DECISION

RE/MAX International, Inc. v. Domain Active Pty. Ltd.

Claim Number:  FA0302000145277

PARTIES

Complainant is RE/MAX International, Inc., Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf, Lamb, Greene & MacRae LLP. Respondent is Domain Active Pty. Ltd., Clayfield, AUSTRALIA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <remaxmainstreet.com>, registered with Fabulous.com Pty Ltd.

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 February 12, 2003; the Forum received a hard copy of the Complaint on February 13, 2003.

On February 13, 2003, Fabulous.com Pty Ltd. confirmed by e-mail to the Forum that the domain name <remaxmainstreet.com> is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 February 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 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@remaxmainstreet.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 March 28, 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 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 <remaxmainstreet.com> domain name is identical and confusingly similar to Complainant’s RE/MAX MAINSTREET and RE/MAX marks, respectively.

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

3. Respondent registered and used the <remaxmainstreet.com> domain name in bad faith.

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

FINDINGS

Complainant has exclusively used the RE/MAX mark in connection with its residential real estate operations in the United States and abroad since 1973.  Complainant’s real estate services have grown to include approximately 58,000 sales agents who provide services under the RE/MAX mark.  Since the mark’s inception, Complainant has invested nearly $3 billion in promoting its RE/MAX real estate brokerage services. 

Complainant has secured trademark protection of its RE/MAX mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. Nos. 1,139,014; 1,339,510; 2,403,626 and 2,468,858). 

In addition, Complainant has an interest in the RE/MAX MAINSTREET mark through use of the mark in connection with its corporate extranet. This service “provides members of the RE/MAX Network a secure, online location to, among other things, perform property searches; exchange referrals; obtain resource materials, files, forms, and software; and participate in real-time online conversation.”  Complainant has used the RE/MAX MAINSTREET mark since 1997.  A USPTO registered trademark for the RE/MAX MAINSTREET mark was issued to Complainant on August 14, 2001. 

Respondent registered the disputed domain name on September 18, 2002.  Respondent has used the domain name to provide links to commercial websites.  A number of links connect to websites that offer real estate brokerage services, which are in direct competition with Complainant’s RE/MAX services.  Some of the links at the resulting <remaxmainstreet.com> website connect to websites that display adult-related content.  Not only does the disputed domain name provide access to adult-oriented websites but some of the links provided at the domain name’s website grant access to online gambling websites.  Moreover, when Internet users attempt to close out of the web-browser, they are inundated with pop-up advertisements. 

Although Complainant franchises out the right to use the RE/MAX mark, Complainant never granted Respondent permission to use the RE/MAX mark or the RE/MAX MAINSTREET mark for any reason. 

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 demonstrated an interest in both the RE/MAX and RE/MAX MAINSTREET marks through its substantial use of the marks and trademark registration with the USPTO. 

First, Respondent’s <remaxmainstreet.com> domain name contains Complainant’s RE/MAX mark without the forward slash and with the addition of the common phrase “mainstreet.”  The permissible content in second level domains, such as “remaxmainstreet” in the disputed domain name, extends only to letters, numbers and hyphens.  Since the forward slash in the RE/MAX mark may not be duplicated in a domain name, the use of “remax” in a domain name is an appropriation of Complainant’s RE/MAX mark.  The addition of the generic term “mainstreet” does not create the distinction necessary to overcome the confusing similarity between the disputed domain name and Complainant’s mark.  Moreover, the dominant portion of the <remaxmainstreet.com> domain name remains Complainant’s distinct RE/MAX mark.  Therefore, Respondent’s <remaxmainstreet.com> domain name is confusingly similar to Complainant’s RE/MAX mark.  See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also Arthur Guinness Son & Co. (Dublin) Ltd.  v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Second, Respondent’s <remaxmainstreet.com> domain name reflects Complainant’s entire RE/MAX MAINSTREET mark.  As previously mentioned, the absence of the forward slash in the domain name does not alter the analysis under Policy ¶ 4(a)(i) because the forward slash may not be reproduced in a domain name.  There are two other altering features of the <remaxmainstream.com> domain name that are inconsequential.  First, spaces are not permitted in second level domains.  Second, top-level domains, such as “.com,” are required in every domain name.  Hence, those variations in the <remaxmainstreet.com> domain name are of no significance and Respondent’s domain name is identical to Complainant’s RE/MAX MAINSTREET mark.  See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).

The Panel finds that Policy ¶ 4(a)(i) is satisfied. 

Rights or Legitimate Interests

Respondent has failed to come forward and answer Complainant’s allegations.  Complainant submitted a prima facie Complaint, which alleges that Respondent has no rights or legitimate interests in the <remaxmainstreet.com> domain name.  In the absence of a Response, the Panel is permitted to infer that all allegations in the Complaint are true, and will draw all reasonable inferences in Complainant’s favor.  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”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Respondent directs the <remaxmainstreet.com> domain name to a website that contains multiple links to a variety of websites.  Those websites include real estate brokerage sites in direct competition with Complainant, adult-oriented sites, and gambling sites.  In addition, when a user tries to back out of the resulting website a number of pop-up windows appear, advertising gambling and pornographic websites.  It is reasonable to infer that Respondent commercially profits from the various uses of the <remaxmainstreet.com> domain name.  Respondent’s use of the <remaxmainstreet.com> domain name fails to ensure rights or legitimate interests in the domain name under the provisions of Policy ¶¶ 4(c)(i) or (iii).  See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also 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).

Furthermore, Respondent is not commonly known as  <remaxmainstreet.com> or RE/MAX or RE/MAX MAINSTREET.  Therefore, Respondent has no rights or legitimate interests in the <remaxmainstreet.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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 Respondent has no rights or legitimate interests in the <remaxmainstreet.com> domain name; thus, Policy ¶ 4(a)(ii) is satisfied. 

Registration and Use in Bad Faith

Respondent’s attempt to profit by its diversionary use of the <remaxmainstreet.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).  Since some links at the resulting website direct Internet traffic to websites that offer real estate services in direct competition with Complainant, individuals using the <remaxmainstreet.com> domain name could become confused as to Complainant’s affiliation.  In addition, Respondent’s use of the disputed domain name in connection with websites containing adult content and gambling access represents an opportunistic attempt to trade on Complainant’s RE/MAX services and associated goodwill.  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 Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the Respondent linked the domain name in question to websites displaying banner advertisements and pornographic material).

Registering a domain name with knowledge of another entity’s interest in a mark reflected in the domain name constitutes bad faith registration.  Given the variety of infringing uses of the <remaxmainstreet.com> domain name and the well-established goodwill of the RE/MAX mark, the Panel infers that Respondent had knowledge of Complainant’s interest in the RE/MAX mark.  Therefore, the Panel finds that Respondent registered the <remaxmainstreet.com> domain name in bad faith.  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 Chanel, Inc. AG v. Designer Exposure, D2000-1832 (WIPO Feb. 15, 2001) (finding that Respondent's registration and use of the famous CHANEL mark suggests opportunistic bad faith).

The Panel finds that Policy ¶ 4(a)(iii) is 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 <remaxmainstreet.com> domain name be TRANSFERRED from Respondent to Complainant.

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

Dated:  April 2, 2003

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