DECISION

TM Acquisition Corp. v. Domain Deluxe

Claim Number:  FA0409000338035

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ, 07054.  Respondent is Domain Deluxe  (“Respondent”), 16/F Cheung Kong Center, 2 Queen Road Central, Honk Kong, 1, Hong Kong.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <coldwelllbanker.com> and <coldwellbamker.com>, 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.

Hon. Ralph Yachnin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 30, 2004; the Forum received a hard copy of the Complaint on October 1, 2004.

On Sepember 30, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain names <coldwelllbanker.com> and <coldwellbamker.com> 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 October 4, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2004 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@coldwelllbanker.com and postmaster@coldwellbamker.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 November 2, 2004, 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <coldwelllbanker.com> and <coldwellbamker.com> domain names are confusingly similar to Complainant’s COLDWELL BANKER mark.

2. Respondent does not have any rights or legitimate interests in the <coldwelllbanker.com> and <coldwellbamker.com> domain names.

3. Respondent registered and used the <coldwelllbanker.com> and <coldwellbamker.com> domain names in bad faith.

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

FINDINGS

Complainant, TM Acquisition Corp., is a Delaware corporation with its principal place of business in Nevada.  It is the holder of various COLDWELL BANKER marks and has licensed the COLDWELL BANKER marks to Coldwell Banker Real Estate Corporation.  Complainant has 41 trademark registrations in the United States, registered with the U.S. Patent and Trademark Office (“USPTO”); these include COLDWELL BANKER (reg. no. 1,154,155) registered on May 12, 1981.  Complainant also holds numerous registrations of the COLDWELL BANKER mark in 101 other countries, including Hong Kong (reg. no. 04023 of 1993) registered on October 4, 1993.

Respondent registered the <coldwelllbanker.com> and <coldwellbamker.com> domain names on June 25, 2002.  Respondent’s domain names provide a list of links related to real estate services that compete with 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 sufficient rights in the COLDWELL BANKER mark, pursuant to Policy ¶ 4(a)(i), to bring an action under the Policy.  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, and Respondent has the burden of refuting this assumption).

The Panel also finds that Respondent’s <coldwelllbanker.com> and <coldwellbamker.com> domain names are confusingly similar to Complainaint’s COLDWELL BANKER mark.  The only difference is the addition of an “l” in <coldwelllbanker.com> and the substitution of an “m” for an “n” in <coldwellbamker.com>, which do not significantly distinguish the domain names from the mark.  See Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (finding the domain name <hewlitpackard.com> to be identical or confusingly similar to Complainant’s HEWLETT-PACKARD mark); see also Toronto-Dominion Bank v. Karpachev, D2000-1571 (WIPO Jan. 15, 2001) (finding that the domain names <tdwatergouse.com> and <dwaterhouse.com> are virtually identical to Complainant’s TD WATERHOUSE name and mark).

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

Rights or Legitimate Interests

Respondent has not submitted a Response in this matter.  In the absence of a Response, the Panel may accept all reasonable allegations by Complainant as true.  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 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).

Respondent’s domain names offer real estate services, which compete with Complainant.  Using a domain name that is confusingly similar to another’s mark to offer services that compete with the mark holder is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with Complainant, was not a bona fide offering of goods or services).

There is nothing in the record, including the domain name WHOIS registration information, which indicates that Respondent is commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

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

Registration and Use in Bad Faith

Respondent is using the <coldwelllbanker.com> and <coldwellbamker.com> domain names to target Internet users looking for Complainant’s service and refer them to Complainant’s competitors.  The Panel finds that using domain names that are confusingly similar to Complainant’s mark to refer to Complainant’s competition is bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where Respondent, a company financially linked to Complainant’s main competitor, registered and used the domain name in question to disrupt Complainant’s business).

In addition, Respondent’s domain names are mere misspellings of Complainant’s mark.  The Panel infers that Respondent is attempting to capitalize on typing errors committed by Complainant’s customers to locate Complainant’s services on the Internet.  The Panel finds that registering a domain name to capitalize on traffic generated by typing errors committed by another’s customers is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Dermalogica, Inc. v. Domains to Develop, FA 175201 (Nat. Arb. Forum Sept. 22, 2003) (finding that the <dermatalogica.com> domain name was a typosquatted version of Complainant's DERMALOGICA mark, stating "[t]yposquatting itself is evidence of bad faith registration and use pursuant to Policy 4(a)(iii)"); see also Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (finding that Respondent registered and used the <zonelarm.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because the name was merely a typosquatted version of Complainant's ZONEALARM mark).

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

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 <coldwelllbanker.com> and <coldwellbamker.com> domain names be TRANSFERRED from Respondent to Complainant.

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

Dated: November 16, 2004

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