DECISION

TM Acquisition Corp. v. Tim Warren

Claim Number:  FA0310000204147

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is Tim Warren  (“Respondent”), 10645 N. Tatum #200-197, Phoenix, AZ 85028.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <century21realty.biz>, registered with Iholdings.Com, Inc. d/b/a Dotregistrar.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.

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 23, 2003; the Forum received a hard copy of the Complaint on October 24, 2003.

On October 23, 2003, Iholdings.Com, Inc. d/b/a Dotregistrar.Com confirmed by e-mail to the Forum that the domain name <century21realty.biz> is registered with Iholdings.Com, Inc. d/b/a Dotregistrar.Com and that Respondent is the current registrant of the name. Iholdings.Com, Inc. d/b/a Dotregistrar.Com has verified that Respondent is bound by the Iholdings.Com, Inc. d/b/a Dotregistrar.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 October 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 17, 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@century21realty.biz by e-mail.

On October 27, 2003, Respondent submitted an informal email that raised no substantive defense or claim recognized under the Policy, and therefore did not comply with Paragraph 5 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

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 November 24, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 "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 <century21realty.biz> domain name is confusingly similar to Complainant’s CENTURY 21 mark.

2. Respondent does not have any rights or legitimate interests in the <century21realty.biz> domain name.

3. Respondent registered and used the <century21realty.biz> domain name in bad faith.

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

FINDINGS

Complainant, TM Acquisition Corp., is the holder of numerous registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”) for the CENTURY 21 marks.  Specifically, Complainant holds USPTO Reg. No. 1,063,488 (registered on April 12, 1977), Reg. No. 1,085,039 (registered on February 7, 1978), Reg. No, 1,304,095 (registered on November 6, 1984), Reg. No. 1,429,531 (registered on February 17, 1987) and Reg. No. 2,178,970 (registered on August 4, 1998) for its CENTURY 21 marks.  Complainant also has its CENTURY 21 marks registered in 101 other countries.

Complainant licenses its CENTURY 21 marks to Century 21 Real Estate Corporation (“Century 21”).  Century 21 is a franchisor of a system of businesses for the promotion and assistance of independently owned and operated real estate brokerage offices. Century 21 licenses its franchisees the right to use the CENTURY 21 marks in their real estate brokerage offices throughout the United States and at least 26 other countries.  Currently, there are approximately 4,100 franchised offices in the United States and approximately 2,500 franchised offices in other countries.  Century 21 also operates its principal website at <century21.com>.

Respondent registered the <century21realty.biz> domain name on November 14, 2001.  At the website associated with the <century21realty.biz> domain name, Respondent provides numerous links to various competing real estate websites offering real estate in numerous states.  Respondent is not a franchisee or licensee of the CENTURY 21 system. 

On October 27, 2003, Respondent submitted an informal submission to the Panel, stating that he had not used the <century21realty.biz> domain name for any purpose.  Respondent also stated that he was willing to transfer the domain name to Complainant. 

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

The Panel finds that Complainant has established rights in its CENTURY 21 marks through registration of the marks with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <century21realty.biz> domain name consists of nothing more than Complainant’s CENTURY 21 mark immediately followed by the generic word “realty” and the top-level domain “.biz”.  The fact that Respondent’s domain name includes the generic word “realty” creates a greater likelihood of confusion among Internet users since Complainant is engaged in the realty business and Respondent uses Complainant’s entire mark.  In addition, the top-level domain “.biz” does not sufficiently distinguish Respondent’s domain name from Complainant’s mark since every domain name must include a top-level domain upon registration.  Thus, the Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s CENTURY 21 marks.  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

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

Rights or Legitimate Interests

In its Complaint, Complainant contends that Respondent lacks rights and legitimate interests in the <century21realty.biz> domain name.  As Respondent has not submitted a formal Response in this proceeding, it has failed to rebut Complainant’s allegations.  Furthermore, in an informal submission, Respondent stated that it had not used the <century21realty.biz> domain name in any way and it is willing to transfer the domain name to Complainant.  Clearly, Respondent’s willingness to transfer the domain name to Complainant and its failure to rebut Complainant’s assertions reinforces Respondent’s lack of rights and legitimate interests in the domain name.  See Land O’ Lakes Inc. v. Offbeat Media Inc., FA 96451 (Nat. Arb. Forum Feb. 23, 2001) (finding that Respondent’s willingness to transfer upon notification of the Complaint is evidence of its lack of legitimate interests or rights); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that Respondent’s failure to submit a formal Response combined with its agreement at the onset of the Complaint to transfer the disputed names satisfies all the requirements of 4(a)(ii)). 

There is no evidence before the Panel establishing that Respondent was commonly known by the <century21realty.biz> domain name.  Furthermore, Respondent is not a franchisee or licensee of the CENTURY 21 system.  Consequently, the Panel finds that Respondent is not commonly known by the domain name.  See 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"); see also 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).

Respondent is using the CENTURY 21 mark in its domain name to attract Internet users who are looking for Complainant’s real estate services.  However, when Internet users type in the <century21realty.biz> domain name expecting to see Complainant’s website, they are provided with numerous links to Complainant’s competitors’ websites.  Thus, the Panel concludes that Respondent is not using the domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See TM Acquisition Corp. v. Sign Guards,  FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that Respondent’s diversionary use of Complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to competitors of Complainant, was not a bona fide offering of goods or services); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

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

Registration and Use in Bad Faith

Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites.  Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.  Furthermore, the Panel infers that Respondent receives a commission for each Internet user it directs to Complainant’s competitors’ websites.  The Panel finds that such commissions and the confusion between Respondent’s domain name and Complainant’s mark, are evidence of bad faith use and registration pursuant to Policy ¶ 4(b)(iv).  See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant); see also Kmart v. Khan, 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)). 

Furthermore, Respondent registered the <century21realty.biz> domain name with either constructive or actual knowledge of Complainant’s rights in its CENTURY 21 marks.  Since Complainant’s marks were registered on the Principal Registrar of the USPTO prior to Respondent’s registration of the domain name, Respondent is charged with having constructive knowledge of Complainant’s rights in its marks at the time of registering the <century21realty.biz> domain name.  Thus, the Panel concludes that Respondent registered the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Victoria’s Cyber Secret Ltd. P’ship v. V Secret Catalogue, Inc., 161 F.Supp.2d 1339, 1349 (S.D.Fla. 2001) (“a Principal Register registration [of a trademark or service mark] is constructive notice of a claim of ownership so as to eliminate any defense of good faith adoption” pursuant to 15 U.S.C. § 1072).

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

DECISION

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

Accordingly, it is Ordered that the <century21realty.biz> domain name be TRANSFERRED from Respondent to Complainant.

The Honorable Charles K. McCotter, Jr. (Ret.), Panelist

Dated:  December 8, 2003

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