Coldwell Banker Real Estate LLC v. Jenks Presley
Claim Number: FA2102001933334
Complainant is Coldwell Banker Real Estate LLC (“Complainant”), represented by David Ewen of McCarter & English, LLP, New Jersey, USA. Respondent is Jenks Presley (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cold-well-banker.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.
Jeffrey J. Neuman as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 24, 2021; the Forum received payment on February 24, 2021.
On February 25, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cold-well-banker.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 March 2, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 22, 2021 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 email@example.com. Also on March 2, 2021, 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 March 29, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey J. Neuman 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 name be transferred from Respondent to Complainant.
Complainant offers real estate brokerage services. Complainant has rights in the COLDWELL BANKER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,057,608, registered Apr. 29, 1997). See Amend. Compl. Annex B. Respondent’s <cold-well-banker.com> domain name is confusingly similar to Complainants mark as Respondent merely adds hyphens and the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent has no rights or legitimate interests in the <cold-well-banker.com> domain name as Respondent is not commonly known by the disputed domain name. Respondent was married to a former franchisee of Complainant, but that franchise agreement never authorized any franchisee to register domain names in the name of the Franchisor. In addition, that agreement has been terminated and Respondent is no longer licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark in connection with its services. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely passively holding the disputed domain name.
Respondent registered and uses the <cold-well-banker.com> domain name in bad faith. Specifically, neither the Respondent, nor his ex-spouse, were authorized by the Complainant to register the Disputed Domain Name and the registration of that name violated the terms of the Franchise Agreement entered into between the Respondent’s ex-spouse and the Complainant. Respondent’s continued use after the termination of the franchise agreement is further evidence of bad faith. Next, Respondent had actual knowledge of Complainant’s rights in the mark at the time of registration. Finally, Respondent failed to respond to Complainant’s cease and desist requests and attempts to resolve this matter amicably.
The <cold-well-banker.com> domain name was registered on February 9, 2014. However, Respondent failed to submit a response in this proceeding.
1. Complainant owns registered trademarks for the mark COLDWELL BANKER dating back to at least 1997, with a first use date of January 31, 1982, each of which are valid and in full force and effect. See Compl. Annex B.
2. Complaint’s COLDWELL BANKER marks were well known by the Registrant and pre-date the registration of the <cold-well-banker.com> disputed domain name, registered by Respondent on February 9, 2014.
3. The disputed domain name is identical or confusingly similar to the COLDWELL BANKER mark.
4. Complainant has not licensed or otherwise authorized Respondent’s ex-spouse, who previously worked for Complainant, or Respondent (who has no connection to Complainant other than through his previous relationship with his ex-spouse) to use its marks, nor is Respondent commonly known by the marks.
5. Complainant has established that the disputed domain names have been registered and used in bad faith.
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 claims rights in the COLDWELL BANKER mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,057,608, registered Apr. 29, 1997). See Amend. Compl. Annex B. Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant also provides evidence of additional trademark registrations for the COLDWELL BANKER mark for a variety of additional services in several different International classes of goods and services. Therefore, the Panel finds that the Complainant has rights in the COLDWELL BANKER mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <cold-well-banker.com> domain name is confusingly similar to Complainant’s mark as Respondent adds hyphens and the “.com” gTLD to Complainant’s mark. Adding hyphens into a complainant’s mark and a gTLD does not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Thus, Respondent’s <cold-well-banker.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i)
In addition to demonstrating that that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights, the Complainant must make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Once that prima facie case is made, the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <cold-well-banker.com> domain name as Respondent for several reasons, and this Panel agrees. It alleges that Respondent: (a) is not commonly known by the disputed domain name, (b) is not authorized to use Complainant’s mark, and (c) is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Where a response is lacking, relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). In this matter, the WHOIS information for the Registrant was redacted for privacy reasons. Complainant, however, was able to obtain information about the owner of the domain name from the Respondent’s Registrar. That information reflected that the Registrant of the domain name was “Jenks Presley.”
Additionally, Complainant argues that although Respondent was married to a franchisee of Complainant, this did not give Respondent (or his former spouse) the right to register or use a domain name containing Complainant’s mark. It claims that Complaint’s Franchise Agreement expressly allows franchisees to use Complainant’s marks in connection with the franchisee’s delivery of services on behalf of the franchisor but does not allow franchisees to register or use any domain names containing the Complainant’s trademarks.
Upon discovering the domain name registration, Complainant informed Respondent (and his former spouse) that the registration of the domain name was never authorized. See Amend. Compl. Annex F at Exhibit A. In addition, Complainant alleges that at the time of that initial letter, the Respondent’s spouse had already terminated her relationship with Complainant’s franchise. Information provided by the Complainant shows that when that letter was sent in 2019, content being displayed through disputed domain name included information about the Respondent’s ex-spouse’s real estate business and her affiliation with Complainant (despite the fact that that affiliation was terminated). Id. At the time the Complaint was filed, however, that content had been removed.
The Panel finds that the Complainant has met its prima facie burden establishing that the Respondent lacks legitimate rights or interest in the dispute domain name for the following reasons. First, the Respondent himself never had an affiliation with the Complainant. Any affiliation with the Complainant was between his former spouse and the Complainant.
