Realogy Group LLC v. Charles Williams / BuyerMLS
Claim Number: FA2011001920666
Complainant is Realogy Group LLC (“Complainant”), represented by David Ewen of McCarter & English, LLP, Connecticut, USA. Respondent is Charles Williams / BuyerMLS (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <realogyadvantage.com>, registered with GoDaddy.com, LLC.
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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 13, 2020; the Forum received payment on November 13, 2020.
On November 16, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <realogyadvantage.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 November 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2020 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@realogyadvantage.com. Also on November 17, 2020, 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 December 14, 2020 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant submits that it is the franchisor of some of the most recognized brands in the real estate industry globally. Its franchisees and affiliates have approximately over 16,000 offices, and 300,000 independent sales associates doing business in over 100 countries and territories around the world including over 760 company offices operated by Realogy Brokerage Group (formerly NRT, LLC), a subsidiary of Complainant that closed approximately 1.5 million home sale transactions in 2017.
Complainant submits that since it was founded in 2006 it has been using the REALOGY mark continuously in connection with its real estate brokerage franchising services.
Complainant submits that the disputed domain name contains the REALOGY mark in its entirety in combination with the generic term “advantage” and the generic Top Level Domain (“gTLD”) extension <.com>. Complainant argues that the generic elements do not distinguish the disputed domain name from Complainant’s mark.
Complainant argues that its REALOGY mark is the dominant and only distinctive element in the disputed domain name and therefore the disputed domain name is confusingly similar to Complainant’s REALOGY mark.
Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. The evidence shows that Complainant, and not Respondent was, and is, commonly known by Complainant’s REALOGY mark.
Complainant submits that it has not authorized Respondent to register the disputed domain name or any domain name containing Complainant’s marks.
Complainant explains that in 2013 Respondent attended a commercial event organized by Complainant at a time when Complainant was considering acquiring Respondent’s business. The acquisition did not take place.
Complainant states that Respondent claims that the disputed domain name was registered at the suggestion of a representative of Complainant at the time of those negotiations. Respondent was unable to remember the identity of the person who allegedly made this suggestion.
Complainant submits that it is most improbable that this happened because Complainant employs technical professionals who are responsible for administering and maintaining Complainant’s domain name portfolio and the authorization of a third-party, non-affiliated personal entity such as Respondent would violate Complainant’s own internal procedures.
Complainant submits that the disputed domain name was registered and is being used in bad faith.
Complainant explains that Complainant and Respondent had entered into an NDA in July 2013 in the course of discussing the potential business relationship that began at least as early as November 2012.
In its May 13, 2020 email to Complainant, which is adduced in evidence in an annex to the Complaint, Respondent stated that it registered the domain name “during our conversations about Rlgy [sic] acquiring us.”
Although the acquisition never occurred, Complainant states that Respondent nevertheless maintained the disputed domain name for more than six years, despite having no affiliation with or authorization from Complainant, and argues that when Respondent registered the disputed domain, it was already well aware of Complainant and Complainant’s use of REALOGY as a trademark, which illustrates that the disputed domain name was registered and is being used in bad faith.
Complainant adds that Respondent does not appear to offer any services under the REALOGY mark or the name “Realogy Advantage”. The disputed domain name does not currently resolve any active website which indicates that Respondent does not use the disputed domain name for any bona fide offering of services. In this regard Complainant refers to screenshot the website to which disputed domain name resolved on November 13, 2020 which shows that it is used to redirect traffic to Respondent’s website at < www.buyermls.com>. A screenshot from Archive.org’s “Wayback Machine” shows that the disputed domain name was used to redirect traffic to the same address in August 2018 also.
Complainant submits that the disputed domain name was registered in bad faith without Complainant’s knowledge or authority. Complainant denies that it is probable that any of its employees would have authorized or suggested registration of the disputed domain name by Respondent.
Complainant alleges that Respondent’s actual knowledge of Complainant, its name and mark, when the disputed domain name was registered illustrates faith registration. See Mainstream Advertising, a California corporation v. Bullhorn Marketing, LLC. / Nathan Barnett, No. FA1008001338435 (October 5, 2010) (“Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of Complainant’s trademark rights.”).
Complainant argues that Respondent has held and renewed the disputed domain name for more than six years since the time of the contemplated acquisition which did not happen and during that time Respondent could have allowed the disputed domain name to lapse avoiding any further expense.
Complainant refers to copies of email messages between one of its executives and a representative of Respondent which are exhibited in an annex to the Complaint which show that when approached by Complainant requesting that it transfer the disputed domain name to Complainant, Respondent replied:- “If you want something I have you can pay me for it or at least pay our expenses”.
