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Generic Top Level Domain Name (gTLD) Decisions |
TM Acquisition
Corp. v. [Registrant]
Claim
Number: FA0410000351259
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is [Registrant] (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <century21commercial.com>, registered with
Enom, Inc.
The
undersigned certifies that he or has acted independently and impartially and to
the best of his knowledge has no known conflict
in serving as Panelist in this
proceeding.
Louis
E. Condon as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on October
26, 2004; the National Arbitration Forum
received a hard copy of the Complaint
on October 27, 2004.
On
October 26, 2004, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <century21commercial.com> is registered
with Enom, Inc. and that Respondent is the current registrant of the name. 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 28, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of November 17, 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@century21commercial.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
November 19, 2004, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Louis E. Condon 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <century21commercial.com>
domain name is confusingly similar to Complainant’s CENTURY 21 mark.
2. Respondent does not have any rights or
legitimate interests in the <century21commercial.com> domain name.
3. Respondent registered and used the <century21commercial.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant
holds multiple registrations with the United States Patent and Trademark Office
(“USPTO”) for its CENTURY 21 mark including
Reg. No. 1,063,488 (registered on
April 12, 1977), Reg. No. 1,085,039 (registered on February 7, 1978), Reg. No.
1,304,095 (registered
on November 6, 1984), Reg. No. 1,429,531 (registered on
February 17, 1987) and Reg. No. 2,178,970 (registered on August 4, 1998).
Complainant
licenses its CENTURY 21 mark to Century 21 Real Estate Corporation (“Century
21”). Century 21 is a franchisor of a
system of businesses for the promotion and assistance of independently owned
and operated real estate
brokerage offices.
Century 21 has used the CENTURY 21 mark in the United States
continuously in connection with the offering of real estate brokerage
services
since April 16, 1972. Century 21 also
operates its principal website at <century21.com>.
Century 21
sub-licenses the CENTURY 21 mark to its franchisees, allowing them to use the
CENTURY 21 mark in their real estate brokerage
offices throughout the United
States and at least 26 other countries.
To date, there are approximately 4,100 franchised offices in the United
States and approximately 2,500 franchised offices in other
countries.
Respondent
registered the <century21commercial.com> domain name on May 25,
2002. The domain name resolves to a
website for Fieldstone Realty in Arizona, offering commercial and residential
real estate support services. After numerous
attempts to identify and locate the identity of the Respondent, Complainant has
filed this current action.
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 rights in its CENTURY 21 mark through registration of the marks
with the USPTO. 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 <century21commercial.com>
domain name is confusingly similar to Complainant’s CENTURY 21 mark. Respondent’s domain name combines the
Complainant’s mark with the word “commercial.”
Combining a generic word with Complainant’s registered mark does not
circumvent Complainant’s rights in the mark nor avoid the confusing
similarity
aspect of Policy ¶ 4(a)(i).
Complainant’s CENTURY 21 mark is well known in both the residential and
commercial real estate markets. The
Panel determines that since the word "commercial" has to do with
Complainant’s business, when it is combined with Complainant’s
mark, consumers
are confused and misled. See Space Imaging LLC v. Brownell, 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); see
also Marriott Int’l, Inc. v.
Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that
Respondent’s domain name <marriott-hotel.com> is confusingly similar
to
Complainant’s MARRIOTT mark).
The confusing
similarity between the domain name and Complainant’s mark is accentuated by the
fact that Respondent’s domain name resolves
to a website that offers real
estate services similar to those offered by Complainant. See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636
(Nat. Arb. Forum Mar. 13, 2000) (stating that “likelihood of confusion is
further increased by the fact that the Respondent
and [Complainant] operate
within the same industry”); see also Vivid Video, Inc. v. Tennaro, FA
126646 (Nat. Arb. Forum Nov. 14, 2002) (finding that any distinctiveness
resulting from Respondent’s addition of a generic word
to Complainant’s mark in
a domain name is less significant because Respondent and Complainant operate in
the same industry).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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.”)
Respondent is
using the disputed domain name to redirect Internet users to a website
that offers the same real estate services as those provided by Complainant
under
its mark. The use of a domain name confusingly similar to a registered
trademark to offer services that compete with the mark holder’s
business 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
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); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's site to a competing website).
Moreover, there
is nothing in the record that indicates to the Panel that Respondent is
commonly known by the domain name <century21commercial.com>
pursuant to paragraph 4(c)(ii) of the Policy.
See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(finding that the WHOIS information, and its failure to imply that Respondent
is commonly
known by the disputed domain name, is a 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); see also 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").
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the disputed domain name to divert Internet traffic to a website that
offers services that compete with Complainant
for commercial gain. Respondent’s
use demonstrates that it is attempting to attract Internet users to
Respondent’s website at the
disputed domain name for commercial gain by taking
advantage of the goodwill associated with Complainant’s mark, which evidences
bad faith registration and use under Policy ¶ 4(b)(iv). See America 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).
Accordingly,
the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant
having established all three elements required under the ICANN Policy, the
Panel concludes that relief should be GRANTED.
Accordingly, it
is Ordered that the <century21commercial.com> domain name be TRANSFERRED
from Respondent to Complainant.
Louis E. Condon, Panelist
Dated:
December 3, 2004
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