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Credit Industriel et Commercial S.A. v. Richard J. [2005] GENDND 598 (11 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sutton Group Financial Services Ltd. and Sutton Group Realty Services, Inc. v. Bill Rodger

Case No. D2005-0126

1. The Parties

The Complainants are Sutton Group Financial Services Ltd. and Sutton Group Realty Services, Inc., Vancouver, British Columbia, Canada.

The Respondent is Bill Rodger, Blaine, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <suttonpromo.com> is registered with SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 3, 2005. On February 4, 2005, the Center transmitted by e-mail to SRSplus a request for registrar verification in connection with the domain name at issue. By e-mail dated February 25, 2005, the Respondent informed the Center: “In January 2005, I agreed to sell the domain suttonpromo.com to Sutton Promotional Products Ltd. The sale is effective April l, 2005, and we have agreed to move our content and release the domain by that date.” Signed Bill Rodger. By e-mail dated February 28, 2005, the Center copied the Complainants with the e-mail letter of February 25, 2005, and requested the Complainants to confirm whether the proceedings shall be suspended for the parties to reach a settlement. By e-mail dated March 4, 2005 from the Complainants to the Center, the Complainants advised the Center that the Complainants would like to request the Respondent to provide particulars of the content of the letter of February 25, 2005. There is no indication of the identity of the alleged purchaser Sutton Promotional Products Ltd. or settlement negotiations and the Complainants requested the Center to pursue the proceeding. On March 8, 2005, SRSplus transmitted by e-mail to the Center its verification response confirming that Bill Rodger 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 March 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response April 3, 2005. Pursuant to a request for an extension of time the due date for Response was extended to April 13, 2005.

By e-mail dated March 26, 2005, Bill Rodger, the Registrant of Record, requested that Sutton Promotional Products Ltd. be added immediately below Bill Rodger as registrant. Because the Policy prohibits domain name transfers during the pendency of an administrative proceeding, Paragraph 8(a), Respondent is not permitted to make any changes to the name of the registrant once the proceeding has commenced.

The Response was filed with the Center April 14, 2005.

The Center appointed Ross Carson, Edward C. Chiasson Q.C. and David H. Bernstein as panelists in this matter on May 12, 2005. The Panel finds that it was properly constituted. Each member of 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.

The Panel was advised by the Center on May 13, 2005, that the Complainants requested the opportunity to file a Reply to the Response. After receipt of the electronic version of the Complaint and Response, the Panel issued Procedural Order No. One on May 20, 2005, granting the Complainants 10 days to file a Reply to the Response (until May 30, 2005) and the Respondent 10 days to file a Reply to the Complainants’ Reply (until June 9, 2005). The Panel advised that the Panel decision will follow within 14 days of the date from which the Respondent’s Reply is due. The Panel requested the Parties to provide copies of agreements relating to trademarks or domain names referred to in the Complaint or Reply to the extent they were not attached as Annexes to the Complaint or Reply (the hard copies of which had been received by the Center and sent to the Panelists but not yet received by the Panelists as of that date). The Panel also requested that the Parties consider and provide submissions with respect to Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001–0903.

On June 7, 2005, the Respondent notified the Panel that he did not receive the Complainants’ Reply until June 3, 2005, and he requested an extension of time until June 16, 2005, (10 days) to prepare and file the Reply to Complainants’ Reply. The Panel granted the Respondent an extension of time until June 13, 2005, ten days from Respondent’s receipt of the Reply, to file its Reply to Complainants’ Reply. The Complainants’ Reply was filed with the Center on May 30, 2005. The Respondent’s Reply was filed with the Center very early the morning of June 14, 2005. The Panel, in its discretion, has accepted these filings.

4. Factual Background

The Complainants in this administrative proceeding are Sutton Group Financial Services Ltd. (the “Complainant Sutton Financial”) and Sutton Group Realty Services, Inc. (the “Complainant Sutton Realty”) (collectively, the “Complainants”). The Complainant Sutton Financial is a federal corporation incorporated and subsisting under the laws of Canada, with a head office and principal place of business in Vancouver, British Columbia, Canada. The Complainant Sutton Realty is a federal corporation incorporated and subsisting under the laws of Canada with a head office and principal place of business in Vancouver, British Columbia, Canada.

Founded in 1983, the Complainant Sutton Financial has been in operation for over twenty (20) years, offering real estate agency and brokerage services through a franchise network it operates through its wholly owned subsidiary, the Complainant Sutton Realty. In Canada alone, the Complainant Sutton Financial, commonly known as Sutton to consumers, has established itself as a premier real estate company, with a national real estate network of over 8,200 SUTTON sales associates. The network generates over ten billion CDN (10,000,000,000.00) annually in real estate transactions, and represents over 100,000 clients and their families. The Complainant Sutton Financial’s mortgage funding exceeded CDN$500 million dollars in 2003.

The Complainant Sutton Financial has generated significant franchising revenue. For the year ended June 30, 2003, franchise revenue for the Complainant Sutton Financial totaled CDN$5,730,303, while franchise revenue for 2002 was CDN$5,464,340. Attached as Exhibit 3 to the Complaint is a copy of the Complainant Sutton Financial’s Consolidated Statement of Income from its Annual Report for 2003 indicating total franchise revenue.

