DECISION

TM Acquisition Corp. v. Jimmy Nevius a/k/a Nevius, J.

Claim Number: FA0302000146634

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib. Respondent is Jimmy Nevius a/k/a Nevius, J., Henderson, NV, (“Respondent”) represented by Jimmy L Nevius.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <century21express.com>, <century21express.net> and <c21express.net>, registered with Network Solutions, Inc., and <c21express.com>, registered with Namesdirect.

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.

R. Glen Ayers served as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on February 25, 2003; the Forum received a hard copy of the Complaint on February 26, 2003.

On February 27, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <century21express.com>, <century21express.net> and <c21express.net> are registered with Network Solutions, Inc., and that the Respondent is the current registrant of the names. On March 6, 2003, Namesdirect confirmed by e-mail to the Forum that the domain name <c21express.com> is registered with Namesdirect and that the Respondent is the current registrant of the name. Network Solutions, Inc. and Namesdirect have verified that Respondent is bound by their respective registration agreements and they have 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 March 7, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 27, 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@century21express.com, postmaster@century21express.net, postmaster@c21express.com, and postmaster@c21express.net by e-mail.

A timely Response was received and determined to be complete on March 25, 2003.

On April 2, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed R. Glen Ayers as Panelist.

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

1. Complainant

Complainant assets that it holds a very large number of trademarks related to the “CENTURY 21" real estate business.  Complainant licenses the right to use 93 registered marks and claims the rights to ownership of numerous common-law marks, which it also licenses.

Century 21 is used in the context of real estate sales.  Century 21, Inc., the licensee, is a Delaware corporation.  That Delaware corporation sublicenses all the Century 21 marks to franchisees, including a franchisee doing business as “CENTURY 21 Express” in Las Vegas, Nevada.  Complainant alleges that Respondent, who “appears to be a resident of Nevada,” is a person who offers real estate services in competition with the Las Vegas franchisee.  Complainant asserts that Respondent is not a franchisee or licensee.  Complainant does allege that Respondent had some relationship with the Las Vegas franchisee.  Complainant alleges that Respondent registered the four domain names in dispute and listed above on January 10, 2001.

Those domain names originally resolved to a web page on which Respondent identified himself as a person who served as a Las Vegas area real estate agent.  Complainant alleges that it sent letters requesting resolution of this problem and offered to pay costs incurred. Thereafter, Respondent arranged that these domain names resolve to a separate, non-profit, web page, which remains undeveloped but which purports to deal with issues related to the twenty-first century.

Complainant asserts that the four domain names in dispute are confusingly similar to its marks.  Complainant alleges that Respondent has no rights or legitimate interests in the names and has never made a bona fide offering of commercial  services under those names.  Complainant alleges that Respondent apparently initially registered the names thinking that he might go to work for or with the Las Vegas franchisee.  Complainant asserts that Respondent has never been known by the domain names and that Respondent is “clearly not making a non-commercial, fair use of the domain names.”

Finally, Complainant asserts bad faith based upon Policy ¶¶ (4)(b)(i), (ii), (iii), and (iv).

Complainant alleges that Respondent answered its demand letter by seeking to sell the domain names in violation of Policy ¶ (4)(b)(i). Complainant alleges that bad faith is shown under Policy ¶ (4)(b)(ii) because the registration of the domain prevents use by the Las Vegas franchisee and others.  Complainant asserts that bad faith exists under Policy ¶ (4)(b)(iii) because the registration was “for the purpose of disrupting the business of a competitor.” 

Finally, Complainant asserts that Policy ¶ (4)(b)(iv) allows “a finding of bad faith where the Respondent intentionally attempted to attract, for commercial gain, Internet users to its web site.”

As to the bad faith issues, Complainant states that Respondent used the famous “CENTURY 21" mark to divert customers to his own real estate business.

2. Respondent

Respondent spends much of the initial portion of his response disputing the contentions of Complainant that Respondent was in some way involved or hoped to be involved professionally with the Las Vegas CENTURY 21 franchisee.  Respondent has provided affidavits and other evidence that he never intended to or would never have gone to work for the CENTURY 21 franchisee.

Respondent does specifically deny that he offered to sell the domain names.  Further, he states that in response to his request for reimbursement and expenses, he never received an answer from Complainant.  In fact, as Respondent points out, Complainant’s e-mail did not contain a firm offer but merely stated that Complainant “maybe willing to pay you the registration fees you incurred.”  In response to the various legal arguments, Respondent denies any confusing similarity or identity.  Respondent asserts that his Las Vegas office is seven miles from the Complainant’s franchise and that he does not actively work in Las Vegas.  Respondent asserts that he works in California. Respondent asserts that the local franchisee is actually licensed as “Express Realty Corporation.”  Respondent asserts that the claimed franchisee has not even filed a copy of the franchise agreement with the State of Nevada.  Respondent denies that his profession has anything to do with the issue of bad faith.

Respondent engages in an extensive discussion as to the validity of the trademarks, pointing out that “CENTURY,” “21,” “Express” and other terms are relatively common generic words.

