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Generic Top Level Domain Name (gTLD) Decisions |
TM Acquisition Corp. v. Sumirah Ahmad
Claim
Number: FA0409000337827
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib of Cendant Corporation, 1
Sylvan Way, Parsippany, NJ 07054.
Respondent is Sumirah Ahmad (“Respondent”),
P.O. Box 1211, Kuala Lumpur, 56100, Malaysia.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <coldwelbanker.com>, registered with Iholdings.com,
Inc. d/b/a Dotregistrar.com.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Tyrus
R. Atkinson, Jr., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 29, 2004;
the Forum received a hard copy of the
Complaint on September 30, 2004.
On
September 30, 2004, Iholdings.com, Inc. d/b/a Dotregistrar.com confirmed by
e-mail to the Forum that the domain name <coldwelbanker.com> is
registered with Iholdings.com, Inc. d/b/a Dotregistrar.com and that Respondent
is the current registrant of the name. Iholdings.com,
Inc. d/b/a
Dotregistrar.com has verified that Respondent is bound by the Iholdings.com, Inc.
d/b/a Dotregistrar.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
October 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"),
setting a deadline of
October 21, 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@coldwelbanker.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 1, 2004, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed Tyrus
R. Atkinson, Jr., 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <coldwelbanker.com>
domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
2. Respondent does not have any rights or
legitimate interests in the <coldwelbanker.com> domain name.
3. Respondent registered and used the <coldwelbanker.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM Acquisition Corp., is the owner of
numerous COLDWELL BANKER marks, which it has licensed to Coldwell Banker Real
Estate Corporation
(Coldwell Banker).
Coldwell Banker sub-licenses the marks to its franchisees throughout the
United States and several foreign countries and also operates
its own real
estate brokerage offices in the United States.
Complainant and Coldwell Banker are subsidiaries of Cendant
Corporation.
Complainant has licensed Coldwell Banker to use forty-one registered and
common law marks in the United States, which contain the
COLDWELL BANKER mark
alone or as an element of the mark (including Reg. No. 1,154,155 issued May 12,
1981; Reg. No. 1,215,241 issued
November 2, 1982; and Reg. No. 2,057,608 issued
April 29, 1997). Additionally, Coldwell
Banker Corporation, a sister subsidiary of Complainant, owns trademark
registrations in one hundred and one
countries for numerous COLDWELL BANKER
marks.
Coldwell Banker is a franchisor for the promotion and assistance of
independently owned and operated real estate brokerage offices. This includes providing policies, procedures
and techniques designed to assist these offices in competing more effectively
in the
real estate sales market.
Coldwell Banker licenses its franchisees the right to use the COLDWELL
BANKER marks in their real estate offices.
Coldwell Banker’s franchisees includes approximately 3,100 offices in
the United States and approximately 400 in other countries.
Coldwell Banker
has used the COLDWELL BANKER marks continuously in commerce since at least as
early as January 7, 1974. Additionally,
the COLDWELL BANKER mark was first registered in Malaysia, the alleged location
of Respondent, on May 5, 1988.
Respondent
registered the <coldwelbanker.com> domain name on May 6, 2002 and
is using the disputed domain name to divert Internet users to a website that
first displays a window
that offers cash rewards and gambling
opportunities. Whether clicking on “OK”
or “Cancel” at this window the users are then redirected to websites located at
the <homegain.com>
and <usseek.com> domain names, which offer real
estate services in competition with Complainant.
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.
Complainant has
established in this proceeding that it has rights in the COLDWELL BANKER mark
through registration with the United
States Patent and Trademark Office and by
continuous use of its mark in commerce for the last thirty years. 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. Respondent has the burden of refuting this
assumption).
The <coldwelbanker.com>
domain name registered by Respondent is confusingly similar to Complainant’s
COLDWELL BANKER mark because the domain name merely
deletes the letter “l” from
Complainant’s mark. The misspelling of
Complainant’s registered mark is insufficient to negate the confusing
similarity of the domain name. See
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency
to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002)
(finding that the domain name <compq.com> is confusingly similar
to Complainant’s COMPAQ mark because the omission of the letter “a” in the
domain
name does not significantly change the overall impression of the mark); see also Hewlett-Packard Co. v. Cupcake City, FA
93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is
phonetically identical to Complainant’s mark satisfies
¶ 4(a)(i) of the
Policy).
Furthermore, the
addition of the generic top-level domain (gTLD) “.com” is irrelevant to
determining Policy ¶ 4(a)(i).
Therefore, the addition of a gTLD to a confusingly similar version of
Complainant’s registered COLDWELL BANKER mark is inadequate
to distinguish the
domain name. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding
that "the addition of the generic top-level domain (gTLD) name ‘.com’ is .
. . without
legal significance since use of a gTLD is required of domain name
registrants").
