RPB Media, Inc. v. Online
Classifieds c/o Online Classifieds Inc.
Claim Number: FA0611000842076
PARTIES
Complainant is RPB Media, Inc.
Respondent is Online Classifieds c/o Online
Classifieds Inc. (“Respondent”),
The domain name at issue is <landandhunt.com> (the “Domain Name”), registered with Gkg.Net, Inc.
PANEL
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.
Christopher Gibson as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 14, 2006; the
National Arbitration Forum received a hard copy of the Complaint on November 14, 2006.
On November 14, 2006, Gkg.Net, Inc. confirmed by e-mail to the
National Arbitration Forum that the Domain Name is registered with Gkg.Net, Inc. and that the Respondent is the
current registrant of the name. Gkg.Net, Inc. has verified that Respondent is
bound by the Gkg.Net, 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 November 17, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of December 7, 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@landandhunt.com by
e-mail.
A timely Response was received and determined to be complete on December 5, 2006.
Pursuant to Complainant’s request to have the
dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Christopher Gibson as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain
Name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it has
filed a trademark registration with the United States Patent and Trademark
Office (“USPTO”) for the LANDANDFARM.COM mark, and that it has used this mark in commerce for at least nine years in
connection with “real estate marketing and advertising services for rural
property.” Complainant claims that Respondent’s Domain Name is confusingly similar to
its LANDANDFARM.COM mark because the Domain
Name contains the first two terms of Complainant’s mark and replaces the
term “farm” with “hunt,” which Complainant claims is “nearly identical—same
language, phonetic structure, sound, words source [sic], first 2 words exactly
the same, same intuitive image from reasonable factors.”
The Complainant contends that the Respondent’s website was recently launched, with the Domain Name being registered recently in October 2006. The Complainant alleges that Respondent is not commonly known by the Domain Name, nor is there any evidence that the Respondent was operating under the Domain Name prior to launch or known by that name. The WHOIS information lists “Online Classifieds c/o Online Classifieds Inc.” as the registrant of the Domain Name. The Claimant contends that the Respondent has hidden itself behind a private proxy at its registrar and has no contact information on its website.
The Complainant asserts that Respondent’s registration and use of the Domain Name represents bad faith within
Policy ¶ 4(b)(iv) because Respondent is using the
disputed Domain Name to operate a
competing real estate listing website.
The Complainant contends that the Domain
Name resolves to a website providing commercial advertising services for
rural property in direct competition with Complainant. The website has allegedly copied the style,
structure and model of the complainant’s web site, “going so far as to provide
similar links on its front page, such as left side quick links to state
searches.” “A reasonable observer can
see that landandhunt.com is similar to landandfarm.com.”
Complainant also alleges that Respondent sent emails
to Complainant’s customers trying to convince them to switch to Respondent’s
listing services instead of using the Complainant’s website. The Complainant argues “[i]t doesn’t get
clearer that ‘the Respondent has 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.’”
B. Respondent
The Respondent contends that the Domain Name <landandhunt.com> is modeled after it’s own local site, <northfloridaforsale.com>, and serves as an extension of that service on a national level. The Respondent indicates that it offers a means of listing real estate and hunting recreation options for real estate agents and hunting enthusiasts. The Respondent states
Complainant does not own the words “land” “and” “farm” separately, but when used together as a whole. The Complainant cannot make a claim to domain names that use part of their name or for websites that offer similar services, otherwise, we’d have CNN.com trying to cancel out ABC.com and both of those websites are structured similar as most industry sites are.
The Respondent also alleges that “[o]
With respect to the allegations that the Respondent sent emails to
customers of the Complainant, the Respondent states that following an internal
investigation, they terminated the employee who sent the emails to customers of
the Complainant.
We at first reprimanded the worker, but when
we discovered that this may have occurred on more than landandfarm.com’s site,
we thereby terminated said employee and removed all privileges they had working
on the site landandfarm.com, and removed any possible visual conflicts that may
have been on our site. We did this
immediately and believe the actor in this episode was only conducting
themselves in this manner for a period of less than a week.
