|
|
Home
| Databases
| WorldLII
| Search
| Feedback
Generic Top Level Domain Name (gTLD) Decisions |
TM Acquisition Corp. v. OnClick Solutions
Claim Number: FA0204000110771
PARTIES
Complainant
is TM Acquisition Corp., Parsippany,
NJ (“Complainant”) represented by Kathryn
S. Geib. Respondent is OnClick Solutions, Shelburne, VT (“Respondent”) represented by Paul Swider.
The
domain name at issue is <c21.biz>,
registered with BB Online UK Limited.
The
undersigned certifies that he has acted independently and impartially and to
the best of his knowledge has no known conflict in
serving as the Panelist in
this proceeding.
G.
Gervaise Davis III, Esq., is the single Panelist.
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 22, 2002; the Forum
received a hard copy of the Complaint on
April 23, 2002.
On
April 23, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of May 13,
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”).
A
timely Response was received and determined to be complete on May 13, 2002.
An
Additional Submission from Complainant was received on May 20, 2002, which was considered by the Panel
in addition to the original Complaint and the Response.
On May 31, 2002,
pursuant to STOP Rule 6(b), the Forum appointed G. Gervaise Davis III, Esq., as the single Panelist.
Transfer
of the domain name from Respondent to Complainant.
A.
Complainant
Complainant,
TM Acquisition Corp., is a Delaware corporation with its principal place of
business in Nevada. It is the owner of
numerous CENTURY 21® Marks registered with the USPTO, including the C21® mark
and the C-21® mark (“the CENTURY
21 marks”), and has licensed the CENTURY 21
Marks to Century 21 Real Estate Corporation (“Century 21”). Century 21 is a Delaware corporation with
its principal place of business in New Jersey.
Century 21 sub-licenses the CENTURY 21 Marks to its franchisees. TM Acquisition Corp. and Century 21 are
subsidiaries of Cendant Corporation, a Delaware corporation with it principal
place of business
in New York. Respondent
is a company doing business as OnClick Solutions in Vermont.
Pursuant
to its license from TM Acquisition Corp., Century 21 has the right to use 90
registered and numerous common law marks in
the United States. Of these, one (1) is for the C21 word mark,
one (1) is for the C-21 word mark and five (5) are for the CENTURY 21 word mark. Century 21 is a franchisor of a system of
business for 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. Century 21 licenses its
franchisees the right to use the CENTURY 21® Marks in their real estate
brokerage offices throughout the United
States and has licensed the CENTURY 21
Marks to Master Franchisors operating in at least 24 other countries. At
present, there are
approximately 4,200 franchised offices in the USA and
another approximately 2,400 franchised offices in other countries.
Century
21 has used the C21® Mark in the USA continuously in connection with the
offering of real estate brokerage services since
May 20, 1982 and has similarly used the CENTURY 21 marks
since April 16, 1972. Over the past 30
years, Century 21 has expended many millions of dollars and significant time,
resources and effort in advertising,
promoting and establishing the goodwill of
the CENTURY 21 Marks in association with its business. As a result, most of the CENTURY 21 Marks
are distinctive and many have become incontestable and are famous. Century 21 owns at least 64 domain names; of
those 17 contain the C21 mark. Century
21 operates its principal web site at <century21.com>.
The services provided by Century 21 and its franchisees
are widely recognized under the C21 mark.
For example, Century 21 operates a web site directed to consumers at
<C21talk.com> which features its services performed under
the C21 Talk
Radio For The Real World mark, for which a service mark application is pending
before the USPTO. Century 21 also
uses the C21 mark in its <c21ls.com> domain name which is used for sales
agent training services; and in its
toll free line for franchisee services,
877-C21-BROKER.
Respondent
is a company which provides software products and wireless technology to its
clients, as shown on its web site at <onclicksolutions.com>. Because Respondent
does not own any mark identical to the C21 mark and is not a licensee of the
mark, prior to filing this STOP Complaint Complainant’s legal counsel
sent an email to Respondent seeking an amicable resolution of its claim
to the
domain name at issue. Mr. Paul Swider,
a representative of Respondent, and Complainant’s counsel corresponded in six
(6) additional emails and one (1) telephone
call. In his initial email to Complainant’s counsel, Respondent stated
that he applied for the domain name for use by one of his clients
who is a
CENTURY 21® franchisee; however, without conferring with his client he
immediately offered to transfer the domain name to
Complainant for “any amount
over $25,000”. Complainant declined the
offer of sale but suggested that the transfer be effected in exchange for the
STOP application fee of $1,150,
since Century 21 had already committed to spend
$1,150 on the filing of a STOP Complaint.
