DECISION

TM Acquisition Corp. v. Sign Guards a/k/a William Moore

Claim Number: FA0303000151542

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib. Respondent is Sign Guards a/k/a William Moore, Wixom, MI (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <century21maine.com> registered with Register.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 March 25, 2003; the Forum received a hard copy of the Complaint on March 26, 2003.

On March 26, 2003, Register.com confirmed by e-mail to the Forum that the domain name <century21maine.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 March 27, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 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@century21maine.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 April 24, 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 <century21maine.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.

2. Respondent does not have any rights or legitimate interests in the <century21maine.com> domain name.

3. Respondent registered and used the <century21maine.com> domain name in bad faith.

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

FINDINGS

Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the CENTURY 21 mark (Reg. No. 1,063,488 registered on April 12, 1977) related to real estate brokerage services. The CENTURY 21 mark has been used continuously in the United States in commerce since April 16, 1972.

Respondent registered the <century21maine.com> domain name on April 5, 2000. The domain name currently does not resolve to a website.

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 that it has rights in the CENTURY 21 mark through registration with the USPTO and continuous use in commerce for more than 30 years.

Respondent’s <century21maine.com> domain name is confusingly similar to Complainant’s registered mark because the disputed domain name appropriates Complainant’s entire mark and merely adds the geographic term “maine” to the end of the mark. The addition of the generic term “maine” does not sufficiently differentiate Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i) because Complainant’s famous mark remains the dominant element of the disputed domain name. See 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); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

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

Rights or Legitimate Interests

Respondent has failed to come forward with a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response the Panel is free to make inferences from the very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Furthermore, the Panel may presume that Respondent lacks any rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii) because of Respondent’s refusal to answer the Complaint. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response nor provided the Panel with evidence to suggest otherwise).

As of this proceeding, Respondent has made no use of the <century21maine.com> domain name. Respondent’s refusal to use the disputed domain name since it registered the domain name three years ago is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to the Complaint and had made no use of the domain name in question).

Respondent has not provided the Panel with any proof and there is no evidence in the record to establish that Respondent is commonly known by either CENTURY 21 MAINE or <century21maine.com>. Therefore, Respondent has failed to establish that it has rights to 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).

The Panel finds that Complainant has established Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent previously registered 32 variations of Complainant’s registered trademark prior to this proceeding. See TM Acquisition Corp. v. Sign Guards a/k/a William Moore, FA 132429 (Nat. Arb. Forum Dec. 31, 2002). Respondent’s registration of various modifications of Complainant’s mark demonstrates a pattern of registration to prevent Complainant from reflecting its mark in a corresponding domain name, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith); see also Pep Boys Manny, Moe, & Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that, where the Respondent registered many domain names, held them hostage, and prevented the owners from using them, the behavior constituted bad faith).

Moreover, Respondent has failed to develop a website at the <century21maine.com> domain name since it was registered three years ago. Respondent’s passive holding of the disputed domain name demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that the Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <century21maine.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret)

Dated:  April 29, 2003

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