DECISION

TM Acquisition Corp. v. Sign Guards a/k/a William Moore

Claim Number: FA0211000132439

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib.  Respondent is Sign Guards a/k/a William Moore, Wixom, MO (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com>, registered with Register.com.

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. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 8, 2002; the Forum received a hard copy of the Complaint on November 11, 2002.

On November 5, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the domain names <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.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 November 21, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 11, 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@century21alabama.com, postmaster@century21alaska.com, postmaster@century21arkansas.com, postmaster@century21california.com, postmaster@century21connecticut.com, postmaster@century21idaho.com, postmaster@century21iowa.com, postmaster@century21kansas.com, postmaster@century21kentucky.com, postmaster@century21louisiana.com, postmaster@century21maryland.com, postmaster@century21michigan.com, postmaster@century21minnesota.com, postmaster@century21mississippi.com, postmaster@century21missouri.com, postmaster@century21montana.com, postmaster@century21nebraska.com, postmaster@century21nevada.com, postmaster@century21newmexico.com, postmaster@century21northcarolina.com, postmaster@century21northdakota.com, postmaster@century21oklahoma.com, postmaster@century21oregon.com, postmaster@century21pennsylvania.com, postmaster@century21rhodeisland.com, postmaster@century21southcarolina.com, postmaster@century21tennessee.com, postmaster@century21texas.com, postmaster@century21virginia.com, postmaster@century21westvirginia.com, postmaster@century21wyoming.com and postmaster@century21southdakota.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 December 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following assertions:

Respondent’s <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names are confusingly similar to Complainant’s registered CENTURY 21 mark.

Respondent does not have any rights or legitimate interests in the disputed domain names.

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

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

FINDINGS

Complainant, TM Acquisition Corp., holds numerous trademark registrations for variations on the CENTURY 21 mark, including five for the CENTURY 21 word mark (e.g. U.S. Reg. No. 1,063,488, registered on April 12, 1977). Complainant licenses these marks to its licensee, Century 21 Real Estate Corporation, who in turn operates a franchise buisness for the promotion and assistance of independently owned and operated real estate brokerage offices. Currently, there are approximately 4,200 franchised offices in the United States and approximately 2,400 franchised offices in other countries, all licensed to operate under the CENTURY 21 mark.

Respondent, Sign Guards a/k/a William Moore, is not licensed or authorized to use Complainant’s CENTURY 21 mark for any purpose. Respondent registered the <century21alabama.com>, <century21arkansas.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names on April 5, 2000 (the “April 2000 Domain Names”). Respondent has made no use of these domain names since their registration. Respondent registered the <century21oregon.com> domain name on May 19, 2002, and has failed to post any original content on this website as well.

Respondent registered the <century21alaska.com>, <century21california.com>, <century21michigan.com>, <century21montana.com>, <century21tennessee.com>, <century21texas.com> and <century21virginia.com> domain names on July 9, 2002 (the “July 2002 Domain Names”). These domain names resolve to a web portal page with links to various other websites, including websites with subject matter pertaining to “real estate” and “home loans.”

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 CENTURY 21 mark through proof of registration on the Principal Register of the United States Patent and Trademark Office.

All of the disputed domain names are confusingly similar to Complainant’s CENTURY 21 mark. For each domain name, Respondent has appropriated Complainant’s mark in its entirety, and merely added the name of one of the fifty United States. The dominant feature of each of the disputed domain names is Complainant’s mark, not the addition of a state name; each is therefore found to be confusingly similar to Complainant’s mark. See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark).

Accordingly, the Panel finds that the disputed domain names are all confusingly similar to Complainant’s registered CENTURY 21 mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

In lieu of a response, Complainant can meet is burden of showing that Respondent has no rights or legitimate interests in the disputed domain names through a showing that the elements of Policy ¶ 4(c)(i)-(iii) are inapplicable to Respondent. At that point, the burden will shift to Respondent to rebut Complainant’s allegations, and without a response to rely upon, the result will be a finding for Complainant. 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).

Through its lack of response to the Complaint, Respondent not only fails to meet its burden, but has also made a tacit assertion that it has no rights or legitimate interests in the disputed domain names. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); 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).

Respondent has not used either the April 2000 Domain Names or the <century21oregon.com> domain name since their registration. By failing to utilize these domain names, Respondent is not making a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question); see also Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”). Respondent has also failed to use the <century21oregon.com> domain name since its registration over six months ago; while the time frame involved is substantially shorter, this domain name falls under the same analysis above.

Respondent has used the July 2002 Domain Names, but has used them in a manner that does not reflect rights or legitimate interests in the domain names. Respondent appropriated Complainant’s CENTURY 21 mark and used it to redirect Internet users to a website that hosts links to websites offering products in competition with Complainant. Respondent’s diversionary uses alone would deny it the protections of Policy ¶¶ 4(c)(i) and (iii); Respondent’s diversion to websites of Complainant’s competitors only reinforces this conclusion. See 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 Complainant's site to a competing website); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).

Respondent’s WHOIS information reveals that it is known by the name “Sign Guards” or “William Moore.” Complainant’s unconsted allegations attest to the fact that Respondent is not “commonly known by” any derivative of the CENTURY 21 mark, or that it is commonly known by the name of any of the 50 United States in conjunction with that mark. The Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. See Vestel Elektronik Sanayi ve Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that “merely registering the domain name is not sufficient to establish rights or legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

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

Registration and Use in Bad Faith

Respondent registered 24 of the infringing domain names on April 5, 2000. On May 19, 2002, Respondent registered an additional infringing domain name, and shortly after this registered an additional 7 infringing domain names. Each registration incorporated in its entirety Complainant’s CENTURY 21 mark. These registrations of infringing domain names prevent Complainant from reflecting its mark on the Internet, and the fact that Respondent performed these registrations 32 times evidences a pattern of such conduct permitting the Panel to conclude that Respondent registered and used each of the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent violated ¶ 4(b)(ii), as revealed by the number of other domain name registrations incorporating others’ trademarks and the fact that the domain names in question do not link to any online presence or website); see also Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one domain name that infringes on another’s registered mark(s) supports the inference that Respondent knew of Complainant’s marks upon registering the domain names; and the registration of multiple domain names that infringe on Complainant’s trademark(s) is evidence of a pattern of conduct).

Respondent’s failure to develop the April 2000 Domain Names, in light of the fact that each incorporates Complainant’s CENTURY 21 mark, permits the Panel to conclude that those registrations were done with actual knowledge of Complainant’s mark. As Respondent passively held these domain names for over two years, these registrations coupled with inactivity equates with bad faith use and registration. See Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).

The Panel infers from Respondent’s use of the May 2002 Domain Names that it receives a commission for each redirected Internet user it attracts online, an inference that Respondent has offered no evidence rebutting. As each of these domain names are confusingly similar to Complainant’s mark, this attraction for commercial gain equates to bad faith use and registration under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); 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).

Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith, and Policy ¶ 4(a)(iii) is 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 <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated: December 31, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/1744.html