TM Acquisition Corp. v. New Era Realty
Claim Number: FA0607000757551
Complainant is TM Acquisition Corp. (“Complainant”), represented by Ranjitsinh Mahida, of Harvey Siskind LLP, Four Embarcadero Center, 39th Floor, San Francisco, CA 94111. Respondent is New Era Realty (“Respondent”), P.O. Box 62952, Phoenix, AZ 85082.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <newerarealty.com>, registered with GoDaddy.com, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 24, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 25, 2006.
On July 25, 2006, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <newerarealty.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 21, 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@newerarealty.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 25, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 <newerarealty.com> domain name is confusingly similar to Complainant’s ERA mark.
2. Respondent does not have any rights or legitimate interests in the <newerarealty.com> domain name.
3. Respondent registered and used the <newerarealty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TM Acquisition Corp., has been offering real estate services under the ERA mark throughout the United States since at least as early as 1972. Complainant holds valid trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the ERA mark (Reg. No. 1,078,060 issued November 22, 1977) for a variety of real estate services. In connection with its business, Complainant’s parent company, Cendant Corporation, registered the <era.com> domain name in 1997.
Respondent, New Era Realty, registered the <newerarealty.com> domain name on November 18, 1999. Respondent’s disputed domain name resolves to a website displaying a graphic featuring a house and the words “New Era Realty.com.”
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.
Complainant submits evidence of federal trademark registrations for the ERA mark with the USPTO. Consequently, the Panel finds that Complainant has demonstrated rights in the ERA mark pursuant to Policy ¶ 4(a)(i). See Ameridream, Inc. v. Russell, FA 677782 (Nat. Arb. Forum May 24, 2006) (holding that with the complainant’s registration of the AMERIDREAM mark with the USPTO, the complainant had established rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) (finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)).
Furthermore, the Panel finds that Respondent’s <newerarealty.com>
domain name is confusingly similar to the ERA mark in which Complainant has
rights under Policy ¶ 4(a)(i). The
disputed domain name consists of Complainant’s registered ERA mark, with the
addition of the generic term “new” and the descriptive term “realty,” as well as
the generic top-level domain (“gTLD”) “.com.”
Prior panels have held that similar additions do not preclude a finding
of confusing similarity under Policy ¶ 4(a)(i). In Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum
July 28, 2005), the panel found that the additions of the term “batteries,”
which described the complainant’s products, and the generic top-level domain
“.com” were insufficient to distinguish the respondent’s
<duracellbatteries.com> from the complainant’s DURACELL mark. Moreover, the panel in Disney Enter. v.
Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006), found that the
alterations to the complainant’s DISNEY mark in the respondent’s
<finestdisneyhomes.com> domain name were insufficient to differentiate
the domain name from the mark pursuant to Policy ¶ 4(a)(i). Therefore, the Panel in the present case
finds that Respondent’s disputed domain name is confusingly similar to
Complainant’s ERA mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO
June 25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In accord with Policy ¶ 4(a)(ii), Complainant initially must demonstrate that Respondent lacks rights and legitimate interests with respect to the disputed domain name. However, once Complainant establishes a prima facie case, the burden then shifts, and Respondent must demonstrate that it possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). 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 respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it 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. In those circumstances, the 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 in respect of the domain name in question.”); see also 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”). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests with respect to the <newerarealty.com> domain name under Policy ¶ 4(c).
The Panel finds that Respondent’s <newerarealty.com> domain name resolves to a website displaying only a graphic featuring a depiction of a house with the term “New Era Realty.com.” Consequently, the Panel finds that Respondent’s disputed domain name diverts Internet users seeking websites for or affiliated with Complainant’s ERA mark and its real estate brokerage services to an unrelated website. Therefore, the Panel finds that Respondent’s use of the <newerarealty.com> domain name does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(a)(i)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Furthermore, the Panel finds that the evidence on record does not suggest that Respondent is commonly known by the <newerarealty.com> domain name pursuant to Policy ¶ 4(c)(ii). Complainant asserts that it has neither licensed nor otherwise authorized Respondent to utilize the ERA mark in the disputed domain name. Additionally, in light of the longstanding use and fame surrounding Complainant’s use of the ERA mark in the real estate services industry, the Panel finds that Respondent is not commonly known as “New Era Realty.” Thus, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (“[O]ther than Respondent’s infringing use of the ULTIMATE ELECTRONICS mark on its web page and in its domain name . . . , there is no evidence that Respondent is commonly known by the <ultimateelectronics.net> domain name pursuant to Policy ¶ 4(c)(ii), or that there is any other entity besides Complainant authorized to trade as ULTIMATE ELECTRONICS.”); 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”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <newerarealty.com> domain name to operate a website featuring a single graphic unrelated to Complainant’s real estate brokerage services business. Therefore, the Panel finds that Respondent is taking advantage of the likelihood of confusion between Respondent’s <newerarealty.com> domain name and Complainant’s ERA mark and attempting to capitalize on the goodwill established by Complainant in the mark. The Panel finds that such use constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).
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 <newerarealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 11, 2006
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