Thus, the Panel
finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
alleges in the Complaint that Respondent has no rights or legitimate interests
in the <coldwelbanker.com> domain name, which contains a commonly
misspelled version of Complainant’s COLDWELL BANKER mark. Since Respondent failed to respond to the
Complaint, the Panel assumes that Respondent lacks rights and legitimate
interests in the
<coldwelbanker.com> domain name. Furthermore, once Complainant makes a prima
facie case in support of its allegations, the burden shifts to Respondent
to show that it does have rights to or legitimate interests in
the domain name
pursuant to Policy ¶ 4(a)(ii). 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 Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000) (finding that under certain circumstances the mere assertion by
Complainant that Respondent has
no right or legitimate interest is sufficient
to shift the burden of proof to Respondent to demonstrate that such a right or
legitimate
interest does exist).
Moreover, where
Complainant makes the prima facie showing and Respondent does not
respond, the Panel may accept all reasonable allegations and inferences in the
Complaint as true. 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).
Respondent is
using the <coldwelbanker.com> domain name to redirect Internet
users to a website that initially offers gambling opportunities and then
resolves to websites that
offer real estate services that compete with Complainant’s
products and services. Respondent’s use
of a domain name that is confusingly similar to Complainant’s COLDWELL BANKER
mark to redirect Internet users interested
in Complainant’s products and
services to gambling websites and commercial websites that offer products and
services that compete
with Complainant’s business is not a use in connection
with 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 U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that Respondent’s use of
Complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users
to an unrelated business was not a bona fide offering
of goods or services); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's
website and marks, its use of the names was not in
connection with the offering of goods or services or any other fair use); see
also 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 Oly Holigan, L.P. v. Private, FA 95940
(Nat. Arb. Forum Dec. 4, 2000) (finding no rights or legitimate interest in a
misspelled domain name as Respondent was
merely using it to redirect Internet
users to, inter alia, an online casino).
Furthermore,
nothing in the record suggests that Respondent is commonly known by the <coldwelbanker.com>
domain name, and Complainant did not authorize or license Respondent to use
Complainant’s COLDWELL BANKER mark.
Therefore, Respondent has not established rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to
require a showing that one has been commonly known
by the domain name prior to
registration of the domain name to prevail"); 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).
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The <coldwelbanker.com>
domain name resolves to a website that offers real estate services, and
Complainant’s COLDWELL BANKER mark is associated with real
estate
services. Therefore, Respondent is
using a domain name confusingly similar to Complainant’s mark to divert business
from Complainant to Respondent’s
competing website. The Panel finds that Respondent’s registration of the domain name
for the primary purpose of disrupting the business of a competitor
is evidence
of 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 EthnicGrocer.com,
Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7,
2000) (finding that the minor degree of
variation from Complainant's marks suggests that Respondent, Complainant’s
competitor, registered
the names primarily for the purpose of disrupting Complainant's
business).
Respondent is
using the <coldwelbanker.com> domain name, which contains a
misspelled version of Complainant’s COLDWELL BANKER mark, to attract Internet
users interested in Complainant’s
mark to Respondent’s commercial website. Thus, Respondent is using a domain name
confusingly similar to Complainant’s well-known mark to divert Internet users
to Respondent’s
competing website for Respondent’s commercial gain. Such a practice of diversion for commercial
gain through the use of a likelihood of confusion is evidence of bad faith
registration
and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc.
v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent
intentionally attempted to attract Internet users to his website for commercial
gain by creating a likelihood of confusion with Complainant’s mark and offering
the same chat services via his website as Complainant);
see also Identigene, Inc. v. Genetest Lab.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of
the domain name at issue to resolve to a website where
similar services are
offered to Internet users is likely to confuse the user into believing that
Complainant is the source of or
is sponsoring the services offered at the
site); see also Reuters Ltd. v.
Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding bad faith
where Respondent attracted users to a website sponsored by Respondent and
created
confusion with Complainant’s mark as to the source, sponsorship, or
affiliation of that website).
Respondent is
also using the <coldwelbanker.com> domain name to redirect
Internet users interested in Complainant’s COLDWELL BANKER mark to a gambling
website for Respondent’s commercial
gain.
The Panel determines that Respondent’s use of a confusingly similar
domain name to attract Internet users to Respondent’s gambling
websites for
Respondent’s commercial gain is also evidence of bad faith registration
pursuant to Policy ¶ 4(b)(iv). See
Mars, Inc. v. Double Down Magazine,
D2000-1644 (WIPO Jan. 24, 2001) (finding bad faith under Policy ¶ 4(b)(iv)
where Respondent linked the domain name <marssmusic.com>,
which is
identical to Complainant’s mark, to a gambling website); see also Encyclopaedia Britannica Inc. v. Shedon.com,
D2000-0753 (WIPO Sept. 6, 2000) (finding that Respondent violated Policy ¶
4(b)(iv) by using the domain name <britannnica.com>
to hyperlink to a
gambling site).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <coldwelbanker.com> domain name be TRANSFERRED
from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated:
November 15, 2004
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