DECISION

TM Acquisition Corp. v. S.E.A. Domains

Claim Number:  FA0305000156800

PARTIES

Complainant is TM Acquisition Corp., Las Vegas, NV (“Complainant”) represented by Kathryn S. Geib. Respondent is S.E.A. Domains, Singapore, SG (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <c21expressrealty.com>, <ccentury21.com>, <kathryngeib.com> and <vandavis.net>, registered with Enom, Inc.

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 May 7, 2003; the Forum received a hard copy of the Complaint on May 8, 2003.

On May 8, 2003, Enom, Inc. confirmed by e-mail to the Forum that the domain names <c21expressrealty.com>, <ccentury21.com>, <kathryngeib.com> and <vandavis.net> are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. 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 May 9, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 29, 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@c21expressrealty.com, postmaster@ccentury21.com, postmaster@kathryngeib.com and postmaster@vandavis.net 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 June 5, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <c21expressrealty.com> and <ccentury21.com> domain names are confusingly similar to Complainant’s CENTURY 21 and C21 marks. Respondent’s <kathryngeib.com> and <vandavis.net> are identical to Complainant’s KATHRYN GEIB and VAN DAVIS marks.

2. Respondent does not have any rights or legitimate interests in the <c21expressrealty.com>, <ccentury21.com>, <kathryngeib.com> and <vandavis.net> domain names.

3. Respondent registered and used the <c21expressrealty.com>, <ccentury21.com>, <kathryngeib.com> and <vandavis.net> domain names in bad faith.

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

FINDINGS

Complainant, TM Acquisition Corp., holds numerous trademark registrations on the Principal Register of the United States Patent and Trademark Office (“USPTO”), including the CENTURY 21 mark (U.S. Reg. No. 1,063,488, registered on April 12, 1977) and the C21 mark (U.S. Reg. No. 1,257,866, registered on November 15, 1983). Complainant sub-licenses its CENTURY 21 marks to its franchises for real estate brokerage services. The CENTURY 21 family of marks has been used continuously in the United States in commerce since April 16, 1972.

Among its various licensees is a franchisee of Complainant operating as CENTURY 21 Express in Las Vegas, Nevada. Since November 2000, Mr. F. Van Davis has been the President and Chief Executive Officer of Century 21 Real Estate Corporation, and since February 1996, Kathryn S. Geib has been an in-house attorney for that same entity.

Respondent, S.E.A. Domains, registered the <c21expressrealty.com>, <ccentury21.com> and <kathryngeib.com> domain names on April 17, 2003, and the <vandavis.net> domain name on April 22, 2003. Respondent is not licensed or authorized to use Complainant’s CENTURY 21 mark for any purpose, and has no affiliation with Van Davis or Kathryn Geib.

In addition to the four disputed domain names, Respondent operates a website at the <seadomains.com> domain name. This website posts complaints and opinions stemming from an administrative Panel’s decision in the case TM Acquisition Corp. v. Jimmy Nevius, FA 146634 (Nat. Arb. Forum April 15, 2003). In that case, four domain names that included the CENTURY 21 mark along with the word “express” were transferred to Complainant. The website at the <seadomains.com> domain name includes the home address of many of the individuals involved in the Jimmy Nevius decision, disparaging comments on their character, and the warning that “This company or person is believed to act unethical and deceitful! Use extreme caution with this business or person.” Each of the disputed domain names redirect Internet users to the <seadomains.com> domain name, and were registered within days of the Jimmy Nevius decision.

Complainant was notified by email from Respondent that it had registered the <c21expressrealty.com>, <ccentury21.com> and <kathryngeib.com> domain names on April 21, 2003. Respondent sent another email on April 22 informing Mr. Van Davis and nearly every sales associate at the CENTURY 21 Express office in Las Vegas, Nevada, of its registration of the <vandavis.net> domain name. On April 25, 2003, Complainant sent a letter to Jimmy Nevius, the Respondent in the Jimmy Nevius decision, putting him on notice of Complainant’s rights in the CENTURY 21 and C21 marks. On April 28, Mr. Nevius responded with the claim that he had “no affiliation” with the domain names at issue in this dispute.