According to an article published in the Vancouver Sun “Business BC 100 Fastest Growing Companies”, the Complainant Sutton Financial is one of the top 100 publicly traded companies in British Columbia. Attached as Exhibit 4 to the Complaint, a copy of the rankings and a copy of the Complainant Sutton Financial’s press release, dated March 27, 2004, relating to this article.

As a result of longstanding and widespread use in Canada in the real estate field, trademarks for or incorporating SUTTON are well known in association with real estate agency and brokerage services.

The Complainant Sutton Financial is the owner of 47 Canadian trademark registrations for the word SUTTON, SUTTON in design format, SUTTON and design and SUTTON GROUP; hereinafter SUTTON trademarks. Attached as Exhibits “5A” to “5Z” and “5AA” to “5VV” of the Complaint are copies of the particulars of the Canadian trademark registrations. Many of the Canadian Registrations for the SUTTON trademarks are registered in relation to “real estate agency and brokerage services.” Other Canadian Registrations for the SUTTON trademarks are registered in relation to wares such as: lawn signs, namely signs or temporary placement on the lawn or other portion of lands facing the front, or access way to, or thoroughfare adjoining the lands upon which the sign is placed, arrow signs, namely signs in the shape of an arrow, or bearing an arrow representation as part of the material printed hereon, magnetic signs, commercial and industrial signs for signboards, commercial and industrial corner signs; stationery, namely business cards, letterhead, envelopes, note pads, presentation folders, printed real estate transaction forms, mailing labels, standard drop cards, feature property sheets, personalized brochures, greeting cards. Exhibit “5B” to the Complaint.

Additional Canadian registrations for the SUTTON trademarks are registered in relation to wares including promotional items such as: T-shirts, golf shirts, sweatshirts, sweaters, hats, sun visors, umbrellas, mugs, glasses, pens, key chains, magnets, badges, decals, calendars, teddy bears, pins, posters and balloons, wine bottle labels, jackets, sweatpants, barbecue aprons, crests, watch faces, tie clips, gym bags, briefcases, pencils, letter openers, license plate frames, playing cards, flags, pennants, golf balls, towels. (See Exhibits “5TT, “4UU” and “5VV” to the Complaint.

The SUTTON Canadian trademark registrations include registration in the format of domain names such as SUTTON.COM, “www.sutton.com”, and SUTTON and “www.sutton.com” Design. (See Exhibits “5E”, “5F”, “5H”, “5L”, “5M”, “5X”, and “5Y” to the Complaint.

The Complainant Sutton Realty is the owner of 5 United States trademark registrations for or including SUTTON, SUTTON.COM and SUTTON GROUP. (See Exhibits “5WW” to “5ZZ” to the Complaint).

The Complainants have established a significant Internet presence and regard the Internet as an important part of their business. The Complainant Sutton Financial is the owner of over 40 domain name registrations in which the word SUTTON is the distinctive element of the domain name. Examples of domain names registered by Sutton Financial are <sutton.com>, <suttonadmin.com>, <suttonnewlicense.com>, <suttoncity.com>, <joinsutton.com>, <suttonproperties.com>, <suttonagent.com> and <suttonrealtors.com>. In addition Sutton Financial owns numerous domain names in which SUTTON is the prefix and the name of a city or province in Canada is the suffix. Examples of such domain names are <suttonvancouver.com>, <suttonedmonton.com>, <suttontoronto.com>, <suttonlondon.com>, <suttonmontreal.com> and <suttonnovascotia.com>.

The Complainants’ websites generate significant Internet traffic. For example, in 2003 the website located at “www.sutton.com” generated approximately 17 million hits a month, and approximately 130,000 unique visitors per month. In 2003, the “www.sutton.com” website generated 200 million hits.

5. Parties’ Contentions

A. Complainant

The number of years the Complainants have been in operation and the extent of properties sold by the Sutton Group, now over (CDN 10,000,000,000.00) dollars annually in real estate transactions were reviewed in Paragraph 4 immediately above. The Complainants’ Canadian and United States Registered trademarks and the Complainants’ websites, which are extensively used, were also summarized in Paragraph 4 entitled Factual Background.

In a recent decision Sutton Financial Services Ltd. v. George George.com o/a George Georgopoulos, WIPO Case No. D2004–0335 (Exhibit 15 to the Complaint), involving a SUTTON real estate agent who had registered twenty domain names containing the Complainants’ SUTTON trademark, the panel ordered the transfer of the domain names in dispute to the Complainant. The panel found that the SUTTON Canadian trademarks and domain names had achieved a very high distinctive character in Canada. The panel held that: “Complainant has provided ample evidence of the extensive use and promotion of an impressive family of trademarks and some at least twenty-two related domain names incorporating the distinctive element “SUTTON.” By reason of the more than twenty (20) years of extensive use, high volume of revenues, thousands of sales person associates and visits to its websites, this Panel finds that the trademarks have achieved a very high distinctive character in Canada where both the Complainant and the Respondent are located and that their use and promotion have generated substantial goodwill associated thereto. The Panel concludes that the Complainant has rights in the family of Trademarks.”

The Complainants submit that the Respondent is the President and Director of Promo Media Inc., a British Columbia Company. Attached as Exhibit 6 to the Complaint is a copy of the BC Company Summary for Promo Media Inc.

