Generic Top Level Domain Name (gTLD) Decisions

DECISION

National Association of Realtors v. Renown

Claim Number:  FA0212000137212

PARTIES

Complainant is National Association of Realtors, Chicago, IL, USA (“Complainant”) represented by Georges Nahitchevansky, of Fross Zelnick Lehrman & Zissu P.C.. Respondent is Renown, Colombo-13, SRI LANKA  (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <realtor.biz>, registered with Onlinenic, Inc. d/b/a China-Channel.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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 18, 2002; the Forum received a hard copy of the Complaint on December 23, 2002.

On December 20, 2002, Onlinenic, Inc. d/b/a China-Channel.com confirmed by e-mail to the Forum that the domain name <realtor.biz> is registered with Onlinenic, Inc. d/b/a China-Channel.com and that Respondent is the current registrant of the name. Onlinenic, Inc. d/b/a China-Channel.com has verified that Respondent is bound by the Onlinenic, Inc. d/b/a China-Channel.com 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 December 27, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 16, 2003 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@realtor.biz 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 January 28, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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 makes the following assertions:

1.   Respondent’s <realtor.biz> domain name is confusingly similar to Complainant’s REALTOR mark.

2.   Respondent does not have any rights or legitimate interests in the <realtor.biz> domain name.

3.   Respondent registered and used the <realtor.biz> domain name in bad faith.

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

FINDINGS

Complainant, the National Association of Realtors (“NAR”), coined the term REALTOR in 1916 for the purpose of identifying and distinguishing a real estate professional who is a member of NAR and subscribes to NAR’s code of ethics.  Complainant has continuously used the REALTOR mark to identify members of NAR and to distinguish them from non-members.  Complainant is the world’s largest professional association.  Its membership is approximately 800,000 members who engage in residential and commercial real estate brokerage, sales, property management, appraisal, and other aspects of the real estate industry.  Members of NAR are contractually licensed to use the collective membership REALTOR mark for the sole purpose of identifying themselves as members of NAR.  Members are required to follow strict guidelines regarding the proper use of Complainant’s marks.  Because members of NAR must subscribe to a specific code of ethics, Complainant’s marks identify real estate professionals whose services are consistent with a high degree of professionalism and ethical conduct.  Complainant’s marks thus signify the enormous goodwill of Complainant and its membership.

Complainant’s collective membership marks include REALTOR, REALTORS, REALTOR ASSOCIATE and Complainant’s graphic “R” logo.  Complainant’s REALTOR mark is registered with the United States Patent and Trademark Office as Registration Number 1,137,081.  Complainant also holds registrations for the other marks in its family including REALTOR.COM (Reg. No. 2,291,873) and REALTOR ASSOCIATE (Reg. No. 1,323,913).

Respondent registered the <realtor.biz> domain name on March 27, 2002.  Respondent is not a member of NAR, nor does it have a license to use the REALTOR mark.  Respondent has not established a website at the disputed domain name.  Respondent, Renown, is in the business of buying and selling domain name registrations.  Respondent has registered domain names that incorporate the famous marks of others including <homedeport.biz>, <sprint.biz>, <americanstockexchange.com> and <britneyspears.biz>.

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 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 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 REALTOR mark through registration with the United States Patent and Trademark Office and continuous use since 1916 in relation to its professional association.

Respondent’s <realtor.biz> domain name is identical to Complainant’s REALTOR mark because it incorporates Complainant’s entire mark and merely adds the top-level domain “.biz”.  The addition of a top-level domain adds no distinct characteristics because top-level domains are a required feature of every domain name.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Blue Sky Software Corp. v. Digital Sierra Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name <robohelp.com> is identical to Complainant’s registered ROBOHELP trademark, and that the "addition of .com is not a distinguishing difference").

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted 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 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the 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 with respect to 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, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is also a known broker in domain names and has registered numerous domain names that incorporate the well-known marks of others.  Furthermore, Respondent has made no use of the disputed domain name since its registration in March of 2002.  From these facts, the Panel infers that Respondent registered the disputed domain name in order to sell it and is therefore not making 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 J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit); 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 its rights).

Respondent is known to the Panel as Renown.  Respondent has not submitted any evidence that it is commonly known by any other name.  Therefore, the Panel infers that Respondent is not commonly known as REALTOR, or <realtor.biz>, and thus has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  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; (3) Respondent is not commonly known by the domain name in question); see also 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).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is a known domain name dealer, and has registered numerous domain names that incorporate the marks of others to sell their registrations.  In light of this and the fact that Respondent has made no use of <realtor.biz> the Panel infers that Respondent registered the dispute domain name to sell its registration.  Registration of a domain name primarily for the purpose of selling, renting, or transferring it is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also Globosat Programadora Ltda v. Artmidia Comunicacao Visual Criacao E Arte Ltda, D2000-0605 (WIPO Sept. 13, 2000) (finding that “the fact that almost all the domain names registered by the Respondent or the Administrative Contact for these domains are inactive and redirected to a site apparently dedicated to the commerce of domain names, force this Panelist to consider that Respondent has registered the domain names primarily for the purpose of selling, renting or otherwise transferring the domain names registration to the Complainant or to a Complainant's competitor for valuable consideration").

Moreover, because of the well-known nature of Complainant’s REALTOR mark, the Panel infers that Respondent was on notice as to Complainant’s rights in the REALTOR mark when it registered the <realtor.biz> domain name.  Registration of an infringing domain name, despite actual notice of Complainant’s rights, is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is Ordered that the <realtor.biz> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin,, Panelist

Justice, Supreme Court, NY (Ret.)

Dated:  January 29, 2003

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