Claim Number: FA0301000142046
Complainant is RE/MAX International, Inc., Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf, Lamb, Greene & MacRae LLP. Respondent is Seocho, Seoul, KOREA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwremax.com>, registered with Bulkregister.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 14, 2003; the Forum received a hard copy of the Complaint on January 15, 2003.
On January 15, 2003, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <wwwremax.com> is registered with Bulkregister.com, Inc. and that Respondent is the current registrant of the name. Bulkregister.com, Inc. has verified that Respondent is bound by the Bulkregister.com, 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 January 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 6, 2003, 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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." 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.
A. Complainant makes the following assertions:
1. The domain name registered by Respondent, <wwwremax.com>, is confusingly similar to Complainant’s RE/MAX mark.
2. Respondent has no rights or legitimate interests in the <wwwremax.com> domain name.
3. Respondent registered and used the <wwwremax.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RE/MAX International, Inc., holds several trademark registrations for the RE/MAX mark (e.g. U.S. Reg. No. 1,139,014, registered on the Principal Register of the United States Patent and Trademark Office on August 26, 1980). Under the RE/MAX mark, Complainant has brokered millions of home sale transactions in the United States and worldwide, resulting in approximately one trillion dollars in sales. Complainant’s real estate brokerage network comprises approximately 4,400 individual offices, with a worldwide sales force of approximately 78,000 individuals.
Complainant has invested approximately $3 billion in advertising and promoting the services offered under the RE/MAX mark. As part of its advertising campaigns, Complainant uses a fleet of more than 80 hot air balloons bearing the RE/MAX trademark. Complainant is also the second largest fund raiser for the Children’s Miracle Network. In addition to these attempts to create consumer recognition and goodwill towards its mark, Complainant registered numerous domain names, including <remax.com>, <remax.net> and <remax.org> for use in conjunction with its real estate brokerage business.
Respondent, Seocho, registered the <wwwremax.com> domain name on May 20, 2001, and is not licensed or authorized to use Complainant’s mark for any purpose. The website associated with the disputed domain name hosts both pop-up advertisements and a series of links to websites that range from adult-oriented and gambling websites to websites that offer real estate services in competition with Complainant’s services.
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."
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(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has established rights in the RE/MAX mark through registration on the Principal Register of the United States Patent and Trademark Office as well as through continuous and widespread use of the mark in commerce.
The domain name registered by Respondent, <wwwremax.com>, is confusingly similar to Complainant’s RE/MAX mark. Other than its elimination of the “/” from Complainant’s mark (a character that is not reproducible in a second-level domain name), Respondent has merely added the prefix “www.” This does not sufficiently distinguish the disputed domain name from Complainant’s mark, as this addition prefaces almost every second-level domain name. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”); see also Dana Corporation v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature).
Accordingly, the Panel finds that the <wwwremax.com> domain name is confusingly similar to Complainant’s RE/MAX mark under Policy ¶ 4(a)(i).
Complainant established that it has rights to and interests in the domain name at issue. Complainant can meet its burden under Policy ¶ 4(a)(ii) by showing that Respondent’s behavior is not demonstrative of the protections provided to domain name Registrants in Policy ¶¶ 4(c)(i)-(iii). Such an uncontested showing by Complainant shifts Complainant’s burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
Respondent’s <wwwremax.com> domain name is an example of “typosquatting,” the registration of a domain name that replicates an actual domain name, but with the substitution or addition of a popular typographical error. Internet users seeking Complainant’s <remax.com> who fail to type a period will be misdirected to Respondent’s website. This website uses both pop-up advertisements, from which Respondent presumably earns a profit, and links to websites of those who compete with Complainant in the real estate brokerage industry. This does not evidence a bona fide offering of goods or services as contemplated by Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Encyclopaedia Brittanica, Inc. v. Zuccarini, D2000-0330 (WIPO June 7, 2000) (finding that fair use does not apply where the domain names are misspellings of Complainant's mark); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant).
Respondent identifies itself in its WHOIS contact information as “Seocho.” Respondent’s domain name is a blatant attempt to capitalize on Internet users who inadvertently misspell the URL for Complainant’s <remax.com> domain name. Neither these nor any other facts before the Panel would permit an inference that Respondent is “commonly known by” the name WWWREMAX or <wwwremax.com>, and the Panel finds Policy ¶ 4(c)(ii) does not apply to Respondent. See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
The Panel also views Respondent’s lack of a response in this dispute as additional evidence that it has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance, which could demonstrate any rights or legitimate interests in the domain name).
Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwremax.com> domain name under Policy ¶ 4(a)(ii).
Respondent’s infringing <wwwremax.com> domain name was registered and used in bad faith. For the purposes of this dispute, Respondent’s domain name incorporates Complainant’s mark in its entirety, a mark that Complainant has spent considerable sums promoting. In light of these facts, the Panel concludes that Respondent had actual notice of Complainant’s rights in its mark prior to registering the infringing domain name and such registration equates to bad faith registration of a domain name under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); see also Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding the domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants).
Furthermore, Respondent uses its infringing domain name to earn commercial profit from its pop-up advertisements. In capitalizing on the fame surrounding Complainant’s mark for commercial gain, Respondent runs afoul of Policy ¶ 4(b)(iv) and the Panel finds that this evidences bad faith use and registration of the domain name. See Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where the Respondent attracted users to advertisements); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding constructive notice as a result of Complainant’s widespread promotional efforts coupled with diversion from Complainant’s site to Respondent’s for competing commercial gain is sufficient evidence of bad faith registration and use); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).
The Panel thus finds that Respondent registered and used the <wwwremax.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwremax.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 25, 2003.
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