Through Promo Media, the Respondent offers custom imprinted promotional merchandise bearing third party trademarks to parties seeking to promote their services, such as real estate agents. As noted on his website located at “www.pmbrand.com”, the Respondent offers promotional products bearing the SUTTON trademarks, alongside merchandise bearing the trademarks of the Complainants’ competitors, including RE/MAX, Century 21, Royal Lepage and Coldwell Banker. The Complainants submit that the Respondent is not licensed by the Complainants to use the SUTTON trademarks in association with his business, wares or services.

The types of merchandise offered by the Respondent include, without limitation, imprinted mugs, caps, bags, pens, golf balls, household items and clothing. Attached as Exhibit 7 to the Complaint are printouts from the Respondent’s website located at “www.pmbrand.com”, dated October 23, 2004, which provide an overview of the Respondent’s business.

On August 6, 2003, the Respondent registered the domain name <suttonpromo.com>. Bill Rodger is the Administrative, Billing and Technical Contact. See the results of the Whois search conducted October 23, 2004, attached as Exhibit 1 to the Complaint. The Complainants were unaware of and did not consent to the Respondent’s registration of the domain name in dispute.

The homepage associated with the domain name <suttonpromo.com> is attached as Exhibit 8 to the Complaint. Within the first frame of the homepage is a link to “www.pmbrand.com” the homepage of Promo Media, which is attached as Exhibit 7 to the Complaint. The center top of the “www.suttonpromo.com” homepage features a large representation of the SUTTON logo with the letter “r” in a circle, indicating that the trademark is registered. Canadian trademark registration Nos. TMA 454,315, TMA 454,317 and TMA 454,316 for the SUTTON logo are attached as part of Exhibit 5 to the Complaint. Below the SUTTON logo are the words “Sutton promotional and marketing items to help you to build your real estate business.” Immediately below the above words are two icons, which are entitled “Sutton Stock Items” and “Personalized Items” which resolve to Promo Media sites. Also attached as part of Exhibit 8 to the Complaint are the pages to which the two icons are linked.

Immediately upon becoming aware of the use by the Respondent of the domain name in dispute, the Business Development Officer of the Complainant Sutton Realty, contacted the Respondent. By e-mail dated July 7, 2004, the Complainant requested the transfer of the domain name <suttonpromo.com> to the Complainants. The Complainant also expressed an interest in discussing a possible commercial collaboration with the Respondent with respect to online sale of sutton promotional merchandise. Attached as Exhibit 9 to the Complaint Sutton Realty is a copy of the Complainants’ e-mail correspondence.

In his July 9, 2004, e-mail response to the Complainant, the Respondent indicated that he “was not interested in selling <suttonpromo.com> “at the moment,” and added that he had received inquiries from a third party – a hotel and resort - regarding the availability of the domain name. The Respondent’s, statement about inquiries from third parties left the Complainants with the impression that he was considering selling the domain name in dispute to a third party. Attached as Exhibit 10 to the Complaint is a copy of the Respondent’s, e-mail of July 9, 2004. In this e-mail the Respondent also indicated that he wished to “formalize” an arrangement whereby his company would be recognized as an “approved” provider of promotional items for the Complainants.

By way of correspondence dated July 9, 2004, the Complainants once again requested the assignment of the SUTTON Domain Name, while still expressing an interest in exploring a possible collaboration. The Complainants also expressed their concern that the appearance of the Respondent’s website did not meet with the Complainants’ website graphic standards. Attached as Exhibit 11 to the Complaint is a copy of the Complainants’ correspondence dated July 9, 2004.

At a meeting on July 23, 2004, between the parties, the Complainants restated the positions expressed in its e-mail of July 7, 2004. The Complainant also requested that the domain name in dispute be sold to the Complainant Sutton Realty, failing which the domain name is to be removed and an alternate domain name utilized for the services.

By way of e-mail correspondence dated August 12, 2004, the Respondent rejected the Complainants’ proposal. Attached as Exhibit 12 to the Complaint is a copy of the Respondent’s e-mail correspondence.

The Complainants forwarded e-mail correspondence to the Respondent dated August 12, 2004, once again requesting the transfer of <suttonpromo.com> and the termination of the corresponding website. The Respondent did not respond to the Complainants’ correspondence. Attached as Exhibit 13 to the Complaint is a copy of the e-mail.

Unable to resolve this matter amicably despite significant efforts, the Complainants, through their legal counsel, issued correspondence dated August 23, 2004, to the Respondent, advising same of the Complainants’ rights in the SUTTON trademarks, and requiring that the disputed Domain Name be transferred to them. Attached as Exhibit 14 is as copy of the Complainants’ correspondence dated August 23, 2004.

By way of correspondence dated August 31, 2004, the Respondent indicated that he would not agree to transfer the domain name.

Legal Grounds

Complainants’ Rights

The Complainants rely on their numerous Canadian trademark registrations in which sutton is the distinctive element, which have been used extensively in Canada for 23 years, in association with real estate agency and brokerage services and goods or wares used in the advertising and promoting such services. The Complainants also rely upon the extensive use of its registered domain names, some of which are registered Canadian trademarks, to establish that the trademarks for or including SUTTON are very well known in Canada and distinguish the services and wares associated with trademark registrations. The Complainants rely upon findings in the recent decision in Sutton Group Financial Services Ltd. v.George George.com o/a George Georgopoulos, WIPO Case No. D2004-0335 where the Panel found that the SUTTON trademarks had achieved a very high distinctive character in Canada and their extensive use and promotion have substantial goodwill associated therewith.

