Century 21 Real Estate LLC v. do ly hoan
Claim Number: FA1804001782847
Complainant is Century 21 Real Estate LLC (“Complainant”), represented by Raffi V Zerounian of Hanson Bridgett LLP, California, USA. Respondent is do ly hoan (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue in this proceeding are <c21commercial.com> and <c21commercial.xyz> registered with MAT BAO CORPORATION.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on April 20, 2018; the Forum received payment on April 20, 2018.
On April 24, 2018, MAT BAO CORPORATION confirmed by e-mail to the Forum that the <c21commercial.com> and <c21commercial.xyz> domain names are registered with MAT BAO CORPORATION and that Respondent is the current registrant of the names. MAT BAO CORPORATION has verified that Respondent is bound by the MAT BAO CORPORATION registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of May 21, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@c21commercial.com, postmaster@c21commercial.xyz. Also on April 30, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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.
PRELIMINARY ISSUES
Language of the Proceedings
The Registration Agreement is written in Vietnamese. Under Rule 11(a), the language of the proceedings is the language of that agreement, subject to the authority of the Panel to determine otherwise, having due regard for the circumstances of the case.
Complainant alleges that Respondent is conversant and proficient in English, and that the proceeding should be conducted in English. Pursuant to Rule 11(a), the Panel has discretion under UDRP Rule 11(a) to determine the appropriate language of the proceedings, taking into consideration the particular circumstances of the case. FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English). The circumstances present in this case are as follows: Respondent registered for and uses a Gmail email account. See, WHOIS record submitted as Complaint Annex F. Also, the Domain Name contains the English word “commercial,” and the virtual identicalness of the Domain Names with Complainant’s mark demonstrates Respondent’s familiarity with Complainant’s presence in the real estate market in the U.S. and is thus indicative of his familiarity with the English language as well.
On this evidence, the Panel finds that the Respondent is conversant and proficient in the English language. After considering the circumstances of the case, and pursuant to UDRP Rule 11(a), the Panel decides that the proceeding will proceed in the English language.
Multiple Domains
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” The WHOIS records submitted as Annex F to the Complaint show that both Domain Names are registered to “do ly hoan,” who is shown as having the same mailing and email addresses and telephone number with respect to both of them. Also, both Domain Names are registered with the same registrar, Mat Bao Corporation. On this evidence the Panel finds that both Domain Names are controlled by the same person, and will proceed as to both of them.
A. Complainant
Complainant is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices. It has been offering these services since 1982. Complainant registered its C21 COMMERCIAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,118,383) on January 10, 2017, and its C21 mark (Reg. No. 2,933,408) on March 14, 2005. These registrations are sufficient to demonstrate Complainant’s rights in those marks for the purposes of Policy ¶ 4(a)(i.) Respondent’s <c21commercial.com> and <c21commercial.xyz> domain names (the “Domain Names”) are confusingly similar to Complainant’s marks, as they incorporate the C21 COMMERCIAL mark verbatim, merely adding the generic top-level domains (“gTLD”) “.com” and “.xyz”, respectively.
Respondent has no rights or legitimate interests in either Domain Name. He is not commonly known by either Domain Name, nor has Complainant authorized him to use its C21 COMMERCIAL mark. Additionally, Respondent is not using either Domain Name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Rather, the Domain Names resolve to an inactive website.
Respondent registered and is using the Domain Names in bad faith. They resolve to an inactive web site. Additionally, Respondent is using them to attract, for commercial gain, Internet users to his web sites by creating confusion as to the source, sponsorship, affiliation or endorsement of his web site by Complainant.
B. Respondent
Respondent did not submit a Response in this proceeding.
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."
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.
In view of Respondent's failure to submit a response, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (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), 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.”).
The Panel makes the findings and determinations set forth below with respect to the Domain Names.