The Respondent contends that “[t]his should be satisfactory to the
Complainant, but it appears they are using this process as an opportunistic
procedure, in lieu of the remedy we have already amicably provided on the
opening of the next business day.”
FINDINGS
The Domain Name was registered by the
Respondent on October 11, 2006.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Complainant has
stated in its Complaint that (i) a trademark application has been filed and
approved for publication with the USPTO for the LANDANDFARM.COM mark, and (ii)
it has been using the LANDANDFARM.COM mark for real estate marketing and
advertising services for rural property for over nine years. Although Complainant acknowledges that the
USPTO has yet to issue a registration for the mark, prior panels have recognized common law trademark rights as appropriate
for protection under the Policy if a complainant can establish that it has done
business using the name in question in a manner sufficient to cause a secondary
meaning identifiable to Complainant's goods or services. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist).
In this case the Complainant has provided limited evidence to the Panel, aside from the statements in its certified Complaint, concerning its common law rights in the LANDANDFARM.COM mark. However, the Panelist takes notice of the Complainant’s web site associated with the LANDANDFARM.COM mark, a copy of which was submitted as an appendix to the Complaint. The <landandfarm.com> web site demonstrates its widespread popularity in the relevant real estate sector. In particular, a “Community Stats” section on the site’s home page lists the number of “property views” (over 45 million), the number of newsletter subscribers (over 30,000) and the number of emails sent by sellers (approximately 168,000). At the time the Panelist reviewed the website, there were 3,493 property listings. There was also an indication that 181 users were logged onto the site as the Panelist viewed it. The <landandfarm.com> domain name was registered by the Complainant almost seven years ago in January 1999, according to the WHOIS look-up. There are various other elements of the web site indicating a large on-line community that regularly uses the Complainant’s site, the length of time the site has been in operation, and the goodwill and reputation which has been developed by the Complainant.
Based on this information, and in view that the Respondent has not denied or sought to contest the Complainant’s assertion in its certified Complaint of trademark rights in the LANDANDFARM.COM mark, the Panelist finds that the Complainant has provided enough to establish its basic common law rights in the LANDANDFARM.COM mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).
The Panelist also
finds that the Domain Name <landandhunt.com>
registered by Respondent is confusingly similar to Complainant’s
LANDANDFARM.COM mark. The Domain Name, taken as a whole, has a
visual and phonetic structure and impact very similar to the Complainant’s
mark. The change of one word from “farm”
to “hunt,” when taken in the context of the visual and phonetic effect of the Domain Name as a whole, and bearing in
mind that the Respondent’s web site competes directly with the Complainant’s
site, does not negate the confusingly similar aspects of Respondent’s Domain Name pursuant to Policy ¶
4(a)(i). See American Eagle Outfitters, Inc.
v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com>
domain name to be confusingly similar to the complainant’s AMERICAN EAGLE
OUTFITTERS mark); see also Perot
Sys. Corp. v. Perot.net, FA
95312 (Nat. Arb. Forum Aug. 29, 2000) (finding that, given
the similarity of the complainant’s marks with the domain name, consumers will
presume the domain name is affiliated with the complainant). The similar style and features of the
respective web sites associated with the Complainant’s mark and the Domain Name only serve to reinforce the
confusion that starts with the names themselves.
As noted above, the Complainant alleges that Respondent is not commonly known by the Domain Name, nor is there any evidence that the Respondent was operating under the Domain Name prior to launch of Respodnent’s web site. The WHOIS information lists “Online Classifieds c/o Online Classifieds Inc.” as the registrant of the Domain Name.
The website associated with the Domain Name was launched only recently, which is confirmed by the date of October 11, 2006 for registration of the Domain Name. The Complainant also provided evidence of a Google search for the terms “landandhunt,” in which only Respondent’s website itself turned up, which Complainant argues establishes that “there has been no commercial use of the domain beyond its current use.”
