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National Association of Realtors v. Simo Elbaz [2005] GENDND 1927 (18 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

National Association of Realtors v. Simo Elbaz

Case No. D2005-1019

1. The Parties

The Complainant is National Association of Realtors, Chicago, Illinois, United States of America, represented by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson, United States of America.

The Respondent is Simo Elbaz, Ramat Gan, Israel.

2. The Domain Name and Registrar

The disputed domain name <wwwrealtor.org> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2005. On September 28, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On September 28, 2005, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2005. The Response was filed with the Center on October 23, 2005.

The Center appointed Wolter Wefers Bettink as the Sole Panelist in this matter on November 4, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Procedural Order

On November 2, 2005, Complainant submitted to the Center a “Reply in Support of Complaint”. On November 3, 2005, Respondent submitted an “Objection and Motion to Strike Complainant’s Reply” to the Center.

As set out in many other UDRP decisions, panels have discretion to accept an unsolicited supplemental filing from either party, bearing in mind the obligation to treat each party with equality and ensure that each party is given a fair opportunity to present its case (see De Dietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484, and cases mentioned there). Supplemental filings may be helpful to the Panel if they clarify one or more points relevant to the case. It is then up to the Panel to decide whether to accept the Supplemental filing and, if it does, to grant the Respondent the opportunity to respond. Here, the Panel does not accept the Supplemental filing of Complainant since it is not relevant to deciding the case.

5. Factual Background

The following facts are established, based on the evidence provided or on uncontested submissions of one of the Parties.

Complainant is the National Association of Realtors.

Complainant owns a number of trademark registrations and applications for the service marks REALTOR and REALTORS, and service marks that contain these elements, in many countries in and outside the United States, including Israel (registration date December 22, 1999). Complainant has registered the following domain names:

- <realtor.org> (on March 16, 1996);

- <realtors.org> (on August 3, 1995).

Respondent has registered the domain name <wwwrealtor.org> on September 22, 2002.

6. Parties’ Contentions

A. Complainant

Complainant states that it uses the trademark REALTOR to identify its members engaged in the brokerage of real estate since 1916.

Complainant further states that it operates its principal member website at “www.realtor.org”. This site offers a variety of on-line reference services, relating to the National Association of Realtors. Complainant states that, together with its licensees, it has spent a considerable amount of money to advertise and promote services under the REALTOR trademarks throughout the United States and abroad. As a consequence of the use, advertising and promotion, the REALTOR trademarks would have become well-known throughout the world and possess a strong secondary meaning signifying Complainant and its association’s services.

Complainant states that Respondent must be considered to have known the REALTOR trademarks, since Complainant’s REALTOR marks have a strong reputation and are widely known throughout the world and since it was registered with the United States Patent and Trademark Office in 1950.

Complainant submitted print-outs of Respondent’s website which show that Respondent uses the <wwwrealtor.org> domain name to host a web page containing links to various commercial websites which offer various goods and services, including on-line banking, foreclosures, mortgage services and real estate training.

Complainant states that the domain name <wwwrealtor.org> is virtually identical or confusingly similar to Complainant’s REALTOR marks, as it is composed of Complainant’s REALTOR mark with the prefix “www”, which is insufficient to differentiate the domain name from Complainant’s mark.

Complainant further states that Respondent has no rights or legitimate interests in respect of the domain name <wwwrealtor.org>. It has not licensed or otherwise permitted Respondent to use the REALTOR marks or to apply for or use any domain name incorporating those marks.

According to Complainant, Respondent is not commonly known by the domain name <wwwrealtor.org> and has not acquired any trademark or service mark right to such name.

Complainant further asserts that Respondent has registered and uses the <wwwrealtor.org> domain name in bad faith, as specified in paragraph 4(a) of the Policy, amongst others by using the domain name to intentionally divert traffic away from Complainant’s “www.realtor.org” website. According to Complainant, the use of a domain name that is a close misspelling of Complainant’s trademark, to host a website consisting of links to other commercial websites, constitutes “typo-squatting” or “typo-piracy”.