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 CENTURY 21 and C21 mark through registration of the mark on the Principal Register of the U.S. Patent and Trademark Office, as well as though widespread and continuous use of the mark in commerce.

As Complainant has established rights in the CENTURY 21 and C21 marks, the Panel must go on to determine if the disputed domain names are identical or confusingly similar to these marks. Respondent’s <c21expressrealty.com> and <ccentury21.com> domain names each incorporate Complainant’s marks. One of the domain names includes the name of one of Complainant’s franchisees, while the other is a simple misspelling of Complainant’s mark. Both of these domain names are confusingly similar to marks in which Complainant has rights. See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a Respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to Complainant’s marks); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).

However, in order to prevail under Policy ¶ 4(a)(i) with respect to the <kathryngeib.com> and <vandavis.net> domain names, Complainant must demonstrate that it has rights in a mark that is identical or confusingly similar to these domain names. Complainant apparently contends that it has rights in the KATHRYN GEIB and VAN DAVIS mark by virtue of the fact that both individuals are employed by Complainant. However, the Panel is unwilling to find that an employer “has rights” under the UDRP for each individual employed for that company, notwithstanding the fact that personal names are non-inherently distinctive terms which require proof of secondary meaning for protection under the common-law. See McCarthy on Trademarks and Unfair Competition, § 13:2 (4th ed. 2002). Without addressing the merits of any claim that Ms. Geib or Mr. F. Van Davis may have against Respondent in their own right, the Panel finds that Complainant does not have standing to bring a claim against Respondent for the <kathryngeib.com> and <vandavis.net> domain names. See NBA Prop., Inc. v. Adirondack Software Corp., D2000-1211 (WIPO Dec. 8, 2000) (denying Complaint because Complainant was not the owner of the trademarks); see also See CMG Worldwide, Inc. v. Humphrey Bogart Club, FA 144631 (Nat. Arb. Forum May 27, 2003) (denying the Complaint because Complainant was not the owner of the trademark). Therefore, further analysis of the dispute will focus solely on the <c21expressrealty.com> and <ccentury21.com> domain names. See CyberImprints.com, Inc. v. Alberga, FA 100608 (Nat. Arb. Forum Dec. 11, 2001) (finding it unnecessary to determine whether Respondent has rights or interests in a domain name or whether it registered and used the name in bad faith when the Complainant fails to establish rights under Policy ¶ 4(a)(i)).

Accordingly, the Panel finds that the <c21expressrealty.com> and <ccentury21.com>, domain names are confusingly similar to Complainant’s CENTURY 21 and C21 marks under Policy ¶ 4(a)(i). The Panel further finds that Complainant has failed to establish rights in a mark that is identical or confusingly similar to the <kathryngeib.com> and <vandavis.net> domain names, and finds for Respondent under Policy ¶ 4(a)(i) with respect to these two domain names.

Rights or Legitimate Interests

Respondent did not respond to the Complaint. Therefore, the Panel finds it appropriate to infer that Respondent admits to having no rights or legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”).

Furthermore, Complainant can meet its burden under the UDRP of demonstrating that Respondent lacks rights or legitimate interests in the disputed domain names by showing that the “safe harbor” provisions of Policy ¶¶ 4(c)(i)-(iii) do not apply to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also 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).

Respondent’s use of the <c21expressrealty.com> and <ccentury21.com> domain names evidence its lack of rights or legitimate interests. Redirecting a domain name to a complaint website is by no means prima facie evidence that Respondent lacks rights or legitimate interests in its domain names. Respondent is free to direct any number of websites to the <seadomains.com> domain name, so long as it doesn’t infringe on Complainant’s trademarks, as it has done in this dispute.  Respondent’s use of the <c21expressrealty.com> and <ccentury21.com> domain names in this capacity is not a bona fide offering of goods or services or a legitimate noncommercial fair use of the domain names pursuant to Policy ¶¶ 4(c)(i) and (iii), and Respondent is clearly not “commonly known by” the disputed domain names pursuant to Policy ¶ 4(c)(ii), making each of these provisions inapplicable to Respondent. See Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY HOMES mark); see alsoMonsanto Co. v. Rowena Tollitt, FA 110795 (Nat. Arb. Forum June 4, 2002) (acknowledging that analysis of the merits of a complaint site are beyond the scope of an administrative proceeding, while holding that “even if the purpose of the Respondent’s domain is to offer valid criticism of the Complainant, that admirable purpose does not legitimize [sic] the use of the Complainant’s name to attract persons looking for the Complainant”); see also E. & J. Gallo Winery v. Hanna Law Firm, D2000-0615 (WIPO Aug. 3, 2000) (finding that establishing a legitimate free speech/complaint site does not give rights to use a famous mark in its entirety).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <c21expressrealty.com> and <ccentury21.com> domain names under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Respondent’s use of Complainant’s mark to redirect Internet users to a website dedicated to criticizing Complainant is evidence that the <c21expressrealty.com> and <ccentury21.com> domain names were registered and used in bad faith. Respondent knowingly incorporated Complainant’s mark into its domain names, and used Complainant’s mark to attract Internet users to a website which aimed criticism at Complainant.

