Generic Top Level Domain Name (gTLD) Decisions

Complainant is TM Acquisition Corp., Phoenix, AZ, USA ("Complainant") represented by Kathryn S. Geib. Respondent is Steve Carroll Carroll, Rancho Cucamonga, CA, USA ("Respondent") represented by William A. Finer, of Finer, Kim & Stearns.

The domain name at issue is "erarealty.com" registered with Network Solutions, Inc.

On May 11, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele as Panelist. The undersigned certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on April 9, 2001; the Forum received a hard copy of the Complaint on April 9, 2001.

On April 12, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name "erarealty.com" is registered with Network Solutions, Inc. and that 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 Uniform Domain Name Dispute Resolution Policy (the "Policy").

On April 13, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 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@erarealty.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.

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 the Respondent to the Complainant.

A. Complainant

To support its contentions, Complainant alleges that (1) the domain name is identical or confusingly similar to Complainant’s marks; (2) the Respondent has no rights or legitimate interests in the domain name; and (3) the domain name is registered and used in bad faith.

B. Respondent

Complainant relies on the following trademark registrations and application:

Complainant, TM Acquisition Corp., is a Delaware corporation with its principal place of business in Arizona. It is the owner of numerous ERA marks as registered with the USPTO and has licensed the ERA marks to ERA Franchise Systems, Inc. ("ERA"). ERA is a Delaware corporation with its principal place of business in New Jersey. TM Acquisition Corp. and ERA are subsidiaries of Cendant Corporation, a Delaware corporation with it principal place of business in New York.

ERA is a franchiser of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices, including policies, procedures and techniques. ERA licenses its franchisees the right to use the ERA marks in their real estate brokerage offices throughout the United States and in 23 other countries. At present, there are approximately 1,200 franchised offices in the USA and another approximately 1,500 franchised offices in other countries.

ERA has used the ERA mark continuously in connection with the offering of real estate brokerage services since October 31, 1971 and the first ERA design mark was registered on January 28, 1975. During its nearly 30 years of operation, ERA has expended many millions of dollars and significant time, resources and effort in advertising, promoting and establishing the goodwill of the ERA Marks in association with its real estate business. As a result, most of the ERA marks are distinctive and many have become incontestable and are famous. ERA operates its principal web site at <era.com>.

Respondent’s attorney indicated in a letter to Complainant that Respondent is engaged in the business of the "purchase and sale of commodities . . . [including] data and domain names." Based on this representation, it appears that Respondent does not use the domain name for his own business activities. However, he has apparently authorized its use by a real estate company in direct competition with ERA. The domain name erarealty.com resolves to <residentialhomes.com>, at which residential real estate is offered for sale. The owner of <residentialhomes.com> is Mr. Lorenzo Lombardelli, who operates a Re/Max real estate franchise in at least five (5) locations in California. Although Mr. Lombardelli owns various domain name registrations which contain the Re/Max mark, he also offers his real estate services at <coldwellbankerrealty.com>, which incorporates the famous COLDWELL BANKER mark. His propensity to trade off the goodwill of his direct competitors is also evidenced by his use of a sub-directory containing the CENTURY 21 mark, C21, within <residentialhomes.com/c21realestate>.

The domain name was registered on June 8, 1998. Complainant first became aware of Respondent’s registration on December 21, 1998. On January 22, 1999, Complainant’s attorney forwarded a letter to Respondent on behalf of ERA, putting Respondent on notice of ERA’s trademark rights, expressing concern over the potential for consumer confusion and demanding that Respondent cease and desist use of the domain name.

On March 15, 1999, Respondent’s attorney forwarded a letter to Complainant’s counsel stating, that his client would not infringe on the ERA mark and would entertain a reasonable offer to purchase the domain name. Thereafter, on April 8, 1999, Complainant’s attorney visited the domain name online and discovered that Respondent had ceased use of the domain name.

At some point thereafter, Respondent resumed use of the domain name by again providing an automatic link to <residentialhomes.com> which continues to offer real estate brokerage services. On September 19, 2000, Complainant’s attorney had a teleconference with Respondent’s attorney in which Respondent again offered the domain name for sale to ERA. Complainant’s attorney responded on October 26, 2000 and offered the nominal sum of $100 for the transfer of the domain name registration. As of the filing of this Complaint, Respondent has not accepted this offer, nor made a counter-offer. Therefore, no resolution has been reached and the Respondent continues to use the domain name for real estate brokerage 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 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 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.

