DECISION

Residential Equity, LLC v. Amjad Kausar

Claim Number: FA0209000125266

PARTIES

Complainant is Residential Equity, LLC, Parsippany, NJ, USA (“Complainant”) represented by Kathryn S. Geib. Respondent is Amjad Kausar, Karachi, PAKISTAN (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwcoldwellbanker.com>, registered with eNom, Inc.

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 September 18, 2002; the Forum received a hard copy of the Complaint on September 19, 2002.

On September 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain name <wwwcoldwellbanker.com> is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. verified that Respondent is bound by the eNom, 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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@wwwcoldwellbanker.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 November 1, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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’s Submission makes the following assertions:

The domain name registered by Respondent, <wwwcoldwellbanker.com>, is confusingly similar to Complainant’s registered COLDWELL BANKER family of marks.  Respondent has no rights or legitimate interests in the <wwwcoldwellbanker.com> domain name.   Respondent registered and used the <wwwcoldwellbanker.com> domain name in bad faith.

 

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

FINDINGS

Complainant, Residential Equity, LLC, is the holder of the trademark COLDWELL BANKER (U.S. Reg. No. 1,154,155), registered on May 12, 1981 on the Principal Register of the United States Patent and Trademark Office (“USPTO”) and used in commerce since 1974. Complainant has also registered many variations of this mark. Complainant’s family of marks has also been registered in numerous nations worldwide.

Complainant is a franchiser of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices and uses its family of marks in conjunction with this service. Complainant has operated its principal website at <coldwellbanker.com> since May 2, 1995.

From September 14, 2001, through the present, Respondent’s domain name has redirected Internet users to cites such as <gotoo.com> (offering “free searches of forclosures” and providing links to <forsalebyowner.com> and <mortgages-loan.net>) and <ownbox.com> (offering both real estate foreclosure services and listings). Respondent is not licensed or otherwise authorized to use Complainant’s registered COLDWELL BANKER mark for any purpose.

Sometime on or before September 2001, R.S. Potdar registered the <wwwcoldwellbanker.com> domain name, linking the domain name to various other websites. Complainant’s attempt to notify Potdar of his infringement was not replied to. Subsequently, it was discovered that Potdar had transferred the domain name to Respondent, Amjad Kausar. When Complainant contacted Respondent to notify it of Complainant’s rights in the COLDWELL BANKER mark, Respondent replied with a sale offer of $500 for the domain name registration. Complainant in turn replied that it would never purchase the disputed domain name registration but would be willing to pay any transfer fees associated with a voluntary transfer of Respondent’s rights in the domain name. Respondent ceased communication after Complainant’s offer to pay for transfer. Complainant has given uncontested evidence indicating that Potdar and Respondent are either the same person or acting in concert with one another. For the purposes of this dispute, the Panel has decided to treat both Potdar and Respondent as the same identity.

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 may draw such inferences as it considers appropriate pursuant to paragraph 14(b) 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; 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 to and/or Confusingly Similar

Complainant established in this proceeding that it has rights in the COLDWELL BANKER mark through registration on the Principal Register of the USPTO as well as by continuous and widespread use of the mark.

The domain name registered by Respondent, <wwwcoldwellbanker.com>, is confusingly similar to Complainant’s COLDWELL BANKER mark. The only differences between the disputed domain name and Complainant’s mark are removal of the space between COLDWELL and BANKER, the addition of “.com” after the mark, and the prefix “www”. The deletion of a space and the addition of a “.com” from a registered mark do not prevent a domain name from being found to be confusingly similar to a mark under the Policy. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Furthermore, Respondent’s addition of “www” before Complainant’s mark is not enough of a variation to prevent a finding of confusing similarity by the Panel. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is confusingly similar to Complainant’s registered trademark BANK OF AMERICA because it “takes advantage of a typing error (eliminating the period between the www and the domain name) that users commonly make when searching on the Internet”).

Accordingly, the Panel finds that the <wwwcoldwellbanker.com> domain name is confusingly similar to Complainant’s registered COLDWELL BANKER mark under Policy ¶ 4(a)(i).

Rights to or Legitimate Interests

It is neither a bona fide offering of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is confusingly similar to an established mark attempts to sell the domain name registration to Complainant. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where Respondent registered the domain name with the intention of selling it). From Respondent’s offer to sell the disputed domain name to Complainant for $500. while declining it’s offer to pay associated transfer fees for the domain name, the Panel infers that Respondent is not using the domain name in connection with a bona fide offering of goods or services or making a noncommercial or fair use of the domain name.

Likewise, registering a confusingly similar domain name and then linking it to the website of a competitor of the holder of the registered mark is not a fair use 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 Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to offer any evidence permits the inference that the use of Complainant’s mark in connection with Respondent’s website is misleading and Respondent is intentionally diverting business from Complainant). Respondent’s activity emulates the circumstances in the aforementioned citations because Respondent registered <wwwcoldwellbanker.com> and then redirected it to websites such as <gotoo.com> and <ownbox.com>, sites that compete with Complainant’s real estate services.

Together, these two examples make for a convincing showing by Complainant that Respondent has no rights or legitimate interests in the disputed domain name. See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name registration for sale and the evidence suggests that anyone approaching this domain name through the world wide web would be "misleadingly" diverted to other sites).

Respondent also is not commonly known by the name WWWCOLDWELLBANKER or <wwwcoldwellbanker.com>. Furthermore, Complainant has not given Respondent permission or consent to use its COLDWELL BANKER mark, and Respondent’s registration of the disputed domain name occurred years after Complainant initially registered its mark and began using it in commerce. Thus, Complainant has established that Respondent has no rights or legitimate interests in the domain name pursuant to Policy ¶¶ 4(c)(i-iii). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; and (3) Respondent is not commonly known by the domain name in question).

Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent registered and used the disputed domain name in bad faith. Policy ¶ 4(b)(iv) states that in circumstances indicating that the disputed domain name was registered to “intentionally attempt to attract, for commercial gain, Internet users…by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of your website or location” bad faith use and registration is evidenced. 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 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). Respondent is using the disputed domain name to redirect Internet users to websites offering services in competition with Complainant. Internet users attempting to reach Complainant’s <coldwellbanker.com> domain name could be confused as to the sponsorship or affiliation of Respondent’s site with Complainant’s business.

The practice of “typosquatting” has also been recognized as a bad faith use of a domain name under the Policy.  See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000) (awarding <wwwalavista.com>, among other misspellings of altavista.com, to Complainant); Dow Jones & Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names <wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Respondent’s registration of <wwwcoldwellbanker.com> is an example of this type of activity, as Respondent simply added a “www” before Complainant’s registered mark. This “typosquatting” is further evidence of bad faith use by Respondent.

Respondent submitted no Response to the Complaint.  The Panel concludes from the facts presented by Complainant that Respondent registered a confusingly similar domain name in order to gain revenue from diverting Internet users to websites in competition with Complaint’s business. See 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); see also 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).

Accordingly, the Panel finds that Respondent both registered and used the disputed domain name in bad faith, and 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 <wwwcoldwellbanker.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 15, 2002

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