TM Acquisition Corp. v. Dmitry Novikov
Claim Number: FA0606000731557
Complainant is TM Acquisition Corp. (“Complainant”), represented by Joan T. Pinaire, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is Dmitry Novikov (“Respondent”), Hong Kong 2043461, HK.
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <century21russia.com>, registered with Tlds, Llc d/b/a Srsplus.
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 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on June 14, 2006.
On June 15, 2006, Tlds, Llc d/b/a Srsplus confirmed by e-mail to the National Arbitration Forum that the <century21russia.com> domain name is registered with Tlds, Llc d/b/a Srsplus and that Respondent is the current registrant of the name. Tlds, Llc d/b/a Srsplus has verified that Respondent is bound by the Tlds, Llc d/b/a Srsplus 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, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 5, 2006 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@century21russia.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 13, 2006, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <century21russia.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.
2. Respondent does not have any rights or legitimate interests in the <century21russia.com> domain name.
3. Respondent registered and used the <century21russia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TM Acquisition Corp., licenses its CENTURY 21 mark to Century 21 Real Estate LLC, and both companies are subsidiaries of Cendant Corporation. Century 21 is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices. Complainant holds numerous marks both internationally and with the United States Patent and Trademark Office (“USPTO”) for its CENTURY 21 mark (Reg. No. 1,063,488 issued April 12, 1977).
Respondent registered the <century21russia.com> domain name on January 10, 2006. Respondent’s disputed domain name previously resolved to a website selling a software product. After learning of the disputed domain name, Complainant attempted to contact Respondent to send a cease and desist letter, but was unable to do so due to inaccurate and incomplete information with the Registrar. Complainant then sent a cease and desist letter on March 27, 2006 to the company from which the displayed software product could be purchased. Following the sending of that letter, the disputed domain name has not been used, but rather is being passively held.
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. 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.
The Panel finds that Complainant’s trademark registrations internationally and with the USPTO sufficiently establishes Complainant’s rights in the CENTURY 21 mark. 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s <century21russia.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark pursuant to Policy ¶ 4(a)(i) as it contains Complainant’s entire mark and combines it with the geographic identifier “russia.” In VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000), the panel found that there was confusing similarity between the complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word “India” to the complainant’s mark. See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark). Accordingly, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been
satisfied.
Complainant initially must establish that Respondent lacks any rights or legitimate interests with respect to the <century21russia.com> domain name. However, once Complainant demonstrates a prima facie case, the burden of proof shifts, and Respondent must prove that it has rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant asserts that Respondent is not authorized to use Complainant’s CENTURY 21 mark, and that Respondent is not associated with Complainant in any way. Additionally, Respondent’s WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and there is no evidence in the record to suggest that Respondent is or has ever been known by the disputed domain name. The Panel thus finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that the Respondent previously used the disputed domain name to display a website that featured a software product. The Panel infers that such use of the disputed domain name was for Respondent’s own commercial benefit. The Panel further finds that such use of the <century21russia.com> domain name did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
Moreover, Respondent is currently passively holding the disputed domain name and has not come forward with any demonstrable preparations to use the disputed domain name. In Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001), the panel found that the respondent had no rights or legitimate interests where the respondent made no use of the infringing domain names. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (“Merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy.”). Accordingly, the Panel finds that Respondent’s current passive holding of the <century21russia.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has alleged that Respondent acted in bad faith
by registering and using the disputed domain name that contains Complainant’s
mark in its entirety. Respondent
previously used the <century21russia.com>
domain name to sell an unrelated software product. The Panel finds that Respondent registered the disputed domain
name to use Complainant’s CENTURY 21 mark for its own commercial benefit. Such use is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). Additionally, the use of Complainant’s mark in the disputed
domain name creates a likelihood of confusion as to Complainant’s sponsorship
and affiliation with the resulting website.
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)).
Respondent currently passively possesses the disputed domain name. Since a cease and desist letter was sent, the website has converted from a website displaying a for-sale software product to having no use. In Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), the panel found that where the respondent made no use of the domain name or website that connected with the domain name, such passive holding of a domain name permitted an inference of registration and use in bad faith. See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, D2000-1260 (WIPO Nov. 23, 2000) (finding bad faith where the respondent made no use of the domain name in question and there are no other indications that the respondent could have registered and used the domain name in question for any non-infringing purpose). The Panel finds that Respondent’s passive holding of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
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 <century21russia.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: July 26, 2006
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