Respondent refused this arrangement and again demanded payment of a sum
in excess of $25,000. Complainant
declined Respondent’s offer of sale and subsequently filed this STOP Complaint.
Complainant
argues that since Respondent admits it has no right to use the name or the
trademark, but merely asserts it was registered
for the use of one of his
clients, he has registered it without any legitimate interest in it; and
because he offered to sell it
to Complainant, without even consulting the
client for whom it was allegedly registered, it was registered in bad faith
under the
STOP rules. Complainant
summarizes its position as, “In sum, (1) the domain name is identical to the
C21® Mark; (2) Respondent has no
legitimate interest in the domain name; and (3) Respondent’s registration of
the domain name is in bad faith
as it was apparently acquired as a financial
investment, and [Respondent] has operated in a fashion to prevent the rightful
owner
from reflecting the mark in a corresponding domain name.”
B.
Respondent
Respondent’s
representative, Paul Swider, a layman, presents its case well under difficult
circumstances and the highly technical
legal constraints of the STOP
Rules. In essence, Respondent argues
(1) that there are a number of other “C21” marks, that it is not clear that Complainant
has the exclusive
right to this mark, but admits that Complainant owns a group of similar trademarks including
“C21”; (2) argues that another entity owns <c21.com> and others own
variants of it as
to which fact Complainant has done nothing to stop these
uses; (3) that while Respondent itself admittedly does not have a trademark
or
legal right to use the mark “C21” that it registered the domain name <c21.biz>
on behalf of a client of its Internet development and software business and
that this client had a legal right to use the domain
as a franchisee of
Complainant; and (4) that this registration was done in good faith, without
expectation of financial gain from
the sale of the domain or for other improper
purposes.
In
response to Complainant’s argument that he sought to sell the domain to
Complainant during the discussions for $25,000, Respondent
argues that his
communications are being misinterpreted and taken out of context in that he
said he did not want to sell the domain,
but only indicate he felt it had a
value of $25,000 if it were to be sold with or without his client’s
consent. The actual text of his various
communications is a part of the record, and it must be said that they are
ambiguous and somewhat inconsistent.
Respondent here makes the common
argument of one in negotiations over a domain name in that if he says anything
about price, it can be misinterpreted
as an offer to sell. In his emails he said his comments about the
value were not to be considered an intention to sell, even though he set a
price at which
it would be sold without consulting his client. Yet it seems
clear that he was making an offer to sell for “any amount over $25,000”
if
Complainant would not give up its quest to recover the domain name.
Somewhat
inconsistently, Swider states in his brief that his company has been offering
wireless networking services to Century 21
franchisees since 1993, and that
while he intended to transfer the domain to one of his clients “We also wanted
to use the name to
promote our services as well.” Later he states “If Cendant will not let the Century 21
franchisee use the name, we clearly have an alternative use. If we use the name to promote our wireless
services to Century 21 franchisees it is legitimate as we are in a completely
different
business and we may even get approval from the President of
Cendant.” This suggests that Respondent
had multiple motives in registering the domain name. He seems to be arguing that his business had made preparations
“for years” to use the name in his business.
He does not, however, really identify how it would be used or how he
planned to obtain approval from the trademark owner to do so.
Respondent
summarizes its position as “(1) the domain name is identical to the C21 mark;
(2) Respondent has multiple legitimate interests
in the domain name; and (3)
Respondent’s registration of the domain name is in the best interest of his
client Century 21 Jack Associates
as well as his personal investment in
marketing wireless services to Century 21 franchisee offices.”
C.
Additional Submissions
Complainant
submitted a Supplemental Brief in response to statements made in the Response,
which was considered by the Panel. The
Supplement consists largely of a rebuttal of the Respondent’s arguments about
the nature of the communications between the parties,
and includes as further
exhibits what is alleged to be the standard Century 21 Franchise agreement and
some Guidelines for the Use
of the Century 21 Trademarks both on and off the
Internet. These Guidelines do not
unequivocally prohibit the use of the C21 mark, but clearly indicate some
limitations on how it can be used.
A. Complainant has established that it
holds a number of registered trademarks on the mark “C21” as well as the full
name “Century
21” of which “C21” is an abbreviation, which marks were
registered before Respondent registered the domain name at issue.
