Keller Williams Realty, Inc. v. Jackson Colgate
Claim Number: FA2303002036736
Complainant is Keller Williams Realty, Inc. ("Complainant"), represented by Stephanie A. Schmidt of Norton Rose Fulbright US LLP, Texas, USA. Respondent is Jackson Colgate ("Respondent"), Nigeria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kellerwilliamsrealestates.net>, registered with NameCheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to Forum electronically on March 21, 2023; Forum received payment on March 21, 2023.
On March 22, 2023, NameCheap, Inc. confirmed by email to Forum that the <kellerwilliamsrealestates.net> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 24, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 13, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@kellerwilliamsrealestates.net. Also on March 24, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 19, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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
Complainant has provided real estate brokerage services and related goods and services under the KELLER WILLIAMS mark since at least as early as 1983. Complainant has franchise locations on five continents, 191,877 agents worldwide, and an annual sales volume of $472.9 billion. Complainant owns United States trademark registrations for KELLER WILLIAMS and related marks, along with valid registrations in many other jurisdictions. Complainant also asserts common law rights in KELLER WILLIAMS arising from longstanding use and claims that the mark is famous.
The disputed domain name <kellerwilliamsrealestates.net> was registered in October 2022. The name is registered in the name of a privacy registration service on behalf of Respondent.
The domain name is being used for a website that displays Complainant's mark and an address in Austin, Texas, where Complainant is located (though the street address appears to be invalid). The website purports to offer real estate services under the KELLER WILLIAMS mark. It includes property listings and profiles of real estate agents, with names corresponding to agents who are affiliated with Complainant's franchises or competing companies. Complainant alleges and provides evidence that the website is being used to support a fraudulent phishing scheme in which Respondent solicits payments from potential customers by email, impersonating an agent associated with one of Complainant's franchises. Complainant states that Respondent is not commonly known by the domain name, has no relationship with Complainant, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <kellerwilliamsrealestates.net> is confusingly similar to its KELLER WILLIAMS mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").
The disputed domain name <kellerwilliamsrealestates.net> incorporates Complainant's registered KELLER WILLIAMS trademark (omitting the space), adding the generic term "real estate" (in plural form, also omitting the space) and the ".net" top-level domain. These additions do not substantially diminish the similarity between the domain name and Complainant's mark. See, e.g., Prudential Insurance Co. of America v. Domains2000.com, FA 298227 (Forum Sept. 2, 2004) (finding <prudentialrealestate.net> confusingly similar to PRUDENTIAL); Keller Williams Realty, Inc. v. Fusion Marketing, D2001-1266 (WIPO Mar. 15, 2002) (finding <kellerwilliamsuniversity.com> confusingly similar to KELLER WILLIAMS). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and its sole apparent use has been to impersonate Complainant in support of a fraudulent phishing scheme. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., SPTC, Inc. & Sotheby's v. LLC "Organization name," FA 1963172 (Forum Oct. 12, 2021) (finding lack of rights or interests in similar circumstances).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] 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 [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name obviously intended to create confusion with Complainant's well-known registered mark, and is using the domain name to support a fraudulent phishing scheme. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., SPTC, Inc. & Sotheby's v. LLC "Organization name," supra (finding bad faith registration and use in similar circumstances). The Panel so finds.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kellerwilliamsrealestates.net> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: April 20, 2023
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page