Complainant has made no effort to distinguish the disputed domain names from Complainant’s mark. See Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, D2000-1104 (WIPO Nov. 23, 2000) (finding that “[i]n domain name disputes it is critical whether the accused domain name itself signifies parodic or critical purposes, as opposed to imitation of trademark”); compare People for the Ethical Treatment of Animals v. Doughney, 113 F.Supp.2d 915, 919 (E.D.Va.2000) ("PETA"), aff’d [2001] USCA4 201; 263 F.3d 359, 355 (4th Cir. 2001) (citing Planned Parenthood Federation of America, Inc. v. Bucci, 42 U.S.P.Q.2d 1430, 1435 (S.D.N.Y.1997)) (" '[Using someone else's mark for parody] is likely to prevent Internet users from reaching [PETA]'s own Internet web site.  The prospective users of [PETA]'s services who mistakenly access Defendant's web site may fail to continue to search for [PETA]'s own home page, due to anger, frustration, or the belief that the Plaintiff's home page does not exist.' "). This type of infringing behavior is not protected by the First Amendment, and is evidence of bad faith on the part of Respondent. See Monsanto Co. v. Rowena Tollitt, FA 110795 (Nat. Arb. Forum June 4, 2002) (finding that Respondent’s complaint website, which utilized Complainant’s mark, was being used in bad faith, and that Respondent’s registration of the disputed domain name with full knowledge of Complainant’s mark evidenced bad faith registration); see also Northwest Airlines, Inc. v. Jorgenson, FA 96586 (Nat. Arb. Forum Mar. 28, 2001) (finding bad faith where the "purpose of Respondent in choosing the domain name is to cause the persons seeking information on the Complainant’s activities to be drawn into the Respondent’s web site and thereby to be exposed to contrary and critical views").

Evidence of Respondent’s bad faith can also be inferred from its decision not to include any disclaimer on its website. While any Internet user who accesses the disputed domain names will quickly realize that they have not reached a website affiliated with Complainant, the fact remains that Respondent makes no effort to distinguish itself from Complainant. While the initial interest confusion that results from using Complainant’s mark in the <c21expressrealty.com> and <ccentury21.com> domain names is enough to warrant a finding of bad faith, Respondent’s lack of a prominent disclaimer further reinforces the previously mentioned evidence of bad faith. See Mikimoto Co. v. Asanti Fine Jewellers Ltd., AF-0126 (eResolution Apr. 8, 2000) ("[A]lthough this is the type of domain name that naturally leads to consumer confusion, I find it particularly telling that Respondent did not offer to take reasonable measures, for example disclaimers of association with Complainant or warnings in meta tags, to help consumer confusion"); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (holding that Respondent’s failure to post a disclaimer on a website that was designed to foster a likelihood of confusion with Complainant’s mark was evidence that the domain name was being used in bad faith).

The Panel thus finds that Respondent registered and used the <c21expressrealty.com> and <ccentury21.com> domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

With respect to the <c21expressrealty.com> and <ccentury21.com> domain names, Complainant has established all three elements required under ICANN Policy and the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <c21expressrealty.com> and <ccentury21.com> domain names be TRANSFERRED from Respondent to Complainant.

Complainant’s request for relief with respect to the <kathryngeib.com> and <vandavis.net> domain names shall be DISMISSED without prejudice.

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

Dated:  June 12, 2003

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