As to the issue of rights to the names, Respondent says that he used and made preparation to use the four domain names in dispute in order to offer services prior to receiving notice of the dispute and that he is commonly known by the domain names.  Respondent also asserts that he has made fair use of the domain names.  Respondent places much stress upon his intent to create a domain that would deal with issues arising in the twenty-first century.  Respondent complains to be commonly known by these domain names.  Respondent says that he is making clear use for a not-for-profit service.

Respondent also denies bad faith.  He points out that the response to his request for reimbursement was never received and that it contained no specific agreement to reimburse Respondent’s expenses.  Respondent denies that he ever offered the domain name for sale and asserts that he has no bad faith in attempting to establish web sites dealing with issues related to the twenty-first Century.

Respondent denies any attempt to block use of the domain names by Complainant.  Respondent denies that he is a competitor and argues that “REALTORS ® do not compete with one another.”

Respondent denies that he ever attempted to attract Internet users for personal gain at the expense of the Complainant.

In conclusion, the Respondent asserts that the “Complaints [sic] claims are more than false, they’re deliberate lies to mislead the Panel and further use the Panel for their financial gain.”

FINDINGS

First, and notwithstanding Respondent’s repeated contentions that “REALTORS ® do not compete with one another,” that statement is objectively false.  Irrespective of the desires of Respondent, real estate agency and brokerage are as competitive as any other business and persons employed in the industry compete for clients and commissions. Respondent is a real estate agent or sales person active in the Nevada area (even if he has removed the center of his activity from Nevada to California).

Further, the Panel finds that the three domain names in dispute, <century21express.com>, <century21express.net>, <c21express.net>, and <c21express.com>, are identical or confusingly similar to one or more of the trademarks held and licensed by the Complainant.  Whether the Complainant’s franchisee is known as “CENTURY 21 Express” or “Express Realty Corporation” is really irrelevant.  The franchisee does not own the trademarks.  Complainant owns the trademarks. 

The Panel further finds that no one in the real estate business would have registered such domain names unless they had some interest in identifying themselves with the CENTURY 21 network.

Respondent offered no persuasive evidence that he is known by these domain names.  Respondent offered no persuasive evidence that he made any bona fide use of the domain names prior to being notified of the dispute.  Bona fide use means some use other than a use that infringes on the mark of another.

Use of the domain names to lead an Internet user to Respondent’s real estate sales website isobviously bad faith.  Changing the resolution to an undeveloped website devoted to “twenty-first century issues” is a little like closing the barn door after the horse leaves.

These facts, complete with the listing of the names for sale, leads to the conclusion that  once Respondent was caught with his hand in the cookie jar, he started dreaming up excuses for his conduct.

The Panel finds “bad faith” exists and that, at the present time, Respondent is maintaining the domain names in an attempt to block use by Complainant.

The various decisions cited by Respondent have been reviewed.  None seems to support a different set of findings.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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

First, it is obvious that the domain names and marks held by Complainant are either identical or confusingly similar to the domain names in dispute.  While Respondent asserts that the names and marks contain generic terms, Respondent ignores the simple fact that Complainant holds 93 registered marks, many of which are identical or confusingly similar to the four domain names in dispute.  That variations of these domain names are available does not mean that those domain names can be registered by persons other than persons associated with Complainant and its franchise system.  Respondent also asserts that he is attempting to register a competing mark.  Again, that is irrelevant.  Registration of marks  is a matter for the United States Patent and Trademark Office.

While it is true that the Uniform Domain Dispute Resolution Policy (UDRP) does not cover every possible violation of trademark rights, this case is clearly within scope of the UDRP.

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

Rights or Legitimate Interests

            Respondent is certainly not known by any of these domain names.  Respondent asserts that he has an idea for some sort of website dealing with twenty first century issues (and he had the idea years ago).  That does not mean that Respondent is known by these names.  Further, Respondent has never made a bona fide offering of goods and services.  Apparently, as set forth in the Complaint, Respondent did make an offering of goods and services, which was in direct competition with the Complainant’s rights and interests.

Respondent is certainly not making fair use of the domain names.  Apparently, he chose to cause these domain names to resolve to his “not for profit” website only after being caught with his hand in the cookie jar.

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

Registration and Use in Bad Faith

            As to bad faith, while it seems clear that the Respondent has offered to sell the domain names, the evidence that Complainant has cited may not be sufficient for a finding of bad faith.

What is sufficient for a finding of bad faith is the clear evidence that the Respondent, a real estate agent, registered four domain names that resemble trademarks held by a nationwide franchisor of real estate services.  He caused those domain names to resolve to a website at which Respondent offered to handle real estate transactions.  That, in its simplest form, is bad faith prohibited by Policy ¶ 4(b).  In doing so, Respondent attempted to attract Internet users, for commercial gain, by creating a likelihood of confusion with the Complainant’s mark.  After being confronted by Complainant, Respondent caused the domain names to resolve to a website that is undeveloped.

The Panel thus 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 <century21express.com>, <century21express.net>, <c21express.com> and <c21express.net> domain names be TRANSFERRED from Respondent to Complainant.

R. GLEN AYERS, Panelist

Dated:  April 15, 2003