Generic Top Level Domain Name (gTLD) Decisions

DECISION

TM Acquisition Corp. v ChoiceOne Mortgage

Claim Number: FA0103000096932

PARTIES

The Complainant is TM Acquisition Corp., Phoenix, AZ, USA (“Complainant”) represented by Kathryn S. Geib.  The Respondent is ChoiceOne Mortgage, Marlon, NJ, USA (“Respondent”) represented by Jonathan Charles Camp.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is "century21mortgage.com" registered with Register.com.

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.

R. Glen Ayers served as the Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on March 22, 2001; the Forum received a hard copy of the Complaint on March 23, 2001.

On April 2, 2001, Register.com confirmed by e-mail to the Forum that the domain name "century21mortgage.com" is registered with Register.com and that the Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com 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 April 9, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 30, 2001 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@century21mortgage.com by e-mail.

A timely response was received and determined to be complete on April 30, 2001.

On May 9, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant holds  88 trademarks incorporating the "Century 21" phrase.  It has licensed "Century 21" generally to Century 21 Real Estate Corporation.  The registered marks related to mortgage services are licensed to Cendant Mortgage Corporation. Complainant asserts that all of these are "famous" marks, many of which have been in continuous use since 1972. 

Many of the registrations have been used in connection with mortgage-related services.

Complainant holds a specific trademark, "CENTURY 21 Mortgage Corporation."

Respondent's registered domain name, "century21mortgage.com" is alleged to be identical to or confusingly similar to the marks held by Complainant.  Complainant contacted the Respondent, expressed concerns over the similarity, but Respondent declined to transfer the domain name.  Complainant offered Respondent $1,000 to cover costs, etc.

Complainant has supplied case law showing its marks to be both "famous" and "strong". Complainant has also applied for the specific mark, "Century 21 Mortgage," as of March 8, 2001.

Complainant asserts that the Respondent has no rights in the name.  Respondent appears to be doing business as Choice One Mortgage and uses a domain name, "choiceonemortgage.com" to facilitate its business activities.  Respondent has made no use of the disputed name, "century21mortgage.com" during the 16 months since Respondent registered the name.

Complainant asserts that the Respondent has acted in bad faith by "parking" a competitor's name in order to deprive the competitor of use of the name on the Internet as a domain name.  This, says Complainant, is evidence of business disruption

B. Respondent

Respondent contends that Complainant's attempts to register the trademark "Century 21 Mortgage" in March of this year demonstrates that Complainant's"marks are weak and require the registration of the precise claimed derivative mark ...."  Given that premise, since Respondent was the first to file (for the domain name), it must prevail.

Respondent asserts that it has rights to the name, since the Respondent acted in good faith; fail to use is not "sinister."  Respondent, by affidavit, asserts that the operators of Respondent "were just caught up in the Millennium hype" when the name was selected.

Respondent denies bad faith.  Respondent asserts that there is no evidence of bad faith acts.  Respondent cites Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (Feb. 18, 2000) for the proposition that no-use cannot be "bad faith."

C. Additional Submissions

Complainant’s Addition Submission was timely and properly filed and has been considered.  In the Additional Submission, Complainant includes the recent filing for the mark "Century 21 Mortgage" and states that the decision to file the mark was a business decision unrelated to this case.  Complainant also included additional case law including judgments Complainant has received in federal courts in cases brought by Complainant asserting infringement.

FINDINGS

Complainant has demonstrated that it holds a trademark, “Century 21 Mortgage Corp.” which is either identical to the domain name or as to which the domain name is confusingly similar.  It has held this mark for a number of years and the mark is well-established.  The basic mark, “Century 21,” however, would be sufficient for this case.  The use of the domain name is certainly confusingly similar to the basic mark.  Combining Complainant’s famous mark with a generic term that directly relates to Complainant’s business is sufficient.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) and Body Shop Int’l PLC v. CPIC NET and Hussain, D2000-1214 (WIPO, Nov. 26, 2000).

Respondent has shown no “rights” in the domain name.  Its affidavits are not persuasive.  Respondent is not commonly known by the disputed name and has not used the disputed name in any bona fide business endeavor.  See Adamovske strojirny v. Tatu Rautiainen, D2000-1394 (WIPO, Dec. 20, 2000).  Respondent has merely passively held the domain name since registration.  See American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO, Feb. 19, 2001) and Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO, Mar. 19, 2001).

Respondent has certainly registered the mark in “bad faith” with the simple intent, which may be clearly inferred, of blocking the use of the domain name by the holder of the mark.  Certainly, Respondent was aware of the core famous mark, “Century 21”, when it registered the domain name.  See Ty, Inc. v. Parvin, D2000-0688 (WIPO, Nov. 9, 2000).  The mark is certainly famous enough in the real estate industry that Respondent had to be aware of its existence. Merely holding the name without use is further evidence of bad faith.  See Body Shop Int’l PLC v. CPIC NET and Hussain, cited above.  Registration to block use supports a finding of bad faith under these circumstances.  See Surface Protection Indus., Inc. v. The Webposters, D2000-1613 (WIPO, Feb. 5, 2001); Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corp. v. S & S Enterprises, Ltd., D-2000-0802 (WIPO, Sept. 9, 2000).

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.

Identical and/or Confusingly Similar

The mark, Century 21, and the mark, Century 21 Mortgage Corporation, are identical to or confusingly similar to the domain name.  It is not necessary to consider Complainant’s recent registration of “Century 21 Mortgage:”

Rights or Legitimate Interests

The Respondent has no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

The Respondent has registered the name in bad faith.  Failure to use the name since registration is not relevant, since registration in and of itself is a use.

DECISION

The domain name shall be transferred to Complainant.

R. Glen Ayers, Jr., Esq., Panelist

Dated: May 29, 2001

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