START-UP TRADEMARK OPPOSITION POLICY

DECISION

TM Acquisition Corp. v. None

Claim Number: FA0204000109709

PARTIES

Complainant is TM Acquisition Corp., Parsippany, NJ (“Complainant”) represented by Kathryn S. Geib. Respondent is None, Monterey, CA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <century21.biz>, registered with NameScout.com.

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 has standing to file a Start-up Trademark Opposition Policy (“STOP”) Complaint, as it timely filed the required Intellectual Property (IP) Claim Form with the Registry Operator, NeuLevel.  As an IP Claimant, Complainant timely noted its intent to file a STOP Complaint against Respondent with the Registry Operator, NeuLevel and with the National Arbitration Forum (the “Forum”).

Complainant submitted a Complaint to the Forum electronically on April 15, 2002; the Forum received a hard copy of the Complaint on April 17, 2002.

On April 17, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 7, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with paragraph 2(a) of the Rules for the Start-up Trademark Opposition Policy (the “STOP Rules”).

Respondent sent a brief e-mail following the Commencement Notification, but failed to submit a Response as required by STOP Rule 5.

Having received no Formal 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 May 23, 2002, pursuant to STOP Rule 6(b), the Forum appointed Hon. Carolyn Marks Johnson as the single 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 STOP Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the STOP Policy, STOP Rules, the Forum’s STOP Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Transfer of the domain name from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant makes the following allegations in this proceeding:

1. The <century21.biz> domain name is identical to Complainant’s CENTURY 21 mark.

2. Respondent has no rights or legitimate interests in the <century21.biz> domain name.

3. Respondent registered the <century21.biz> domain name in bad faith.

B. Respondent did not submit a Formal Response in this proceeding.

FINDINGS

Complainant is the owner of numerous CENTURY 21 marks registered with the U.S. Patent and Trademark Office and has licensed the CENTURY 21 marks to Century 21 Real Estate Corporation (U.S. Patent and Trademark Nos. 1,063,488, 1,085,039, and 1,304,095, among others). Pursuant to its license from Complainant, Century 21 Real Estate Corp. has the right to use ninety registered and numerous common law marks in the United States. An additional thirty-two registrations contain the CENTURY 21 mark as an element of the mark and/or design. Also, Century 21 Real Estate Corp. is the owner of trademark registrations for numerous CENTURY 21 marks in 101 additional countries.

Century 21 Real Estate Corp. has used the CENTURY 21 marks in the U.S. continuously in connection with the offering of real estate brokerage services since 1972. Over the past thirty years, Century 21 Real Estate has expended many millions of dollars and significant time, resources and effort in advertising, promoting and establishing the goodwill of the CENTURY 21 marks affiliated with its business. As a result, the CENTURY 21 mark is distinctive. Century 21 Real Estate Corp. operates its primary website at <century21.com>.

Respondent registered the disputed domain name on March 27, 2002. Respondent is not a franchisee or licensee of the CENTURY 21 mark and Respondent is not authorized to use the CENTURY 21 mark in any manner.  Respondent did not have authority to apply for the domain name in question. Complainant’s investigation has not found any business connection between Respondent and Complainant and the registration of the contested domain name.

DISCUSSION

Paragraph 15(a) of the STOP 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 STOP Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the STOP Rules.

Paragraph 4(a) of the STOP Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be transferred:

(1) the domain name is identical 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 or is being used in bad faith.

Due to the common authority of the ICANN policy governing both the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and these STOP proceedings, the Panel will exercise its discretion to rely on relevant UDRP precedent where applicable.

Under the STOP proceedings, a STOP Complaint may only be filed when the domain name in dispute is identical to a trademark or service mark for which a Complainant has registered an Intellectual Property (IP) claim form.  Therefore, every STOP proceeding necessarily involves a disputed domain name that is identical to a trademark or service mark in which a Complainant asserts rights.  The existence of the “.biz” generic top-level domain (gTLD) in the disputed domain name is not a factor for purposes of determining that a disputed domain name is not identical to the mark in which Complainant asserts rights.

Complainant’s Rights in the Mark

Complainant has established that it has rights in the CENTURY 21 mark through registration in the United States and throughout the world. Respondent’s <century21.biz> domain name is identical to Complainant’s mark.

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response and therefore it is presumed that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). Additionally, when Respondent fails to submit a Response the Panel is permitted to make all inferences in favor of Complainant. See See 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”).