Confusingly Similar:

The domain name in dispute <suttonpromo.com> incorporates the whole of the Complainants’ famous SUTTON trademarks, or in some cases, the whole of the distinctive element of the SUTTON trademarks, namely, SUTTON. The fact that the domain name in dispute is followed by the descriptive term “promo”, which under the circumstances appears to stand for “promotional”, does not obviate the likelihood of confusion, since such a suffix is inconsequential to the confusion analysis. In fact, and further to the holding by the Panel in Sutton Group Financial Services Ltd. v. George George. com o/a Georgopoulos, WIPO Case No. D2004–0336, the likelihood of confusion is likely to increase in light of the strength, fame and diversity of the Complainants’ family of SUTTON trademarks.

The Complainants submit that <suttonpromo.com> is identical or confusingly similar to the SUTTON trademarks in which the Complainants have rights.

No Rights or Legitimate Interest:

The Complainants submit that there is no trademark license in place between the Complainants and the Respondent relating to the SUTTON trademarks. The collateral use of the SUTTON trademarks on promotional items sold by the Respondent to Complainants’ authorized real estate agents does not give the Respondent proprietary rights in the Complainants’ SUTTON trademarks.

The Respondent never asked the Complainants for the right to incorporate the distinctive element of the SUTTON trademarks in the domain name <suttonpromo.com>. At no time have the Complainants consented to the registration for the domain name in dispute, which is used in association with the Promo Media business.

The right to a legitimately registered domain name is an exclusive right, and its nature is very different from the right the Respondent has to use the SUTTON trademarks to describe his business. To allow such registrations would mean to allow any licensee, distributor, wholesaler, retailer or agent to register and monopolize Complainants’ trademark as a domain name for its business based upon the mere fact that it sells goods bearing the Complainants’ trademarks.

Registered and used in Bad Faith:

Relying upon subparagraphs 4(b)(iv) and 4(b)(ii) of the Policy, the Complainants respectfully submit that the domain name was registered and is being used in bad faith by the Respondent.

The Respondent registered the domain name in dispute, which is confusingly similar to the SUTTON trademarks, to intentionally attempt to attract, for commercial gain, Internet users to his site by creating a likelihood of confusion with the Complainants’ SUTTON trademarks as to source, sponsorship, affiliation, or endorsement.

By registering <suttonpromo.com>, <remaxstuff.com> and <coldwellpromo.com>, the Respondent has engaged in a pattern of registering domain names incorporating trademarks to which he is not entitled, and has prevented the Complainants from registering the SUTTON trademark as a domain name.

The surrounding circumstances reinforce a finding of bad faith, including the Respondent’s prior knowledge of, and relationship with, the Complainants.

B. Respondent

The Respondent requests the Panel to deny the remedies requested by Complainants.

Response to Statements and Allegations made in the Complaint (Policy, paragraphs 4(a), (b), (c); Rules, paragraph 5)

Not Confusingly Similar:

The Respondent submits that he respects the rights of the Complainants in the SUTTON trademark and in fact supports the proper use and adherence to the Complainants’ graphic standards as communicated to the Respondent by the Complainants.

The Respondent submits that the domain name <suttonpromo.com> is not confusingly similar with the SUTTON trademarks of the Complainants as the viewers of the domain name in dispute and the purchasers of the Respondent’s promotional items are fully aware that they are dealing with an authorized supplier of the promotional items bearing the SUTTON trademarks and not the Complainants, the owner of the SUTTON trademarks.

The Respondent submits that the domain name <suttonpromo.com> is specific to Sutton Promotional Products Ltd., and there would be no confusion on the part of the public with the Complainant business.

Respondent’s Right To and Legitimate Interests in the Domain Name:

The Respondent began the business of offering to sell and selling promotional items bearing the trademarks of the Complainant (Exhibit 7 to the Response) and other companies in the Real Estate industry in Canada, the United States, Great Britain and Australia over fifteen years ago.

The Respondent submits that he began business using branded flyers and catalogues before the Internet was common. Since 1997, with the blessing of several Real Estate companies including the Complainant Sutton Realty, the Respondent offered the same products on websites. The Respondent has sent thousands of flyers, catalogues, faxes and e-mails to the Complainants’ place of business over a fifteen year period and the Complainants are well aware of the business activities of the Respondent. This business activity continues and the content of the Complaint by the Complainants does not parallel the every - day business activity.

The domain name in dispute is not part of the property of the Complainants and holds no relevance to their Real Estate or Financial business activities. The domain name <suttonpromo.com> is specific to Sutton Promotional Products Ltd. and Promo Media. The domain name has no relevance to Sutton Group Financial Services.

The Respondent registered the domain name to support the natural progression of the Respondents’ business activities as a promotional products supplier to persons holding a license or franchise which legally allowed them to order promotional products and materials from suppliers. Commonly known competition and fair practices legislation prevents the Complainants from forcing these licensees and Franchisees to purchase their business supplies from any particular supplier.

The Complainants are using the administrative proceeding as a way to harass the Respondent into paying hidden fees to the Complainants and hijack the Respondent’s rightful Internet domain property and business activity.