B. The domain name at issue <c21.biz>
is identical to the Complainant’s registered marks for “C21” if the extension
“.biz” is disregarded.
C. The Respondent, itself, does not own
or have any legitimate interest in the mark “C21” or the domain name <c21.biz>,
although it claims a customer of Respondent is licensed to use such a mark, as
a licensee of the Century 21 Real Estate Group, which
is disputed by
Complainant. Respondent also admits
that it intended to use the domain itself if the client did not want to or
could not use it.
D. The Respondent registered the
domain name at issue as a speculative venture, either to sell the domain or to
make other use of
it which would deprive the Complainant of the right to use
it. The domain has not been used to
date, so that is not a consideration.
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.”
Paragraph
4(a) of the STOP Policy requires that the 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
the Complainant has rights;
and
(2) the 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 the Complainant
asserts rights.
Although
Respondent makes some arguments about other users of the C21 mark, it is beyond
dispute that Complainant has valid rights
in the mark “C21” in relationship to
its real estate franchising operation.
It is also clear that the domain name <c21.biz> is
identical to the mark because for all domain name cases the deciding Panels have
ignored the gTLD extension in determining this
question. See Princeton
Linear Assoc., Inc. v. Copland o/b/o LAN Solutions Inc., FA 102811 (Nat.
Arb. Forum Feb. 8, 2001) (finding that the “.biz” gTLD in a disputed domain
name is not a factor, and hence to be
ignored, when determining whether the
domain name is identical to a mark in which the Complainant has asserted
rights).
Respondent admits that it has no rights
or legitimate interests in the domain name, itself, but argues it registered
the name for
use by its client CENTURY 21 Jack Associates, an admitted
franchisee of Complainant. Complainant
contends that even if this were a basis for registering the domain, the client
of Respondent could not legally use the
name in this form, since it must
further identify itself as “C21JackAssociates.biz” under the franchise
agreement and its Internet
Guidelines for franchisees. There is substantial argument by both
parties about whether the domain, as registered, could be used, and in its
supplemental submission
Complainant included a copy of the standard Century 21
franchise agreement and some Internet Guidelines relating to the use of the
various trademarks. The Panel declines
to give this argument, either way, any consideration since it is unnecessary to
determine this issue, given other
facts here.
The Panel is sympathetic to the concept
that one acting as an agent for another with rights to the name should have
some consideration,
since this registration could have been done under the
instructions of the principal with such rights. This Panel does not believe that registration by an agent for one
with legitimate interests should, per se, be prohibited under the
STOP Rules. Here, however, there are several factors
that seem to mitigate strongly against Respondent’s argument.
First, there is no evidence submitted to
the Panel (other than Respondent’s bald assertion that it was done for the
client) that the
client was ever consulted before this registration was
accomplished. For example, there are no letters or written instructions to
Respondent from its client asking that this name be registered for its
use. It is up to the parties to provide
the Panel with documentary evidence of facts alleged. Much like UDRP Panels, STOP Panels have found that a Respondent’s
“unsupported, self-serving allegations alone are insufficient to
establish that
[the] Respondent has rights or legitimate interests in respect to the domain
name at issue.” Twentieth Century
Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb. Forum Feb. 27, 2002)
(finding the Respondent’s assertion that she registered the domain name
<foxstudios.biz>
in order to get a website address for her planned dance
studios, without evidentiary support, was insufficient to establish that
she
had rights or interests in respect to the domain name at issue).
Second, Respondent acknowledges that it
had multiple reasons for registering the domain, one of which was to use it
itself, even though
it has never done business under that name and it would
have to obtain permission to use it for itself, if its client chose not to
accept a transfer of it and to use it.
Third, it appears that, during the
interchange of emails and phone calls, Respondent’s representative Paul Swider
determined without consulting his client that the name had a value of
$25,000 if sold, and indicated that he would sell it to Complainant for that
amount without consultation
with the client.
This is not the normal action of an agent, acting only on authority of
his principal. Rather it suggests to
the Panel that this registration was, in fact, a speculative registration by
Respondent who hoped to convince
the client to use it, and if he could not,
other uses would be made of it or it would be sold. The STOP Rules do not permit such speculative registration or
use.
The Panel is further influenced on this
issue by the decisions of other Panels that have held that only the
existing rights or interests of the named Respondent may be used to satisfy the
requirements of STOP Policy ¶ 4(a)(ii).