Complainant has established that it has rights in the disputed domain name because it is the owner of ninety registered trademarks in the United States incorporating the mark CENTURY 21. Respondent has not come forward to offer evidence that it has rights in the CENTURY 21 mark anywhere in the world. Therefore Respondent has no rights or legitimate interests in the <century21.biz> domain name pursuant to STOP Policy ¶ 4(c)(i).

The Panel is permitted to infer that Respondent’s planned use of the domain name that is identical to Complainant’s mark would be to divert Internet users interested in Complainant to Respondent’s website. Respondent’s registration of an infringing domain name in order to opportunistically trade on the goodwill of Complainant’s mark does not constitute a bona fide offering of goods or services under STOP Policy ¶ 4(c)(ii). See William L. Lyon & Assocs., Inc. v. Yata, FA 103043 (Nat. Arb. Forum March 21, 2002)  (finding Respondent’s “intent to trade [on] the goodwill of Complainant’s mark, by attracting Internet users confused as to the likely affiliation between Complainant and Respondent’s website” indicated Respondent had no rights or legitimate interests pursuant to STOP Policy ¶ 4(c)(ii)); see also Credit Suisse Group o/b/o Winterthur Ins. Co. v. Pal-Ex Kft, FA 102971 (Nat. Arb. Forum Feb. 25, 2002) (“The use of another's trademark to attract users to Respondent's domain is not considered to be a bona fide offering of goods or services pursuant to STOP Policy ¶ 4(c)(ii)”).

There is no evidence on the record and Respondent has not come forward to establish that Respondent is commonly known by the <century21.biz> domain name pursuant to STOP Policy ¶ 4(c)(iii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

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

Registration or Use in Bad Faith

Based on the famous and distinctive nature of Complainant’s CENTURY 21 mark, Respondent is thought to have been on notice as to the existence of Complainant’s mark at the time Respondent registered the infringing <century21.biz> domain name. Registration of a domain name incorporating the entirety of another’s mark with knowledge that the domain name is infringing is evidence of bad faith. See Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainant’s 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 constitutes bad faith); see also Gene Logic Inc. v. Bock, FA 103042 (Nat. Arb. Forum Mar. 4, 2002) (finding that the unique nature of the STOP Policy and the notice given to Respondent regarding existing IP Claims identical to its chosen domain name precluded good faith registration of <genelogic.biz> when Respondent registered it with “full knowledge that his intended business use of this domain name was in direct conflict with a registered trademark of a known competitor in exactly the same field of business”).

The information supplied by Complainant supports the inference that Respondent registered the disputed domain name in order to prevent Complainant from using its CENTURY 21 mark in a corresponding domain name. This behavior is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(ii). See Toyota Jidosha Kabushiki Kaisha v. S&S Enter. Ltd., D2000-0802 (WIPO Sept. 9, 2000) (finding that “Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name”); see also Peachtree Software v. Scarponi, FA 102781 (Nat. Arb. Forum Jan. 23, 2002) (finding bad faith under STOP Policy ¶ 4(b)(ii), noting that it was reasonable to conclude Respondent registered <peachtree.biz> with the intent to prevent Complainant from reflecting its PEACHTREE mark in a corresponding domain name, given Respondent's knowledge of Complainant's mark and Respondent's lack of rights or interests in the mark).

Furthermore, the <century21.biz> domain name applied for by Respondent is identical to Complainant’s CENTURY 21 mark resulting in the likelihood that Internet users will believe that there is an affiliation between Respondent and Complainant; Respondent had no authorization to make use of Complainant’s mark. Registration of the <century21.biz> domain name despite its being identical is evidence of bad faith pursuant to STOP Policy ¶ 4(b)(iv) since Respondent is attempting to capture Internet users seeking Complainant’s site based on the goodwill associated with its famous mark. See Kraft Foods (Norway) v. Wide, D2000-0911 (WIPO Sept. 23, 2000) (finding that the fact “that the Respondent chose to register a well-known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”); see also Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that Respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with Complainant, and thus is the equivalent to bad faith use).

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

DECISION

Having established all three elements required under the Start-up Trademark Opposition Policy, the Panel concludes that relief shall be hereby GRANTED.

Accordingly, it is Ordered that the domain name <century21.biz> be TRANSFERRED from Respondent to Complainant and that subsequent challenges under the STOP Policy against this domain name SHALL NOT be permitted.

Hon. Carolyn Marks Johnson, Panelist

Dated:  June 4, 2002

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