Complainant asserts that Respondent would have engaged in the practice of “cyber-squatting” and in this context refers to various WIPO and NAF UDRP decisions, where Respondent was found to have engaged in various types of “typo-piracy”, and was ordered to transfer the domain names in question.

B. Respondent

Respondent states that it has rights or legitimate interest in respect of the domain name, relying on paragraph 4(c)(i) of the Policy. Respondent registered the domain name before notice of the dispute (on September 22, 2002) and asserts that it uses the domain name in connection with a bona fide offering of goods or services, i.e. a web page that offers information on various items. Respondent also relies on paragraph 4(c)(ii) of the Policy by stating that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. According to Respondent, there is nothing on the website to divert consumers from Complainant or to tarnish the mark REALTOR.

According to Respondent, the domain name at issue is not registered and used in bad faith as set out in paragraph 4(b) of the Policy. Respondent asserts that it has registered and used the domain name for an informational web page offering various goods and services, with no reference to Complainant. Furthermore, according to Respondent only a few of these goods and services have an (in)direct connection to real estate, Complainant’s business.

7. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the trademark and the domain name are confusingly similar.

The dominating element of the domain name <wwwrealtor.org> is REALTOR, which is identical to Complainant’s trademark REALTOR. The suffix “www” is the well known acronym for “world wide web”, and is a common prefix to the domain name in an URL for a web page on the Internet. The letters “www” have no distinguishing capacity in the context of domain names. In fact, in the context of domain names, the letters “www” have the effect of focusing particular attention on the word succeeding them, in this case the word “REALTOR” (see WIPO Case No. D2000-0441 Reuters Ltd. v. Global Net 2000, Inc.; WIPO Case No. D2003-0530 Bellsouth Intellectual Property Corporation v. Simo Elbaz).

Respondent has not disputed that Complainant owns a large number of REALTOR trademarks in many countries worldwide and that this trademark enjoys a wide reputation.

On these grounds, the Panel concludes that <wwwrealtor.org> is confusingly similar to Complainant’s trademarks within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel finds that Respondent does not have any rights or legitimate interest in the domain name at issue, as set out in paragraph 4(c) of the Policy.

First, the registration and use of the domain name <wwwrealtor.org> is a clear case of “typo-piracy” or “typo-squatting”, which does not qualify as a bona fide offering of goods or services, whatever these goods or services offered at that site may be (see National Association of Professional Baseball Leagues, Inc., d/b/a Minor League Baseball v. John Zuccarini, WIPO Case No. D2002-1011).

Secondly, Respondent does not make a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.

The domain name at issue automatically directs to a URL which is used for a portal on which sponsored links are offered, which shows commercial use of the domain name. Furthermore, the use of a ‘typo’-domain name is in itself evidence of the intention of Respondent to take advantage of consumers’ known disposition to misspell domain names. Thus, Respondent misleadingly diverts consumers which are looking for information offered by Complainant to the website of Respondent.

Finally, Respondent did not provide any evidence that it has been commonly known by the domain name.

C. Registered and Used in Bad Faith

The Panel finds that Respondent has registered and used the domain name in bad faith, as set out in paragraph 4(c)(iv) of the Policy:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”

As set out above, Respondent clearly registered and uses the misspelled domain name to attract traffic to its website on which sponsored links are offered. This is done at the expense of Complainant, by creating a likelihood of confusion with Complainant’s REALTOR trademarks (that are registered in many countries world-wide) as to the source, sponsorship, affiliation or endorsement of Respondent’s website or location or product or services offered on Respondent’s website. This is supported by the fact that Respondent has a history of obtaining domain names that are misspellings of trademarks, including the domain names <wwwmovado.com> and <wwwbellsouth.net> (WIPO Case No. D2004-1029, Movado LLC v. Sino Elbaz and Bellsouth Intellectual Property Corporation v. Simo Elbaz, WIPO Case No. D2003-0530).

8. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwrealtor.org> be transferred to the Complainant.

Wolter Wefers Bettink
Sole Panelist

Dated: November 18, 2005