Complainant submits that this statement reveals Respondent’s priorities: (1) to turn a profit from withholding the disputed domain name from Complainant, and (2) if all else fails, to cover its expenses incurred from years of maintaining the confusingly similar disputed domain name without Complainant’s authorization.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is a franchisor engaged in the real estate industry that franchises number of well-known brands and pertinent to this Complaint is the owner of a portfolio of service mark registrations for the REALOGY mark including:
· United States registered service mark REALOGY, registration number 3,277,830 registered on the Principal Register on August 7, 2007 for services in international class 35;
· United States registered service mark REALOGY, registration number 3,277,831, registered on the Principal Register on February 8, 2006 for services in international class 36;
· United States registered service mark REALOGY, registration number 3,584,743, registered on the Principal Register for services in international class 42.
Complainant has an established Internet presence and maintains in principal website at <www.realogy.com>.
The disputed domain name was registered on February 17, 2014 and redirects Internet traffic to Respondent’s website at <www.buyermls.com>.
In the absence of any Response, the only information available about Respondent is that found in the Complaint, the Registrar’s WhoIs.
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, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant has adduced clear, convincing and uncontested evidence of its ownership of rights in the REALOGY mark acquired through its ownership of its above-referenced portfolio of service mark registrations and extensive use of the mark in its franchising business since it was founded in 2006.
The disputed domain name consists of Complainant’s REALOGY mark in combination with the generic word “advantage” and the gTLD <.com> extension.
Complainant’s REALOGY mark is the initial, dominant and only distinctive element in the disputed domain name. Neither the generic word “advantage” nor the gTLD <.com> extension contribute any distinctive character to the disputed domain name.
In fact, in the circumstances described in the Complaint the disputed domain name was intentionally chosen because it incorporated Complainant’s service mark.
This Panel finds therefore that the disputed domain name is confusingly similar to the REALOGY mark which Complainant has rights. Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent has no right or legitimate interests in the disputed domain name. The evidence shows that Respondent is not an has not been commonly known by the disputed domain name and that it could not use the disputed domain name in a real estate business because of Complainant’s established rights.
The email correspondence adduced in evidence support Complainant narrative that the Parties were engaged in negotiations aiming at an acquisition of Respondent by Complainant a number of years ago. At that time, and in anticipation of the acquisition it appears that the disputed domain name was registered. This does not create rights or legitimate interests in the disputed domain name.
It is well established that if a complainant makes out a prima facie case that respondent has no right or legitimate interests in the disputed domain name the burden of production shifts to Respondent to show that has such rights.
Respondent has failed to discharge that burden and so this Panel must find that Respondent has no rights or edges with interests in the disputed domain name and Complainant has therefore succeeded in the second element of the test in element of the test in Policy ¶ 4(a)(ii).
The evidence shows that the disputed domain name was registered by Respondent at the time when it was engaged negotiations with Complainant with a view to an acquisition of Respondent. In correspondence with Complainant, Respondent has stated that the disputed domain name was registered at the suggestion of an employee of Complainant. Respondent has failed to adduce any evidence that this occurred. Complainant’s evidence is that it is improbable because Complainant has a department devoted to its online presence and its employees would not have been authorized to make such a suggestion.
This Panel is of the view that it is highly unlikely that a corporation engaged in acquisition negotiations would encourage the target entity to register a domain name that incorporates the acquiring corporation’s trademark. It would serve no purpose. The acquiring corporation could do that itself.
In these circumstances this Panel finds on the balance of probabilities that the target entity registered the disputed domain name without the authority of Complainant.
Complainant has adduced evidence that while the disputed domain name is currently inactive it has in recent times been used by Respondent to redirect Internet traffic to Respondent’s own website that offers real estate services that compete with Complainant’s business.
This Panel finds therefore the absence of any evidence or explanation from Respondent, that on the balance of probabilities the disputed domain name was registered without license or authority of Complainant and it has since been either passively held or used to divert Internet traffic to Respondent’s website thereby taking advantage of Complainant’s reputation and goodwill.
The evidence also shows that when Respondent was approached to transfer the disputed domain name it took up a negotiating position rather than acknowledging that Respondent had no rights or legitimate interests in using the disputed domain.
It appears that the disputed domain name was not registered primarily for the purpose of disrupting the business of a competitor, it clearly was registered for some commercial benefit in circumstances where Respondent and Complainant were in negotiations.
In so doing Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion with the Complainant's REALOGY mark as to the source, sponsorship, affiliation, or endorsement of its web site and the competing services offered by Respondent.
This Panel finds therefore that on the balance of probabilities the disputed domain name was registered as being used in bad faith. Complainant has therefore succeeded in the third element of the test in element of the test in Policy ¶ 4(a)(iii) and is entitled to the remedy requested.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <realogyadvantage.com> domain name be TRANSFERRED from Respondent to Complainant.
James Bridgeman SC
Panelist
Dated: December 16, 2020
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