DECISION

TM Acquisition Corp. v. Peter Carrington

Claim Number: FA0209000124850

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib.  Respondent is Peter Carrington, Fort Lauderdale, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <centurey21.com>, registered with Internet Domain Registry Ltd.

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 September 9, 2002; the Forum received a hard copy of the Complaint on September 10, 2002.

On September 13, 2002, Internet Domain Registry Ltd. confirmed by e-mail to the Forum that the domain name <centurey21.com> is registered with Internet Domain Registry Ltd. and that Respondent is the current registrant of the name.  Internet Domain Registry Ltd. has verified that Respondent is bound by the Internet Domain Registry Ltd. 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 September 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 3, 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@centurey21.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 23, 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

The  <centurey21.com> domain name is confusingly similar to Complainant's CENTURY 21 mark.

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

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant uses the CENTURY 21 mark in relation to real estate brokerage services.  Complainant holds five trademark registrations with the United States Patent and Trademark Office including Registration Numbers 1,063,488; 1,085,039; 1,304,095; 1,429,531; and 2,178,970.  Complainant is also the owner of trademarks in 101 different countries.  Complainant has used the CENTURY 21 mark continuously since 1972.

Complainant is a franchiser of a system of business of 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.  Complainant has licensed its marks to Master Franchisors operating in 26 other countries.  Complainant has expended many millions of dollars and has put much effort into advertising, promoting and establishing the goodwill of the CENTURY 21 marks in association with its business.  As a result, Complainant’s CENTURY 21 mark has become distinctive and famous. 

Complainant also operates its principal website and holds the registration for the <century21.com> domain name.

Respondent registered the disputed domain name on March 28, 2002.  Respondent has used the disputed domain name in order to divert Internet traffic to <amaturevideos.nl>.  At the time of the Complaint, Respondent was using <centurey21.com> in order to divert Internet users to <hanky-panky-college.com>.

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 that it has rights in the CENTURY 21 mark through continuous use and registration with the United States Patent and Trademark Office. 

Respondent’s <centurey21.com> domain name is confusingly similar to Complainant’s mark because it merely misspells the word “century” by adding an “e” between the last two letters.  Respondent is therefore taking advantage a common spelling error by Internet users when they are attempting to reach Complainant’s website by typing CENTURY 21 into the browser.  Complainant’s mark is the dominant element of the domain name and therefore Respondent’s <centurey21.com> domain name is confusingly similar to Complainant’s mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant’s STATE FARM mark).

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

Rights or Legitimate Interests

Respondent has failed to respond, therefore it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,  Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Furthermore, because Respondent has not submitted a Response, it is appropriate for the Panel to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent is using a domain name that is confusingly similar to Complainant’s mark in order to divert Internet users to a pornographic website.  Internet users that accidentally misspell Complainant’s mark are unwillingly transported to <hanky-panky-college.com>.  This type of diversionary use of the disputed domain name is not considered to be in connection with a  bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use); see also Nat’l Football League Prop., Inc. v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that Respondent had no rights or legitimate interests in the domain names <chargergirls.com> and <chargergirls.net> where Respondent linked these domain names to its pornographic website).

Furthermore, there is no evidence on record that proves that Respondent is commonly known by any other name than Peter Carrington.  Respondent has not come forward with any submissions that establish that it is commonly known as CENTUREY 21 or <centurey21.com>, therefore Respondent has failed to establish that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use).

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

Registration and Use in Bad Faith

Based on the well-known nature of Complainant’s CENTURY 21 mark, and the fact that Respondent registered a misspelling of this mark, it can be inferred that Respondent had knowledge of Complainant’s rights in the CENTURY 21 mark when it registered the disputed domain name.  Registration of a domain name that is confusingly similar to Complainant’s mark, despite knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith); see also Victoria's Secret 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 constituted bad faith).

Respondent is using the <centurey21.com> domain name in order to divert Internet users to a pornographic website.  It can be inferred, based on Respondent’s tactic of utilizing a misspelling of a well-known mark that Respondent receives a monetary benefit from each Internet user diverted to the pornographic website.  Respondent’s use of a confusingly similar domain name in order to commercially benefit is evidence of bad faith use pursuant to Policy ¶ 4(b)(iv).  See State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website); see also 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).

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

DECISION

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

Accordingly, it is Ordered that the domain name <centurey21.com> be transferred from Respondent to Complainant.

James A. Crary, Panelist

Dated: November 4, 2002

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