DECISION

TM Acquisition Corp. v. Steve Breen

Claim Number: FA0107000098443

PARTIES

Complainant is TM Acquisition Corp., Phoenix, Arizona, USA (“Complainant”) represented by Kathryn S. Geib.  Respondent is Steve Breen, Westport County, Ireland (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <century21prevete.com>, <century21prevete.net>, and <century21prevete.org>, registered with Register.com.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on July 31, 2001; the Forum received a hard copy of the Complaint on August 1, 2001.

On August 1, 2001, Register.com confirmed by e-mail to the Forum that the domain names <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> are registered with Register.com and that 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 August 7, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 27, 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@century21prevete.com, postmaster@century21prevete.net, and postmaster@century21prevete.org by e-mail.

On August 9, 2001 an informal email Response from Respondent was received and indicated Respondent's willingness to cooperate with this Proceeding.  On August 10, 2001 the Forum received verification that Respondent intended for that email to constitute its complete Response. The Panel considered the substance of Respondent’s email and considered it as a Response; but given that it did not comply with any of the requirements under ICANN Rule 5(b) and given that it offered no substantive matters that would alter the result, the Complaint proceeds in essence as a Default.

On August 14, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.

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.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant's licensee, Century 21 Real Estate Corporation.

PARTIES’ CONTENTIONS

A. Complainant asserts that:

The <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names are confusingly similar to its numerous registered CENTURY 21 marks, including those registered in Ireland, where Respondent is located. 

Respondent has no rights nor legitimate interests in the disputed domain names. 

Respondent registered and is using the <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names in bad faith.

B. Respondent wrote in his email that he bought these domain names in good faith but did not dispute any of Complainant's allegations.

FINDINGS

Complainant is a Delaware corporation with its principal place of business in Arizona.  Complainant holds multiple trademark registrations for the CENTURY 21 family of marks in the USA and many other countries, including Ireland, the location of Respondent.  Complainant's registrations in Ireland include:

CENTURY 21                            Trade Mark No. 88,749 for: printed material, books, manuals, business forms, brochures, all relating to real estate business, class 16.

CENTURY 21                            Trade Mark No. 142,535 for:  printed matter and publications, class 16.

CENTURION                            Trade Mark No. 150,073 for: printed materials and publications, class 16.

CENTURION                            Trade Mark No. 150,608 for: pins, class 14.

CENTURY 21 & sign post          Trade Mark No. 151,789 for: printed materials and publications, class 16.

CENTURY 21 & design             Trade Mark No. 151,790 for: printed materials and             publications, class 16.

CENTURY 21                            Trade Mark No. 201,312 for: classes 35 and 36.

CENTURY 21 & design             Trade Mark No. 201,423 for: classes 35 and 36.

Complainant has licensed the CENTURY 21 Marks to Century 21 Real Estate Corporation (“Century 21”).  Century 21 is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices, including policies, procedures and techniques designed to enable such offices to compete more effectively in the real estate sales market.  Century 21 sub-licenses the CENTURY 21 marks to its franchisees.  One of these franchisee's (CENTURY 21 Laffey) owned the disputed domain names prior to Respondent's registration of the names.  Another of Century 21's franchisees operates under the Century 21 Prevete Real Estate name.  Prior to the transfer of the disputed domain names, Complainant had begun negotiations with its franchisees regarding their infringing upon and their unauthorized registration of disputed domain names.  The Respondent obtained the <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names on May 16, 2001.  As of the date of the Complaint, the disputed domain names did not resolve to a web site, but rather to the registrar’s page at futuresite.register.com/futuresite.shtml, which is entitled “Coming Soon.”  Upon receipt of a copy of the Complaint from the Forum, Respondent notified the Forum via email of its intent to cooperate with the proceeding and to abide by the Panel's decision; and Respondent subsequently confirmed that the email would constitute its Response.

DISCUSSION

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 an adequate timely response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) 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;

(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.

Identical to and/or Confusingly Similar

Complainant has established in this proceeding that it has rights to the CENTURY 21 marks by virtue of its multiple trademark registrations in Ireland and elsewhere.  The <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names are confusingly similar to Complainant's mark in that the names incorporate the entire mark and simply add the geographic descriptive term and a gTLD.  Such additions do not defeat a claim of confusing similarity for the purposes of Policy ¶ 4(a)(i).  E.g., Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

The Panel finds that Complainant has made the necessary showing to prevail under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

Complainant established that it has rights to and legitimate interests in the marks that are contained in their entirety within the domain names in dispute in this claim.  Respondent does not deny that Complainant has these rights.  Respondent further has failed to use or to make preparations to use the disputed domain names. This permits the inference that Respondent is not using the names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) such as would give Respondent a claim to having rights to or interests in the marks within the domain names in issue.  Complainant states that it has not licensed Respondent to use its CENTURY 21 mark and that Respondent could not be commonly known by the disputed domain names.  Complainant further claims that, because Respondent represented his interests in the disputed domain names in connection with a profit-based business, the Respondent could not use the <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

Accordingly, the Panel finds that Complainant has met the showing that is necessary under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant argues, and Respondent does not refute, that Respondent registered the <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names with an intention to sell the names for valuable consideration in excess of the out-of-pocket registration costs incurred.  Such conduct is considered bad faith according to Policy ¶ 4(b)(i).  See Wembley Nat’l Stadium Ltd. v. Thomson, D2000-1233 (WIPO Nov. 16, 2000) (finding bad faith based on the apparent willingness of the Respondent to sell the domain name in issue from the outset, albeit not at a price reflecting only the costs of registering and maintaining the name); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); see also Universal City Studios, Inc. v. Meeting Point Co., D2000-1245 (WIPO Dec. 7, 2000) (finding bad faith where the Respondent made no use of the domain names except to offer them to sale to the Complainant).

Complainant further claims that Respondent's registration of the domain names in light of the widespread fame of Complainant's CENTURY 21 marks combined with Respondent's failure to use the disputed domain names permits an inference of bad faith on the part of Respondent.  Compare Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith), and Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration), with Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent had made no use of the domain name or website that connects with the domain name, and passive holding of a domain name permits an inference of registration and use in bad faith).

The Panel finds that Complainant has met its burden under Policy ¶ 4(a)(iii).

DECISION

Having established all three elements under the ICANN Policy, the Panel concludes that the requested relief should be granted.  Accordingly, it is Ordered that the <century21prevete.com>, <century21prevete.net>, and <century21prevete.org> domain names be transferred from Respondent to Complainant's licensee, Century 21 Real Estate Corporation.

Hon. Carolyn Marks Johnson, Panelist

Dated: August 28, 2001.

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