DECISION

RE/MAX International, Inc. v. Private

Claim Number: FA0208000123876

PARTIES

Complainant is RE/MAX International Inc., Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf, Lamb, Greene & MacRae LLP.  Respondent is Private, Moscow, RUSSIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <remaxrealty.com>, registered with Bulkregister.com, Inc.

PANEL

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.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 26, 2002; the Forum received a hard copy of the Complaint on August 27, 2002.

On August 29, 2002, Bulkregister.com, Inc. confirmed by e-mail to the Forum that the domain name <remaxrealty.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 August 29, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 18, 2002 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@remaxrealty.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 October 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant makes the following averments in its Submission:

1. Respondent’s <remaxrealty.com> domain name is confusingly similar to Complainant’s RE/MAX registered mark.

2. Respondent does not have any rights or legitimate interests in the <remaxrealty.com> domain name.

3. Respondent registered and used the <remaxrealty.com> domain name in bad faith.

B. Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds several registrations for the RE/MAX mark, which denotes, inter alia, the “rendering [of] technical aid and assistance to others in the establishment and operation of a real estate brokerage agency.” More specifically, Complainant’s RE/MAX mark is listed on the Principal Register of the U.S. Patent and Trademark Office (“USPTO”) as Reg. Nos. 1,139,014; 1,339,510; 2,054,698; and, 2,468,858, among others. The USPTO lists Complainant’s first use of the RE/MAX mark in commerce as January 30, 1973.

Since at least as early as 1973, real estate brokerage services affiliated with the RE/MAX network have provided real estate services throughout the U.S. under Complainant’s distinctive registered trademarks. Presently, the RE/MAX network comprises approximately 4,300 individual offices with a worldwide force of sales agents numbering approximately 75,000. Since the 1973 date of inception, the RE/MAX network has used its mark in connection with millions of home sale transactions in the U.S. and worldwide, resulting in approximately one trillion dollars in sales. Complainant has invested approximately $3 billion on worldwide advertisements and promotions for services offered under the RE/MAX mark, which represents a substantial amount of resources invested into developing the goodwill associated with the mark among the consuming public.

Also of significance, Complainant maintains a positive reputation in the community and is actively involved in philanthropic concerns. More specifically, Complainant and the RE/MAX network is the second largest fundraiser for the Children’s Miracle Network.

Lastly, Complainant conducts its real estate services from various domain names, including without limitation: <remax.com>, <remax.net>, <remax.org>, <remax.us>, and <remaxcommercialbrokerage.com>.

Respondent registered the <remaxrealty.com> domain name on April 11, 2000. Complainant’s search into Respondent’s use of the subject domain name indicates that <remaxrealty.com> redirects Internet users to other unrelated commercial websites, including multiple casino-related gambling websites. The <remaxrealty.com> domain name initially resolves to a banner display that advertises a real estate entity that competes with Complainant in the real estate market.

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 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 and draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the RE/MAX mark through registration with the USPTO and continuous use of the mark in relation to its real estate brokerage service since 1973.

Respondent’s <remaxrealty.com> domain name is confusingly similar to Complainant’s RE/MAX mark. Respondent’s domain name incorporates the substantive portion of Complainant’s mark in its entirety, and merely adds the related work “realty” to the end of Complainant’s mark. As stated, the term “realty” is descriptive of the business in which consumers identify Complainant and its services. Previous panels have determined that where a second-level domain includes a word that describes Complainant alongside Complainant’s mark there is a likelihood that Internet users will be confused. Respondent’s deletion of the forward-slash from Complainant’s mark is of no significance because Complainant has made a practice of excluding the symbol from its domain names (e.g., <remax.com> and <remax.org>), and the dominant portion of Complainant’s mark still remains in Respondent’s domain name. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s Submission establishes a legitimate prima facie case against Respondent, effectively shifting the burden of production to Respondent. Because Respondent failed to submit any materials in this proceeding, Complainant’s assertions are unopposed. Therefore, it is proper for the Panel to accept all of Complainant’s reasonable inferences as true. See 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 in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).

Uncontested evidence indicates Respondent’s domain name resolves to a website that contains banner advertisements for Complainant’s competitors and various links to commercial gambling websites. Presumably, Respondent receives some form of monetary compensation for maintaining these advertisements and links on its website. Respondent utilizes the infringing domain name to initially capture Internet interest, and then diverts Internet users to these competing and commercial websites. Such opportunistic use of Complainant’s RE/MAX mark in the domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i). Furthermore, because Respondent attempts to profit from the goodwill and fame of Complainant’s mark by linking its infringing domain name to commercial websites it cannot establish rights or legitimate interests in <remaxrealty.com> under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Société des Bains de Mer v. Int’l Lotteries, D2000-1326 (WIPO Jan. 8, 2001) (finding no rights or legitimate interests where Respondent used the <casinomontecarlo.com> and <montecarlocasinos.com> domain names in connection with an online gambling website).

Furthermore, there is no evidence that Respondent is commonly known by the disputed <remaxrealty.com> domain name pursuant to Policy ¶ 4(c)(ii). No information has been provided to this Panel that would suggest Respondent has any legitimate connection with the second-level domain “remaxrealty.” The content of the website also has no apparent connection with the RE/MAX mark or the realty services offered thereunder. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Significantly, Respondent has failed to submit any evidence or materials that would refute Complainant’s assertions and accompanying information. Therefore, uncontested circumstances indicate that Respondent opportunistically registered Complainant’s RE/MAX mark in a confusingly similar domain name in order to commercially profit from the goodwill associated with the RE/MAX mark. Respondent’s infringing domain name resolves to a website that contains various advertisements and links to commercial forums. Respondent’s registration and diversionary use of the <remaxrealty.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking Complainant’s site to its own website for commercial gain).

Furthermore, reinforcing the above conclusion is the fact that Respondent’s domain name is linked to gambling websites; an act that not only tarnishes Complainant’s reputation and the goodwill associated with the RE/MAX mark throughout the community, but constitutes a separate finding of bad faith under Policy ¶ 4(b)(iv). See Mars, Inc. v. Double Down Magazine, D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent linked the domain name <marssmusic.com>, which is identical to Complainant’s mark, to a gambling website); see also Encyclopedia Britannica Inc. v. Shedon.com, D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶ 4(b)(iv) by using the domain name <britannnica.com> to hyperlink to a gambling site).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the <remaxrealty.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated: October 23, 2002

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