Respondent does not attempt to claim in its Response that it is known by the Domain Name. The Respondent alleges that it is using the Domain Name as a “means of listing real estate and hunting recreation options for real estate agents and hunting enthusiasts.” Respondent claims that the domain name is a national extension of its pre-existing real estate listing services at the <northfloridaforsale.com> domain name.
The Panel finds
that Respondent is not commonly known by the Domain Name and that Respondent does not have rights or legitimate
interests in the Domain Name
according to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006)
(finding that the respondent was not commonly known by the <cigaraficionada.com>
domain name under Policy ¶ 4(c)(ii) based on the WHOIS
information and other evidence in the record).
Nor can the Respondent be
considered to have used the Domain Name in
connection with a bona fide offering of goods or services under Policy ¶
4(c)(i), by diverting Internet users seeking
Complainant’s real estate listings to Respondent’s competing listings for
commercial gain. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the
domain names for a bona fide offering of goods or services nor a
legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks).
The Complainant contends that the Domain
Name resolves to a website providing commercial advertising services for
rural property in direct competition with Complainant. Statements on the Respondent’s web site
confirm that this is the case:
LandAndHunt.com
charges you pennies a day so you can list real estate. For no additional
charge, you get aerial maps, street maps, various picture sizes, and exposure
by various search engines where your listings are published too individually.
You can be a real estate agent or just a regular person to advertise.
Complainant also alleges that Respondent sent e-mails to Complainant’s
customers trying to convince them to switch to Respondent’s
listing services. “This is disruptive
to the business of RPB Media, Inc. and causes confusion among some
LandAndFarm.com customers.”
In response the Respondent focuses primarily on these emails which were
sent by its ex-employee, indicating that the ex-employee acted without
authorization and was terminated. The
Respondent claims “[t]here is no confusion over the complainant’s
mark or the initiator of the email would have indicated that landandhunt.com is
affiliated or a step up from landandfarm.com.”
Despite the efforts taken by the Respondent
to deal with the ex-employee, the Panel nevertheless believes that the
Respondent’s choice of the Domain Name
unfairly takes advantage of the confusing similarity between the Domain Name and Complainant’s
LANDANDFARM.COM mark, in order to profit from the goodwill associated with that
mark in bad faith under Policy ¶ 4(b)(iv). The Respondent operates in the same business
as the Complainant. The parties can therefore be considered as
competitors. As noted above, the Domain Name and the LANDANDFARM.COM
mark are confusingly similar, while the general “look and feel” of the two web
sites is also similar. The Respondent’s
choice of the Domain Name, couple
with the behavior of its former employee, suggests that the Respondent was well
aware of the Complainant’s mark at the time it chose the Domain Name.
In view of these circumstances, the Panel
finds that Respondent (i) has 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
LANDANDFARM.COM mark under Policy ¶ 4(b)(iv), and (ii) has registered and used
the Domain Name in order to disrupt
Complainant’s business by maintaining a web site targeting Complainant’s core
market and offering similar real estate listing services, and that such conduct
indicates bad faith under Policy¶ 4(b)(iii).
See State Fair of
The Respondent is certainly entitled to
operate a business and web site in competition with the Complainant’s rural
real estate listing services. Moreover,
the Respondent is entitled to choose a domain name that may be advantageous for
promoting its services. What the
Respondent is not entitled to do, however, is to select a domain name that is
confusingly similar to one used by its competitor, the Complainant, and thereby
unfairly cause confusion and attempt to take advantage of the goodwill and
reputation that has been developed by the Complainant.
DECISION
Having established all three elements required under the ICANN Policy, the
Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <landandhunt.com> Domain Name be TRANSFERRED from
Respondent to Complainant.
Christopher Gibson, Panelist
Dated: December 25, 2006
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