national arbitration forum

DECISION

RE/MAX International, Inc. v. Horoshiy, Inc. aka Horoshiy

Claim Number:  FA0410000338390

PARTIES

Complainant is RE/MAX International, Inc. (“Complainant”), represented by Nancy L. Dempsey, of RE/MAX International, Inc., 8390 East Crescent Parkway, Suite 600, Greenwood Village, CO 80111.  Respondent is Horoshiy, Inc. a/k/a Horoshiy  (“Respondent”), F.D. Rooseveltweg #518, Curacao, AN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <remaxsuncoast.com>, registered with Nameking.com, Inc.

PANEL

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.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2004; the National Arbitration Forum received a hard copy of the Complaint on October 4, 2004.

On October1, 2004, Nameking.com, Inc. confirmed by e-mail to the National Arbitration Forum that the domain name <remaxsuncoast.com> is registered with Nameking.com, Inc. and that Respondent is the current registrant of the name. Nameking.com, Inc. has verified that Respondent is bound by the Nameking.com, 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 November 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 29, 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@remaxsuncoast.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 7, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 <remaxsuncoast.com> domain name is confusingly similar to Complainant’s REMAX mark.

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

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

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

FINDINGS

Complainant, RE/MAX International, Inc., is in the business of real estate brokerage services. Complainant created and adopted the term RE/MAX and has used it in commerce since at least as early as June 1, 1973.

Complainant holds several trademark registrations with the United States Patent and Trademark Office for the RE/MAX (Reg. No. 1,139,014, issued August 26, 1980; Reg. No., 1,339,510, issued June 4, 1985; Reg. No. 2,403,626, issued November 14, 2000; and Reg. No. 2,468,858, issued July 17, 2001) and REMAX marks (Reg. No. 2,054,698, issued April 22, 1997 and Reg. No. 2,106,387, issued October 21, 1997). Collectively, these marks are known as the REMAX marks. In the United States, independent contractors and sales associates may be given authorization to use the REMAX marks.

Currently, Complainant operates approximately 3,300 offices that offer services in connection with the REMAX marks, as well as approximately 57,000 worldwide sales agents. Of these agents, about 45,000 offer services under the REMAX marks in the United States. Complainant maintains a positive and well-known reputation and is actively involved in philanthropic issues.

Complainant has used the REMAX mark since 1973 in connection with millions of home sales both in the United States and worldwide resulting in trillions of dollars of sales in connection with the REMAX marks. Complainant and its sales agents have invested substantial time and money into the promotion of and advertisement of services offered under the REMAX marks. For example, REMAX operates the largest fleet of hot air balloons used for advertising in the world.

Since April 3, 2003, there has existed a RE/MAX franchise based in Sarasota, Flordia providing real estate-related services under the name “RE/MAX Suncoast Realty.”

Respondent registered the <remaxsuncoast.com> domain name on November 18, 2003.  Respondent uses the disputed domain name to direct Internet users to a website featuring links to various commercial websites, including numerous websites that offer real estate brokerage services directly in competition 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

Complainant has established that it has rights in the REMAX mark through registration with the United States Patent and Trademark Office and through the use of its mark in commerce for the last thirty-two 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).

Respondent’s <remaxsuncoast.com> domain name is confusingly similar to Complainant’s REMAX mark because the domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the geographically descriptive term “suncoast.”  The term “suncoast” refers to, among other things, a geographic destination around Sarasota, Florida.  In fact, Complainant’s Sarasota branch office is called “RE/MAX Suncoast Realty.”  The mere addition of a geographic term does not remove Respondent’s domain name from the realm of confusing similarity with respect to Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to Complainant’s famous mark); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).

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

Rights or Legitimate Interests

Respondent has failed to respond to the Complaint.  Therefore, the Panel accepts all reasonable allegations set forth in the Complaint as true.  See Am. Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003) (finding that the failure to challenge a complainant’s allegations allows a panel to accept all of the complainant’s reasonable allegations and inferences as true); see also Wells Fargo & Co. v. Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a complaint allows a panel to make reasonable inferences in favor of a complainant and accept the complainant’s allegations as true).

In addition, the Panel construes Respondent’s failure to respond as an admission that Respondent lacks rights and legitimate interests in the disputed domain name.  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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29, 2004) (“The failure of Respondent to respond to the Complaint functions both as an implicit admission that Respondent lacks rights to and legitimate interests in the domain names, as well as a presumption that Complainant’s reasonable allegations are true.”).

Furthermore, nothing in the record establishes that Respondent is commonly known by the disputed domain name.  Moreover, Respondent is not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 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).

Additionally, Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  Respondent is using a domain name confusingly similar to Complainant’s mark to direct Internet users to a website containing links to real estate brokerage services that compete with Complainant’s business. See Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that Respondent did not have rights or legitimate interests in a domain name that used Complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 5, 2003) (holding that Respondent’s use of the disputed domain name, a simple misspelling of Complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name); 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 Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Chip Merch., Inc. v. Blue Star Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain names were confusingly similar to Complainant’s mark and that Respondent’s use of the domain names to sell competing goods was illegitimate and not a bona fide offering of goods).

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

Registration and Use in Bad Faith

Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by registering a domain name confusingly similar to Complainant’s mark and using it to market competing products and services.  The disputed domain name fully incorporates Complainant’s REMAX mark and merely adds the geographic indicator “suncoast.”  The fact that the domain name resolves to a site that offers links to real estate brokerage services in competition with Complainant is evidence that Respondent purposely registered such a similar domain name in order to siphon off traffic from unsuspecting Internet users. See 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); see also 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).

By using the disputed domain name to host links offering services that compete with Complainant’s business, Respondent has registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by intentionally attracting, presumably for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s REMAX mark. 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 services as Complainant via his website); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) where Respondent initially used the domain name at issue to resolve to a website offering similar services as Complainant into the same market); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of Complainant).

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

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 <remaxsuncoast.com> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  December 21, 2004

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