Not Registered or Used in Bad Faith:

The Respondent submits that the domain name <suttonpromo.com> is specific to the promotional products business and not specific to the Complainants’ business or SUTTON trademarks.

The Respondent submits that for the past fifteen years the Respondent has sent marketing materials to the Complainants. For the last five years these marketing materials included the Domain Name link or actual Domain Name address. In addition the Respondent has attended the offices of the Complainants, participated in Complainants’ meetings and conferences, mailed flyers monthly to all Complainants’ offices, faxed flyers monthly to all Complainants’ locations, e-mailed specials to Complainants’ offices and personnel and conversed with the Complainants’ principal Scott Shaw regarding the marketing programs and the Domain name in particular.

The Respondent further submits that never in fifteen years have the Complainants objected to the marketing of promotional items bearing the SUTTON trademarks, except to occasionally ask that the Respondent add a fee or amount into the product pricing to be paid back too the Complainant. This was declined since 1994 and came up again with the proposal by the Complainants to the Respondent that the Respondent enter into an agreement to provide promotional items bearing the SUTTON trademarks to the Complainants’ companies. (Letter from Clive Stanley to Bill Rodger, part of Exhibit 8 to the Response). When the proposal was declined the Complainants initiated this proceedings in an attempt to hijack the Respondent’s domain name and the business activity.

The Respondent operates under agreements and ethical business practices in all its dealings. The Complainants’ claims regarding other domain names are untrue. The Respondent operates branded websites under the agreement and blessing of RE/MAX and other companies.

All viewers and buyers of the website associated with the Domain Name in dispute are fully aware that they are dealing with an authorized supplier and not the holder/owner of a trademark or logo. The purchasers of product have the right to use the logo/trademark as they pay the Complainants’ and similar companies licensing fees to use the logos on business cards, signs and promotional materials. This is a legal fact of the licensing of Realtors who must properly disclose their association with companies such as the Complainants for the purpose of completing real estate transactions as an independent contractor.

Reverse Domain Name Hijacking

The Respondent requests the Panel to find against the Complainants for reverse domain name hijacking for the following reasons:

1. The Respondent has supplied directly to the Complainants its franchisees, its managers and its licensed agents promotional products and items imprinted with the Complainants’ registered logos and trademarks since 1990 per agreements titled “Sutton Group Approved Supplier Agreement at the earliest date September 18, 1991 and renewed February 1994. Exhibits 1, 2, 3, 4, 5 and 6 to the Response relate to Sutton Group Realty Services Approved Supplier Agreements between Sutton Group Realty Services Ltd. and Promomedia or Promo Media Inc.

Exhibit l to the Response is a letter dated September 18, 1991 from Sutton Group Realty Services Ltd. to Promomedia, Attention: Bill Rodger, enclosing a fully executed National Approved Supplier Agreement. Exhibits 2 to 5 Acre Sutton Group Realty Services Ltd. approved supplier agreement with Promo Media dated respectively September 1, 1991; August 1, 1991; September 1, 1992 and September 1, 1991. Exhibit 6 to the Response is a Sutton Group National Approved Supplier Agreement between Sutton Group Realty Services Ltd. and Promo Media Inc. dated August 30, 1993.

2. The Respondent submits that no notice of cancellation of the business arrangement between the Respondent and the Complainants has been issued in the fourteen years of business activity.

The Respondent submits that the business activity continues and that the Respondent attended the Complainant’s place of business on March 30, 2005, at the invitation of the Complainant for the purpose of promoting business through the domain name <suttonpromo.com> All materials presented were referenced <suttonpromo.com> and were distributed by the Complainants’ managers to the Complainants’ staff and licensed real estate agents.

3. The Complainant actively has used and purchased material from the Respondent’s websites “www.pmedia.net/sutton” and “www.suttonpromo.com” since their opening and including to day.

4. In paragraph 2 number 11 of a proposal to the Respondent titled Proposal to Promo Media 07232004 and submitted July 23, 2004, the Complainant offered to buy the domain name per quote:

“Suttonpromo.com. ownership to be sold to Sutton Group Realty Services, failing which the domain is to be removed and alternate domain utilized for the services”.

The proposal was to effectively “take over” the domain name and the business of the Respondent.

5. Rather than negotiate in good faith the Complainant is attempting to hijack the domain name and business of the Respondent.

6. A Google search results in finding over 11 million “Sutton” websites. A cursory review turns up other domain names more in conflict with the Complainants claims than the Disputed Domain Name. For example

“www.sutton-realty.com”, Real Estate
“www.susttonre.com”, Seattle Real Estate Company
“www.donsutton.com”, Real Estate Agent
“www.suttonplace.com”, Hotel
“www.donsutton.com”, Real Estate Agent
“www.suttondesigns.com”, software seller
“www.suttonmarketplace.com”, Shop
“www.thesuttongroup.com”, Consulting Firm

Rather than protect its trademark the Complainants are trying to hijack the Domain Name and the Respondent’s business activity.

7. The Respondent has offered to remove the Complainants’ trademark and logo information from the design upon written notice from the Complainants.

Complainants’ Reply to Response

Sutton Promotional Products Ltd.

