websites, and thereby generating
high search-engine rankings, Respondent increased the likelihood that Internet
users interested in members of the RE/MAX Network would visit Respondent’s own
websites. Many Internet users seeing
the Domain Names and the search engine results would believe that Respondent’s
websites were Complainant’s, or were affiliated with or endorsed by
Complainant. According to Paragraph
4(b)(iv) of the Policy, this is evidence of bad-faith registration and use.
Fourth, Respondent has attempted to sell
the Domain Names to Complainant and others on various occasions:
Paragraph 4(b)(i) of the Policy states
that offers in excess of documented out-of-pocket expenses directly related to
a domain name are evidence of bad-faith registration and use. An attempt to sell a domain name for the
“highest offer” clearly reflects the intention to receive compensation in
excess of documented out-of-pocket expenses directly related to the Domain
Name.
For these reasons, the Panel finds that
Respondent registered and is using the Domain Names in bad faith.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <remaxprofessionals.com>
and <remaxprofessionals.org> domain names be TRANSFERRED
from Respondent to Complainant.
Robert A. Fashler, Panelist
Dated: October 19, 2005
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