DECISION

RE/MAX International, Inc. v. Lorna Kang

Claim Number:  FA0403000245984

PARTIES

Complainant is RE/MAX International, Inc. (“Complainant”), represented by Shelley K. Barton, of Greenberg Traurig LLP, 1200 17th Street, Ste. 2400, Denver, CO 80202.  Respondent is Lorna Kang (“Respondent”), P.O Box 21, Telok Intan, Perak, 36009, Malaysia.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <remaxoregon.com> and < remaxontario.com>, registered with iHoldings.com.

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 (the "Forum") electronically on March 18, 2004; the Forum received a hard copy of the Complaint on March 22, 2004.

On March 19, 2004, iHoldings.com confirmed by e-mail to the Forum that the domain names <remaxoregon.com> and < remaxontario.com> are registered with iHoldings.com and that Respondent is the current registrant of the names. iHoldings.com has verified that Respondent is bound by the iHoldings.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 March 24, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 13, 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@remaxoregon.com and postmaster@remaxontario.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 April 22, 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.

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 <remaxoregon.com> and < remaxontario.com> domain names are confusingly similar to Complainant’s REMAX mark.

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

3. Respondent registered and used the <remaxoregon.com> and         <remaxontario.com> domain names in bad faith.

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

FINDINGS

Complainant, RE/MAX, 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, RE/MAX 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.

Complainant’s main website is located at the <remax.com> domain name. Complainant has also registered the domain names <remax.org>, <remax.net>, <remaxcommercialbrokerage.com> and <remax-oregon.com>. Furthermore, Complainant, through it’s Ontario, Canada and Advantage Realty franchisees, has also registered the domain names <remax-oa.com> and <remax-advantage-on.com>.

Respondent registered the <remaxoregon.com> and <remaxontario.com> domain names on March 23, 2002 and April 7, 2002, respectivly. Respondent is using the domain names to redirect Internet users to commercial websites and search engines that offer real estate services, as well as pop-up advertisements for casino-related websites.

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 <remaxoregon.com> and <remaxontario.com> domain names are confusingly similar to Complainant’s REMAX mark because the domain names incorporate Complainant’s mark in its entireity and only deviate with the addition of the geographic terms “Oregon” and “Ontario.” The mere addition of geographic terms does not remove Respondent’s domain names from the realm of confusing similarity with respect to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); 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); see also 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).

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

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the disputed domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests once Complainant establishes a prima facie case 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 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 name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, the Panel may accept all reasonable allegations and inferences in the Complaint as true because Respondent has not submitted a Response. 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 Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”).

Respondent is using the <remaxoregon.com> and <remaxontario.com> domain names to divert Internet traffic intended for Complainant to commercial websites and search engines that offer real estate services in competition with Complainant’s services, as well as unrelated pop-up advertisements for casino-related websites. Respondent’s use of domain names that are confusingly similar to Complainant’s REMAX mark to redirect Internet users interested in Complainant’s services to commercial websites that offer services in direct competition with Complainant, as well as unrelated pop-ups, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); 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); see also Winmark Corp. v. In The Zone, FA 128652 (Nat. Arb. Forum Dec. 6, 2002) (finding that Respondent had no rights or legitimate interests in a domain name that used Complainant’s mark to redirect Internet users to a competitor’s website).

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <remaxoregon.com> and <remaxontario.com> domain names. Thus, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See 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 Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name nor using the domain name in connection with a legitimate or fair use).

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

Registration and Use in Bad Faith

Respondent registered the domain names for commercial gain. Respondent’s domain names divert Internet users wishing to search under Complainant’s REMAX mark to Respondent’s commercial websites through the use of domain names confusingly similar to Complainant’s mark. Furthermore, Respondent is unfairly benefiting from the goodwill associated with Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of confusingly similar domain names evidences bad faith registration and use pursuant to 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 eBay, Inc v. Progressive Life Awareness Network, D2001-0068 (WIPO Mar. 16, 2001) (finding bad faith where Respondent is taking advantage of the recognition that eBay has created for its mark and therefore profiting by diverting users seeking the eBay website to Respondent’s site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the <remaxoregon.com> and <remaxontario.com> domain names for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s websites that directly compete with Complainant by offering real estate services similar to Complainant’s services. Registration of a 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 Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); 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); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion).

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 <remaxoregon.com> and < remaxontario.com> domain names be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr., Panelist

Dated:  April 30, 2004

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