Respondent’s domain name "erarealty.com" consists of the famous ERA mark followed by the generic term "realty," which is the very business with which consumers strongly identify ERA. Using an established mark and a generic term—that is descriptive of the mark holder’s line of business—to form a domain name, creates consumer confusion. See Slep-Tone Entertainment Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (stating that "likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry"); Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (noting that "Respondent has registered and attempted to use the disputed domain name in the same line of services as that which Complainant provides, and that this makes it likely that consumers would be confused as between these two sources"). Based on the above, there can be no doubt that the domain name "erarealty.com" is confusingly similar to the ERA mark; Complainant has satisfied Policy ¶ 4(a)(i).

Pursuant to ICANN Policy ¶ 4(c), Respondent may show rights in the domain name by its (1) use or preparations to use the domain name in a bona fide offering of services prior to notice of the dispute; (2) being commonly known by the domain name; or (3) fair use. Respondent fails on all counts.

Respondent has not used the domain name to make a bona fide offering of his services. In fact, he has knowingly and intentionally linked the domain name to a direct competitor of ERA who operates multiple offices under a Re/Max franchise. See Chip Merchant, Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that Respondent’s use of domain names confusingly similar to Complainant’s mark to sell competing goods was an illegitimate use and not a bona fide offering of goods); 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 the Complainant's site to a competing the website).

Further, Respondent has never been known by the domain name "erarealty.com," the ERA mark or any other name containing the word ERA. Respondent is not now, nor has he ever been, a licensee of Complainant or ERA, nor has he ever had any affiliation with Complainant or its related companies. See Systima Ltd. v. Willie Byrne, D2001-0300 (WIPO Apr. 23, 2001) (finding "There is no indication from the evidence before this Administrative Panel that the Respondent has ever been known by the said domain name so as to claim rights or a legitimate interest in accordance with Paragraph 4(c)(ii) of the Policy.")

As to the third factor, Respondent is not making a non-commercial, fair use of the domain name.

Since no circumstance has been evidenced by Respondent that could reasonably support an inference in his favor under paragraph 4(c) of the Policy, the Panel finds that the Respondent has no rights or legitimate interests to the disputed domain names and that paragraph 4(a)(ii) has been proven.

Respondent has intentionally registered and used the domain name in bad faith.

ICANN Policy ¶ 4(b)(i) allows for a finding of bad faith when the registrant offers to sell the domain name to its rightful owner for valuable consideration. After Respondent was notified of Complainant’s rights via it’s January 22, 1999 attorney’s letter, Respondent’s attorney wrote on March 15, 1999 a letter stating that his client would not "infringe on your registered service mark" and then offered to sell the domain name. Upon registering the domain name, Respondent was obviously aware that he possessed an infringing domain name, as evidenced by his admission in the response to the cease and desist letter.

According to Respondent’s attorney, Respondent was prepared to contemplate a sale of the name to Complainant if a "reasonable offer" was submitted. Yet, Respondent never responded to Complainant’s formal written offer for $100. Against the background of Respondent’s acknowledged business as a dealer in domain names, this conduct gives rise to the inference that Respondent registered the name primarily for the purposes of selling it for valuable consideration. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where Respondent, a domain name dealer, rejected Complainant’s nominal offer of the domain in lieu of greater consideration).

ICANN Policy ¶ 4(b)(iv) allows for a finding of bad faith when the registrant attracts, for commercial gain, Internet users to a website by creating confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement. Here, Respondent is using the domain name to intentionally attract, for commercial gain, Internet users to Mr. Lombardelli’s Re/Max franchise, which is in direct competition with ERA. See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website where educational services were offered to the same market as that served by Complainant and later Respondent modified use of the domain name after receiving domain name complaint); Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).

The Panel therefore concludes that the Respondent has registered and used the domain name in bad faith and that Policy ¶ 4(a)(iii) has been proven.

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name "erarealty.com" be transferred from the Respondent to the Complainant.