Generic Top Level Domain Name (gTLD) Decisions

The Complainant is TM Acquisition Corporation, Phoenix, AZ, USA ("Complainant") represented by Kathryn S. Geib, Esq., One Sylvan Way, Parsippany, NJ. The Respondent is Marianne Schneider, 2241 S.W. 15^th Street, Deerfield Beach, FL ("Respondent") represented by Marianne Schneider, Deerfield Beach, FL.

The domain name at issue is "century21-realty.com", registered with Network Solutions, Inc.

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 the panelist in this proceeding.

Edmund P. Karem as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") on December 13, 2000.

On December 14, 2001, Network Solutions, Inc. confirmed by e-mail to The Forum that the domain name "century21-realty.com" is registered with Network Solutions, Inc. and that the Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On December 14, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 3, 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@smartlaw.com by e-mail.

On January 18, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Edmund P. Karem as Panelist.

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

A. Complainant

Complainant contends that the domain name "CENTURY21-REALTY.COM" is clearly confusingly similar to Complainant’s numerous famous Century 21 ® marks. Complainant also contends that Respondent has no rights or legitimate interests in the domain name and that the Respondent’s use of this domain name is in bad faith.

B. Respondent

Respondent contends that she is not a franchisee of any franchisor with rights to the mark Century21 and is not legally bound by any franchise agreement entered into by Century 21 Fortune Realty in Boca Raton, Florida because she is a Sales Associate. Respondent also contends that TM Acquisition was not the owner or the company with rights to the Century 21 trademarks at the time that the domain name was registered.

Respondent further contends that Century 21 approved her website and also contends that she had no actual knowledge of the policies of Complainant regarding the creation of her website.

Complainant, TM Acquisitions Corporation, is a sister subsidiary of Century 21 Real Estate Corporation which owns registrations for the Century 21 marks. TM Acquisition Corporation licenses the Century 21 marks to Century 21 Real Estate Corporation, a franchisor of real estate brokerage offices.

On December 15, 1995, Century 21 Real Estate Corporation assigned its rights in the Century 21 marks to TM Acquisition Corporation, a sister subsidiary of HFS, Incorporated. Simultaneously with the assignment of rights to TM Acquisition Corporation, was a licensing of the rights back to Century 21 Realty Corporation.

In 1997, HFS, Incorporated, the parent corporation of Century 21 Real Estate Corporation and TM Acquisition Corporation, merged with CUC International Inc. and the surviving entity is Cendant Corporation which acquired all of HFS, Incorporated’s interest in Century 21 Real Estate Corporation.

In accordance with the license from TM Acquisition Corporation, Century 21 has the right to use 87 registered and numerous common law marks in the United States. Five of these registrations are for the CENTURY 21® word mark. The specific service marks are set out in Exhibit B to the Complaint. Twenty five additional registrations contain "Century21" as an element of the mark or design. Those marks are listed in Exhibit C to the Complaint. Some of the older certificates indicate Century 21 Real Estate to be the owner, however, assignment of the marks to TM Acquisition Corporation has been submitted to the United States Patent & Trademark Office for recording.

Century 21 Real Estate Corporation owns trademark registrants for numerous Century 21 marks in 64 countries outside the United States which are listed on Exhibit D to the Complaint.

Century 21 Realty Corporation franchises independently owned and operated real estate brokerage offices throughout the United States. It licenses to those franchisees the right to use Century 21 marks in brokerage offices and has licensed Century 21 marks to master franchisors in 24 other countries as set out in Exhibit E to the Complaint.

The Century 21 Marks have been used continuously in connection with the offering of real estate brokerage services since April 16, 1972. During that time, Century 21 has expended millions of dollars and significant time, resources and efforts in advertising, promoting and establishing the good will of the Century 21 Marks.

Respondent is a Sales Associate with Century 21 Fortune Realty in Boca Raton, Florida. Her resident address is in Deerfield Beach, Florida. She has been a Sales Associate with Century 21 Fortune Realty since 1994. She herself is not a franchisee, however, she is an employee of a franchisee. Century 21 became aware of Respondent’s use of this domain name in late 1997. Century 21 notified Fortune the domain name was not in compliance with its franchise agreement on January 8, 1998 and there followed communications both telephonic and written to the effect that the domain name was a violation of Century 21’s policies and procedures manual. In the course of these communications, recommended acceptable domain names for use on a website by Respondent were suggested and a phase out period to accommodate transition was offered. On June 30, 2000, Respondent’s attorney wrote to Mr. Henry Silverman, President and CEO of Cendant Corporation indicating her willingness to sell the domain name.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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 domain name "century21-realty.com" is confusingly similar to Complainant’s numerous Century 21 Marks. No citation of authority or extended discussion is necessary to support this conclusion as it is obvious on its face.

Respondent has no rights or legitimate interests in the domain name in question. The fact that Respondent herself is not the franchisee of Century 21 Realty Corporation and that her employer, Fortune Realty, Inc. is a licensee of Century 21 Fortune Realty, Inc. does not provide her with a legitimate interest in the domain name. She has no more right to the domain name than would any individual and the fact that she is the employee of a franchise and license holder of a variation of the Century 21 Mark certainly gives rise to a strong inference that she was aware of the rights of Century 21 Realty in its marks.

All her employer had was the right to use of a licensed mark or a variation thereof and she can gain no greater right to the use of an unlicensed variation of the mark than can her employer, Fortune Realty. See Heal Quik!, Inc. v. Goldman et al., and Amerishare Enterprise, LTD., FA 92527 (Nat. Arb. Forum Mar. 1, 2000). The effect of the franchise agreement between Century 21 Realty and Fortune Realty is to permit the use of only the name, "Century 21 Fortune Realty, Inc." by the franchisee or any of its employees.

Respondent’s registration and use of the domain name is in bad faith. Respondent has registered and utilized the name for the purpose of attracting, for commercial gain, Internet users to her website by creating a likelihood of confusion with the Complainant’s Century 21 Mark as to the source, sponsorship, affiliation or endorsement of her website. See Heal Quik!, Inc., cited above.

The evidence of the use of the domain name in bad faith is the course of dealings between Century 21 Realty and the Respondent after Century 21 Realty became aware of the Respondent’s use of the domain name in late 1997. Numerous written and telephonic communications advising that the domain name was in violation of the policies and procedures manual of Century 21 and would not be permitted were conveyed. After Complainant’s persistent determination to protect its trademark, Respondent offered the sale of the domain name. ICANN policy paragraph 4(b)(1) provides that an offer to sell the domain name for consideration above the minimal cost of registration may be considered a relevant aspect of the bad faith analysis.