DECISION

TM Acquisition Corp. v. CowellBanker, Inc. a/k/a John Cowell

Claim Number:  FA0402000241920

PARTIES

Complainant is TM Acquisition Corp. (“Complainant”), represented by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054.  Respondent is CowellBanker, Inc. a/k/a John Cowell  (“Respondent”), 500 Glenwood Circle, Suite 118, Monterey, CA 93940.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <cowellbanker.com>, registered with Register.com.

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.

James A. Carmody, Esq., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 24, 2004; the Forum received a hard copy of the Complaint on February 25, 2004.

On February 25, 2004, Register.com confirmed by e-mail to the Forum that the domain name <cowellbanker.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.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 February 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@cowellbanker.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 February 25, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <cowellbanker.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.

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

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

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

FINDINGS

Complainant filed a registration application for the COLDWELL BANKER service mark on May 17, 2000.  On May 22, 2001, the United States Patent and Trademark Office (“USPTO”) granted Complainant the registration for the COLDWELL BANKER service mark (Reg. No. 2,453,334). The COLDWELL BANKER mark has been used in commerce since February 15, 2000 in connection with mortgage banking services within Class 36. 

Complainant licenses the COLDWELL BANKER mark to Coldwell Banker Real Estate Corporation, which is a franchisor of a system of businesses that promote and assist independently owned and operated real estate brokerage offices.

Respondent registered the disputed domain name <cowellbanker.com> on October 22, 2002. Respondent uses the domain name to operate a website that provides real estate brokerage services.

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

It is established that a complainant has rights in a mark that is registered with the USPTO. In this case, Complainant registered the COLDWELL BANKER mark with the USPTO. Thus, Complainant has established rights in the COLDWELL BANKER service mark. See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the 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); see also 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.”).

Under Policy ¶ 4(a)(i), the determination of whether a domain name is identical or confusingly similar to a mark, in which a complainant has rights, is made by merely comparing the text of the domain name with the text of the mark. See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the issue of identicality or confusing similarity is to be resolved “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”); see also Desktop Media, Inc. v. Desktop Media, Inc., FA 96815 (Nat. Arb. Forum Apr. 12, 2001) (“[F]or the limited purposes of the domain name dispute resolution process[,] a low threshold of proof is all that is required to meet the first element.”).

It has been held that a domain name that contains a mark, but merely deletes letters from the mark renders the name confusingly similar to the mark. In this case, the disputed domain name <cowellbanker.com> has merely deleted the consecutive letters “ld” from Complainant’s COLDWELL BANKER mark.  See State Farm Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June 15, 2000) (finding that the domain name <statfarm.com> is confusingly similar to Complainant's mark); 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 Victoria's Secret v. Internet Inv. Firm Trust, FA 94344 (Nat. Arb. Forum May 9, 2000) (finding the domain name <victoriasecret.com> to be confusingly similar to Complainant’s trademark, VICTORIA’S SECRET).

Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has inopportunely failed to respond to the Complaint, which means that Complainant’s assertions are uncontested. In this light, the Panel is free to infer that Respondent lacks rights to and legitimate interests in the disputed domain name and to make any reasonable inferences from Complainant’s assertions. 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 Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond); see also Vert. 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).

Complainant asserted that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i). Past cases stand for the proposition that the offering of goods or services under a domain name that is identical or confusingly similar to a third-party mark is not bona fide where the domain name is used to sell goods or services that compete with the third-party.  Such use has also been consistently held not to be a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). Thus, Respondent lacks rights and legitimate interests under Policy ¶¶ 4(c)(i) & (iii). See Computerized Sec. Sys., Inc. d/b/a SAFLOK 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).

Complainant has also asserted that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  Indeed, there is no evidence in the record that would support the Panel finding anything to the contrary. 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 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”).

Since Respondent has failed to rebut Complainant’s assertions, which are supported by the evidence, the Panel finds that Respondent lacks rights to and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

Complainant licenses the COLDWELL BANKER mark to the Coldwell Banker Real Estate Corporation, which is the franchisor of businesses that provide real estate brokerage services. Respondent is using the disputed domain name to provide real estate brokerage services, the same type of service that Complainant’s licensee provides.  Therefore, the Panel finds that Respondent and Complainant’s licensee, the Coldwell Banker Real Estate Corporation, are competitors. 

Bad faith registration and use of a domain name can be established if a respondent registered the name primarily for the purpose of disrupting the business of a competitor.  The plain meaning of Policy ¶ 4(b)(iii) does not require that a complainant be the competitor.  In this case, Coldwell Banker Real Estate Corporation qualifies as “a competitor.” The fact that Respondent registered a domain name that is confusingly similar to Complainant’s mark and then proceeded to offer services that directly compete with Complainant’s licensee suggests that Respondent was attempting to siphon customers, who were seeking Coldwell Banker Real Estate Corporation, to its own attached website. The primary effect of such diversion is to disrupt the business of a competitor. Primary effects often evidence primary purposes. Thus, the Panel finds that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor under Policy ¶ 4(b)(iii). See Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the respondent and the owner of the mark, the respondent likely registered the disputed domain name with the intent to disrupt the business of its competitor and create Internet user confusion); 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 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 Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy 4(b)(iii)).  

Complainant has also asserted that Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s well-known service mark as to the source of the website. If true, this assertion would establish that Respondent both registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

Respondent registered a domain name that is confusingly similar to Complainant’s service mark. Respondent also uses the domain name for commercial gain and profit through its real estate brokerage business.  These two facts, taken together, establish that the effect of Respondent’s registration of the name was to attract Internet users to its website by creating a likelihood of confusion with Complainant’s COLDWELL BANKER mark as to the source of the website.  Thus, the question turns on whether Respondent acted with intent. Such an inquiry is determined by the evidence presented to the Panel.  In this case, Respondent has not submitted any evidence and Complainant’s assertions in this regard are left uncontested. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that Respondent’s use of the <saflock.com> domain name to offer goods competing with Complainant’s illustrates Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy 4(b)(iv)); 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).

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

James A. Carmody, Esq., Panelist

Dated:  April 12, 2004

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