The Complaint in this proceeding was served on the Respondent on February 3, 2005. On February 23, 2005, the Respondent advised the Center by e-mail that, in January 2005, he agreed to sell the domain name <suttonpromo.com> to an entity identified as Sutton Promotional Products Ltd. (Exhibit 2 to the Complainant’s Reply).

Complainants’ investigations revealed the existence of a corporation registered in the Province of Alberta, Canada on February 7, 2005, subsequent to service of the Complaint on the Respondent. Particulars of Registration of Sutton Promotional Products Ltd. is marked as Exhibit 3 to the Complainants’ Reply to the Response. The Respondent has not disclosed any proprietary interest in Sutton Promotional Products Ltd.

The Complainants submit that the Respondent and Sutton Promotional Products Ltd. are somehow affiliated as both share the same single address in the Response. Marked as Exhibit 4 to the Complainants’ Reply is amended Registration information showing Bill Rodger and Sutton Promotional Products Ltd. as registrants.

The Complainants are the owners of a corporation registered in 1999 in the Province of British Columbia, Canada named Sutton Promotional Products Ltd. (Exhibit 5 to the Complainants’ Reply to the Response).

The Complainants submit that the registration of the Alberta Corporation Sutton Promotional Products Ltd. by the Respondent on February 17, 2005, is highly suspicious as it follows on the heels of the filing of the Complaint. If the parties were affiliated, or if the Respondent had a hand in this corporate registration, the Complainants submit that the Respondent cannot legitimize its domain name registration subsequent to receipt of notice of the Complaint via this route and that such an attempt to legitimize the registration severely impairs a claim of rights.

The Complainants further submit that if the Respondent and Sutton Promotional Products Ltd. were separate, the Respondent’s position is not improved. The domain name was registered in bad faith and cannot be cured by any subsequent transfer. In addition, the corporate name exactly matches the corporate name of one of the Complainants’ related companies. The Complainants also note that it is highly misleading to add another party to the Registrant information, as well as to the style of cause, after notice of a Complaint is received.

The Respondent has taken the position in its Response that <suttonpromo.com> is specific to Sutton Promotional Products Ltd. The Complainant disputes this allegation and submits that in view of the highly distinctive nature of SUTTON trademarks in relation to services and wares associated with brokerage and real estate services, confusion as to source or sponsorship of the domain name in dispute is highly likely.

Rights of the Respondent:

The Complainants submit that the national approved supplier agreements (Exhibits 2 to 6 to the Response) as entered into with legal entities owned by the Respondent, require Promedia to discontinue use of the Sutton Group trademarks upon expiry or termination date of the appointment. The last agreement terminated January 31, 1994. (Exhibit 6 to the Response). The Complainants submit that the Respondent is not entitled to use the SUTTON trademarks either as a trademark or domain name to identify the Respondent’s business. The Complainants further submit that the Respondent is not licensed to use the SUTTON trademarks, but even if he were, such a license would not confer on the Respondent the right to register and use the domain name in dispute.

The Complainants submit that the Respondent’s website located at “www.suttonpromo.com” does not disclose accurately the Respondent’s relationship with the Complainants. The Complainants’ very well known SUTTON logo is displayed throughout the website, including within the first frame of the homepage. As well, the subject website fails to include a disclaimer. These factors falsely suggest that the Respondent’s website is that of the Complainants. Or that the Respondent’s website is the Complainants’ official website, which of course it is not (Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, as quoted in Oki Data Americas, Inc. v. ASD Inc., supra: no bona fide offering where websites use of Complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website).

The Complainants further submit that the Respondent is not currently an approved supplier of promotional items bearing the SUTTON trademarks. In fact, it is the Respondent who stated in his e-mail of July 9, 2004, (Exhibit 10 to the Complaint, second last paragraph) that he wished to “formalize” an arrangement whereby his company was recognized as an approved provider of the Complainants.

The Complainants further submit that the case at hand is significantly different from the Oki Data case: the Respondent is not a reseller, but rather is a supplier of promotional materials that bear the SUTTON trademarks. The Complainants have never licensed the Respondent the right to use the SUTTON trademarks in association with his business and certainly not as part of a domain name. The status of supplier does not confer upon the Respondent the right to use the SUTTON trademarks to promote his services. (Complaint, Paragraph 67).

Domain Name Registration is Recent:

The Complainants submit that the <suttonpromo.com> domain name was registered on August 6, 2003. Accordingly, while the Respondent may have been a supplier of merchandise bearing the SUTTON trademarks for over ten years, the disputed domain name registration is very recent. The Complainants objected to the SUTTON Domain Name soon after they became aware of it, were vigilant in seeking to assert their rights, and have not acquiesced in the use of the disputed domain name. The registration of the domain name in dispute has deprived the Complainants of the opportunity to use this domain name. The Complainants have every intention of using the disputed domain name.

Pattern of Abusive Registrations:

The Complainants submit that the Respondent has claimed that he received the “blessing of RE/MAX and other companies” to register those domain names the Complainants allege have been registered without permission. This statement is unsubstantiated and without any supporting evidence. The domain name <remaxstuff.com>, is part of the alleged pattern of abusive registrations, is no longer being used, and has been replaced with <balloonbrand.com>.

March 30, 2005, meeting with the Complainants:

The Respondent has indicated that he attended the “Complainants (sic) place of business on March 30, 2005, at the invitation of the Complainant for the purpose of promoting business through Suttonpromo.com”. This is not true. While the Complainants cannot be certain, it is possible that the Respondent visited a franchisee of the Complainants on that day. The parties never met as alleged by the Respondent.