Second, even assuming that Respondent registered the domain name on behalf of his former spouse, Complainant alleges that although the license agreement with its franchisees grants a license to use Complainant’s marks, it does not authorize the registration of domain names containing Complainant’s marks. Third, Respondent’s former spouse terminated her relationship with the Complainant well before the date of this Complaint. Previous Panels have found that former franchisees of a complainant do not establish rights or legitimate interests. See ERA Franchise Systems LLC v. Slawomir Bruszewski, FA 1102001370591 (Forum March 25, 2011) (finding “Once Respondent and Mrs. Bruszewski left the Franchisee, they lost all permission to utilize and take the benefit of the ERA Marks. The employment relationship ended approximately seven years ago, but Respondent continues to maintain the Domain Name and cause it to direct Internet users to Respondent’s Website. The Respondent’s Website has long since ceased all other use of the ERA Marks. “). See also Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 0205000112624 (Forum June 20, 2002) (finding “At one time, Respondent owned license rights in Complainant’s EXPRESS marks by virtue of the parties’ Franchise Agreement. However, these rights were extinguished in 1997 with the termination of the Franchise Agreement. ‘Once a license has expired, use of the formerly licensed trademark constitutes infringement. To say that the licensee has acquired rights that survive the legal termination of that license destroys the entire concept of a license.’” Mariah Boats, Inc. v. Shoreline Marina, LLC, FA 94392 (Forum May 5, 2000), quoting United States Jaycees v. Philadelphia Jaycees, 693 F.2d 134, 143 (3d Cir. 1981).
Next, Complainant argues that Respondent currently fails to use the <cold-well-banker.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Although the domain name previously was used to promote the Respondent’s former spouse’s real estate business while employed with Complainant, at the time of the Complaint, the domain name was not being used. Inactively holding a disputed domain name may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See CrossFirst Bankshares, Inc. v Yu-Hsien Huang, FA 1785415 (Forum June 6, 2018) (“Complainant demonstrates that Respondent fails to actively use the disputed domain name as it resolves to an inactive website. Therefore, the Panel finds that Respondent fails to actively use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii).”). Here, Complainant provides a current screenshot of the disputed domain name’s resolving webpage which appears to be a parked webpage. See Amend. Compl. Annex F.
For all the reasons above, the Panel finds that the Complainant established that Respondent lacks rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
The UDRP provides several circumstances by which a Complainant may provide evidence of registration and use in bad faith. See Policy ¶ 4(b). However, that list is illustrative and not exhaustive. Although Complainant here has not made arguments under Policy ¶ 4(b), such arguments are not required under the Policy—so long as Complainant shows bad faith use and registration in some manner. See 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). The Panel may therefore find Complainant’s Policy ¶ 4(a)(iii) arguments are sufficient to establish bad faith.
Complainant argues Respondent registered and uses the <cold-well-banker.com> domain name in bad faith based on several grounds: (a) Respondent had actual knowledge of Complainant’s Rights, (b) the registration and use of the disputed domain name was not authorized under the license agreement by and between Respondent’s former spouse and Complainant, and (c) the Respondent continued to use the domain name after the license agreement was terminated.
Complainant argues that Respondent had knowledge of Complainant’s rights in the COLDWELL BANKERS mark at the time of registering the <cold-well-banker.com> domain name. At the time of registration of the disputed domain name, Respondent’s then spouse had already become a franchisee of Complainant. Actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent was married to one of Complainant’s franchisees. See Amend. Compl. Annex F and G.
In becoming a franchisee, Respondent’s spouse was required to execute a license agreement that gave Respondent’s spouse the right to use Complainant’s marks but did not allow Respondent to register domain names containing Complainant’s marks. See Amend. Comp. at p. 6. Respondent and his former spouse was reminded of this prohibition through a cease and desist letter sent by Complainant on July 24, 2019. In response to the Cease-and-Desist letter, Respondent’s former spouse stated:
This is my ex-husband who owns this I see. I do not have any affiliation nor have anything to do with this site or the person in charge/owner of the site. I have notified the owner (ex-husband) with no response. I do not live at that address or have any access to anything to do with this at all.
See Amend. Compl. Annex F, Exhibit A.
In addition to registering the domain name without authorization, Respondent’s continued use of the disputed domain name after the termination of the franchise agreement Complainant had with Respondent’s ex-wife is evidence of use in bad faith. Registering a disputed domain name after the termination of an agreement that allowed for the use of a complainant’s mark, or registering the domain name without authorization to use the mark can be evidence of bad faith under Policy ¶ 4(a)(iii). See Procter & Gamble Co. v. Hlad, FA 126656 (Forum Nov. 20, 2002) (finding that the disputed domain name was registered and used in bad faith where the respondent, a distributor of the complainant’s products who was not a licensee of the complainant, used the complainant’s mark in its domain name, suggesting a broader relationship with the complainant and fostering the inference that the respondent was the creator of the complainant’s products rather than a mere distributor). Here, Complainant argues that the <cold-well-banker.com> domain name was registered to promote a former franchisee of Complainant, without having authorization to do so, and that the former franchisee’s ex-husband is now currently holding the disputed domain name. See Amend. Compl. Annex D, F, and G. Therefore, the Panel may find Respondent registered and sues the <cold-well-banker.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant also argues that Respondent’s failure to respond to its cease-and-desist letters indicates bad faith. In addition to the letter sent on July 24, 2019, a second cease-and-desist letter was sent to the Respondent on November 30, 2020 demanding inter alia that the Respondent not renew the disputed domain name which was due to expire on February 10, 2021. Respondent failed to respond to this letter and the domain name was renewed. Bad faith may be found in a respondent who does not reply to a cease-and-desist letter. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith).
Therefore, under the totality of circumstances, the Panel find this behavior constituted bad faith by Respondent under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cold-well-banker.com> domain name be TRANSFERRED from Respondent to Complainant.
Jeffrey J. Neuman, Panelist
Dated: April 12, 2021
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