In other words, an unnamed third party cannot assert its
rights/interests on behalf of the Respondent in order to prevent the transfer
of a domain name to the Complainant. See
Seagate Tech. LLC v. TC Servs., FA 102782 (Nat. Arb. Forum Feb. 7, 2002)
(finding that a Respondent cannot assert the rights of a third party to
demonstrate rights
or legitimate interests pursuant to STOP Policy ¶ 4(a)(ii)
when that third party has not formally intervened in the proceeding);
but
c.f. K2r Produkte AG v. Trigano,
D2000-0622 (WIPO Aug. 23, 2000) (finding that the Respondent had rights and
legitimate interests in the domain name <k2r.com>
under UDRP ¶ 4(a)(ii)
where he registered the domain name for a website in connection with his mother’s
store, “KIRK ET ROSIE RICH”).
On balance, this Panel is not convinced
that Respondent has established its rights to the domain from the mere
allegation that it
was being done for a client, without far more evidence than
is before the Panel. The Panel
concludes that Respondent has failed to establish its rights to use the domain
name.
The necessity of finding bad faith is
perhaps the most difficult aspect of this case. It cannot be said, in the opinion of this Panel, that registering a
domain name for a client with the hope of using it oneself if the
first
intended use does not work out is bad faith registration, in and of
itself. It requires something more.
The Panel believes, however, that the
facts here equal bad faith registration because of a combination of the fact
(1) that Respondent
clearly had made a determination to sell the domain name to
Complainant if he could receive payment of at least $25,000 (which he
actually
communicated to counsel for Complainant), and (2) that he admits his own plans
for possible use of the domain <c21.biz> for his business even
though he has no present right to use the mark incorporated in the domain
name. The problem with the latter set
of facts is that such use would likely cause considerable confusion on the
Internet because he was
dealing with exactly the same group of real estate
businesses that the Complainant works with.
Quite clearly the only reason the name was valuable to Respondent, in
his plan of operation, is because of its association with Complainant. This fact alone has been held to indicate a
bad faith use or proposed use under the ICANN Rules. See, United States of
America Dep. of the Navy NAVSEA v. NAVYWEB, FA 105977 (Nat. Arb. Forum May
21, 2002) (Names ordered transferred because proposed use was based on
relationship of domain names
to the name of Navy agency, which constituted bad
faith registration.)
Other STOP Panels have previously held
that, even when the domain name has not been used, bad faith under STOP Policy
¶ 4(b)(iv) can
be demonstrated from the confusion that will inevitably arise
when the Respondent finally uses the name.
See Fluor Corp. v. Song, FA 102757 (Nat. Arb. Forum Jan. 31,
2002) (finding that, where the Respondent’s <fluor.biz> domain name was
identical to the
Complainant’s FLUOR mark, Internet users would likely believe
an affiliation between the Respondent and Complainant); see also, Pillsbury
Co. v. Prebaked Scandinavia ab, FA 102970 (Nat. Arb. Forum Jan. 31, 2002)
(finding registration of a domain name identical to Complainant’s mark to be in
bad faith
under STOP Policy ¶ 4(b)(iv) when use of the domain name would likely
cause confusion as to the affiliation between Respondent and
Complainant); but,
c.f. Twentieth Century Fox Film Corp. v. Benstein, FA 102962 (Nat. Arb.
Forum Feb. 27, 2002) (finding no evidence of bad faith registration or use,
despite Complainant’s claim that
Respondent’s use of the <foxstudios.biz>
domain name would create “initial interest confusion” for Internet users as
well as
result in dilution of Complainant’s famous FOX marks); see also,
STMicroelectronics, NV v. Tower Entm’t GdbR, FA 102731 (Nat. Arb. Forum
Feb. 11, 2002) (finding no bad faith despite Complainant’s assertion that
“Internet users will inherently
expect Complainant’s website to be hosted at
the disputed domain name”).
The Panel therefore concludes that the
proposed improper use of the domain by the Respondent for his own business,
combined with the
indirect offer to sell it to the trademark owner for far more
than the actual registration cost should be considered the equivalent
of bad
faith registration. Actual use of the
domain is not required under the STOP Rules, although it is under the regular
UDRP Rules. See, STOP Rule 4(a)(3) which
is in the disjunctive, relating to “registration or use.”
DECISION
Accordingly, the Panel orders that the
domain name <c21.biz> be transferred to Complainant. Furthermore, pursuant to the STOP Policy,
subsequent challenges against this domain name shall not be permitted
hereafter.
G. Gervaise Davis III, Esq., Panelist
Dated: June 14, 2002
WorldLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/874.html