Business Practices:

The Complainants deny the Respondent’s allegations that they have been involved in unethical business practices. In any event, the Respondent’s allegations are immaterial to these proceedings.

Reverse Domain Name Hijacking:

The Respondent has taken the position that the Complainants have not negotiated in “good faith” and have attempted to “hijack the domain and business of the Respondent”. The Complainants deny this allegation as can be seen in Exhibit 9, 10, 11 and 13 to the Complaint. The Complainants have attempted to settle this matter amicably. Over a period of two months, the Complainants repeatedly contacted the Respondent in an attempt to settle the matter. Many times, the Respondent did not provide a response; the Complainants continued to seek an amicable solution. The intention was not to require that the Respondent cease as a supplier of SUTTON imprinted merchandise as alleged by the Respondent; the intention was to seek the assignment of the disputed domain name, which the Complainants had every intention of using. This is supported by the correspondence attached to the Complaint.

The Complainants deny that the Complaint was filed in bad faith. The Complainants are the owners of the SUTTON trademarks, which justifies initiating this proceeding.

The Complainants have never licensed the Respondent the right to use the SUTTON trademarks in association with his business and certainly not as part of a domain name.

Respondent’s Reply to Complainants’ Reply

Registration of Sutton Promotional Products:

The Respondent agrees that he informed the Center on February 25, 2005, that Bill Rodger intended to sell the domain name in dispute to Sutton Promotional Products Ltd. The Respondent states that the sale of the domain name in dispute to the Purchaser Sutton Promotional Products Ltd. will be closed upon the completion of this proceeding. The Respondent states that after the sale of the domain name in dispute to Sutton Promotional Products Ltd. the Respondent’s current web content will be replaced with the business information of the purchaser Sutton Promotional Products Ltd.

The Respondent states that he is acting for the Purchaser during this proceeding. The Respondent submits that he should be free to sell the domain name in dispute to any willing buyer as the domain name in dispute does not relate to the Complainants’ business of real estate and financial services.

Rights of the Respondent

The Respondent submits that the trademark SUTTON is not distinctive of the Complainants worldwide. The Respondent submits that Sutton is a common prefix and is not a registered trade name or mark. This is evidenced by the thousands of sutton prefixed entities worldwide, which have no connection to Sutton Group Financial Services Ltd., or Sutton Group Realty Services, Inc. There is no confusion on the part of the public by this. For example, <suttonre.com>, the domain name of a real estate company in Seattle, or <suttonplace.com>, the domain name of a Hotel chain, may be confusing to the public. Other Sutton prefix domain names such as <suttondesigns.com>, the domain name of a software company, or <suttonimpactstudie.com>, the domain name of an artist, or <suttonpromo.com>, the domain name of a promotional products company, are not confusing. The Respondent submits that the word Sutton is common to the trade and the Respondent is not using the Complainants’ Sutton trademarks as the word Sutton is not distinctive of the Complainants.

The Respondent submits that the fact that the owner of Sutton Promotional Products Ltd. was able to incorporate his company with a “sutton” prefix is evidence that the Sutton Group Financial Services Ltd., Sutton Group Realty Services, Inc. does not have the legal right to the prefix. (Exhibit 3 to the Respondent’s Reply)

The Respondent states that, according to the Sutton Group Realty Services Ltd. Approved Supplier Agreement, a format for flyers was provided by the Complainants to the Respondent. This format included the SUTTON trademarks and was approved for use in association with promotional products supplied by the Respondent. The Respondent submits that this practice has been in place for twelve years without any comment by the Complainants. The Respondent only uses the SUTTON trademarks in association with promotional items directed to Complainants’ franchisee holders. No offer to the franchisees is made without Respondent’s contact information.

March 30, 2005, meeting with the Complainants

The Respondent attended at Sutton West Coast Real Estate and the franchise owner is listed as Sutton Group Realty Services, Inc.

The Respondent maintains that the Complainants are trying to take control of the sale of promotional products and have the Respondent add a 15% payment to the Complainants’, which would be hidden from the Complainants’ franchisees. The Respondent alleges that this amounts to an unfair business practice. The Respondent submits that the Complainants are using the “Policy” to try to impose this business practice or hijack the domain name in dispute and set themselves up as a competitor of the Respondent.

The Respondent’s Reply to the Complainants’ Reply was submitted June 14, 2005.

6. Discussion and Findings

A. Identical or Confusingly Similar

Trademark Rights

In the Factual Background, Paragraph 4 above, the Panel has referred to the Complainants’ 47 Canadian trademark registrations for or including SUTTON, the SUTTON trademarks. The Complainants have been in the business of real estate and brokerage services in Canada since 1983. The Complainant Sutton Financial has a national real estate network of over 8,200 SUTTON sales associates. The network represents over 100,000 clients and families.

The Complainants have established a significant Internet presence and regard the Internet as an important part of their business. The Complainant Sutton Financial is the owner of over 40 domain name registrations in which the word SUTTON is the distinctive element of the domain name. The SUTTON Canadian trademark registrations include trademark registrations in the format of domain names such as SUTTON.COM and “www.sutton.com”. The Complainants’ websites generate significant Internet traffic. In 2003 the website located at “www.sutton.com” generated approximately 17 million hits a month, and approximately 130,000 unique visitors per month.