Complainant registered its C21 COMMERCIAL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,118,383) on January 10, 2017, and its C21 mark (Reg. No. 2,933,408) on March 14, 2005. See, Complaint Annex A. These registrations are sufficient to demonstrate Complainant’s rights in those marks for the purposes of Policy ¶ 4(a)(i.) Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
The Domain Names are confusingly similar to Complainant’s marks, as they incorporate the C21 COMMERCIAL mark verbatim, merely omitting a space, and adding the generic top-level domains (“gTLD”) “.com” and “.xyz.” The omission of spaces and addition of a gTLD is insufficient to distinguish a domain name from an incorporated mark for the purposes of Policy ¶ 4(a)(i). Research Now Group, Inc. v. Pan Jing, FA 1735345 (Forum July 14, 2017) (“Complainant also asserts that Respondent’s <researchnow.host>, <researchnow.top> and <researchnow.club> domain names are confusingly similar to Complainant’s mark because each merely eliminates the space and appends a gTLD to the fully incorporated mark. The addition of a gTLD and elimination of spacing are both considered irrelevant when distinguishing between a mark and a domain name.”).
Based upon the forgoing, the Panel finds that the Domain Names are confusingly similar to the C21 COMMERCIAL and C21 marks, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) Complainant has not licensed or authorized Respondent to use any of its marks for any purpose whatever, (ii) Respondent is not commonly known by either of the Domain Names, and (iii) Respondent is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the web site resolving from them is inactive. These allegations are supported by competent evidence. According to the WHOIS information submitted as Complaint Annex F, the Domain Names are registered to “do ly hoan,” which name bears no resemblance to the Domain Names. This is competent evidence that Respondent is not commonly known by the any of the Domain Names. Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Further, Complainant states that it has never authorized Respondent to use either its C21 COMMERCIAL or C21 mark. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, both Domain Names resolve to a web site that shows the words, ”Can’t reach this page.” See, Complaint Annex D. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name), Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Names.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
The evidence discussed above in connection with the rights or legitimate interests analysis to the effect that the Domain Names resolve to an error page and are not being actively used is also evidence of bad faith registration and use. As noted by another panel several years ago, given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldwcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (Forum December 13, 2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
Complainant asserts that Respondent registered and is using the Domain Names to divert users, presumably for commercial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). A respondent’s appropriation of a complainant’s mark in a confusingly similar domain name to divert potential consumers to its own web site may be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). In this case, the web site resolving from the Domain Names is inactive, and there is no evidence before the Panel of any commercial gain currently being generated from this use, but again, the list of circumstances in Policy ¶ 4(b) is not exclusive. The fact that Respondent incorporated Complainant’s C21 COMMECIAL mark so completely into the Domain Names is ample evidence that he is intentionally attempting to attract Internet users to his web site by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. The Domain Names were registered less than eight months prior to the filing of the Complaint in this matter (See, Complaint Annex A), and it may be that Respondent intends in the future to initiate some kind of for-profit use of the Domain Names. Nevertheless, even without the profit factor present at this time, the obvious copying of Complainant’s registered mark in these domain Names is sufficient evidence of bad faith registration and use for the purposes of Policy ¶ 4 (a)(iii). Red Bull GmbH v. Gutch, WIPO Case No. 2000-0766 (September 21, 2000) (finding bad faith registration and use where respondent’s domain name incorporated complainant’s mark verbatim but respondent had not yet activated the resolving web site).
Finally, Complainant did not assert the argument, but according to the USPTO registration statements for C21 COMMERCIAL and C21 attached to the Complaint as Annex A, Complainant has used the C21 mark since May 1982 and the C21 COMMERCIAL mark since March 2013. Given that presence in the real estate office franchising industry, and the fact that Respondent incorporated those marks verbatim into his Domain Names, it is clear that he knew of Complainants’ marks when he registered the Domain Names in September and November 2017. See, Complaint Annex F. Indeed, it is evident that Respondent registered them precisely because they do contain Complainant’s mark and would likely attract Internet traffic to his sites. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent clearly knew of Complainant and its marks when he registered the Domain Names, and this is clear evidence of bad faith registration.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <c21commercial.com> and <c21commercial.xyz> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: May 29, 2018
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