The Panel finds that as a result of long and extensive use of the SUTTON trademarks in Canada in association with real estate and brokerage services, the SUTTON trademarks are well known in Canada and distinguish the Complainants’ business and goods associated with the business. In a recent decision, Sutton Group Financial Services Ltd. v. George George. Com o/a George Georgopoulos, WIPO Case No. D2004-0335, the Panel reached the same result.

The Respondent has referred to online Internet searches in support of an allegation that SUTTON is not distinctive of the Complainants’ throughout the world. Generally, a UDRP proceeding is not an appropriate forum in which to address substantive intellectual property issues, but both the Complainants and the Respondent conduct business in Canada in relation to real estate and brokerage services and promotional items used by real estate companies respectively. The facts do not support the Respondent’s allegation.

Moreover, in Respondent’s now expired Supplier Agreement with Complainants, Respondent acknowledged the validity of Complainants’ trademarks.

Confusingly Similar:

The domain name in dispute <suttonpromo.com> is comprised of the distinctive element SUTTON and the descriptive element promo, which is an abbreviation for promotion or promotional items and the element “.com” which is a TLD indicator.

The addition of descriptive or non-distinctive elements to the distinctive element in the domain name in dispute is immaterial to the confusion analysis. RRI Financial, Inc. v. Roy Chen, WIPO Case No. D2001-1242.

The Panel finds that the domain name <suttonpromo.com> is confusingly similar to the SUTTON trademarks of the Complainants, in particular the distinctive element SUTTON in the trademarks.

B. Rights or Legitimate Interests

The Respondent or legal entities operated by the Respondent were parties to Sutton Group Realty Services Ltd. Supplier Agreements in the years 1991 to 1994. The last such agreement terminated on January 31, 1994. The supplier (Respondent) agreed to discontinue use of the SUTTON trademarks upon expiry or termination of the appointment. In the years following termination of the above noted Agreements, the Respondent and others offered and sold promotional items to Sutton agents bearing the SUTTON trademarks for use in advertising and promoting their relationship with the SUTTON Group. During the years following the expiry of the above noted Agreements, the Respondent was not an approved user of the SUTTON trademarks.

Nevertheless, following the expiration of the Supplier Agreement, Respondent continued to provide SUTTON-branded promotional items to Sutton franchisees. There is no evidence in the record as to whether Respondent continued to pay royalties to Complainants on these materials, as formerly required by the Supplier Agreement, or whether Complainants had actual knowledge that Respondent was continuing to use the SUTTON marks. The Panel is thus unable to determine whether the Parties allowed the Supplier Agreement to continue on a de facto basis, even after it’s expiration. Moreover, Complainants appear willing to allow Respondent to continue to sell SUTTON-branded promotional materials, though it is not clear what the terms of any such permission are.

Although there is thus some uncertainty as to whether Respondent could claim legitimate interests by virtue of the de facto continuation of the Supplier Agreement, an email from Respondent essentially resolved this issue. In an e-mail from the Respondent to the Complainant Sutton Realty, dated July 9, 2005 the Respondent stated: “a natural beginning would be to formalize Promo Media as an approved or preferred provider….” (Exhibit 8 to the Response.) This communication from Respondent constitutes an acknowledgement that it had no contractual right to continue to use the SUTTON marks, and that it was hoping to once again enter into an arrangement (perhaps like the former Supplier Agreement) under which it could be an approved provider of promotional materials to Sutton franchisees. The acknowledgement that it was not, at that time, an approved provider is determinative of the question of legitimate rights. If Respondent was not an approved provider, then it has no legitimate interest in the continued use of the SUTTON marks, whether on promotional materials or as a domain name, except to the extent specifically allowed by the Complainants.

The Respondent made collateral use of the SUTTON trademarks on promotional items for sale to SUTTON agents, but such collateral use does not include the right to use a trademark or a domain name incorporating SUTTON as a trademark or domain name distinguishing the business or goods of the Respondent from those of others.

In The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc., supra, the Panel held that, even if the Respondent were a retail seller of the Complainants’ products, it was not conferred proprietary rights in the Complainants’ marks and was not granted the unfettered right to register a domain name incorporating an owner’s trademark.

When a complainant establishes a prima facie lack of legitimate interest, a respondent may demonstrate a right and legitimate interest in a domain name pursuant to Paragraph 4(c) of the Policy. Paragraph 4(c) lists three circumstances which, if established, will demonstrate rights and legitimate interests in the domain name. Other circumstances without limitation may be relied on by the respondent.

Respondent relies on Paragraph 4(c)(i) of the Policy, which states that it is a legitimate interest if, before any notice to a respondent of the dispute, respondent used or made demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Respondent has informed the Center by e-mail dated February 3, 2005: “In January 2005, I agreed to sell the domain suttonpromo.com to Sutton Promotional Products Ltd. The sale is effective April l1, 2005 and we have agreed to remove our content and release the domain by that date.” In the Complainants’ Reply to the Response, the Complainants demonstrated that the Alberta corporation Sutton Promotional Products Ltd. was not registered in the Province of Alberta until February 17, 2004, two weeks after the Respondent was served with the Complaint in this proceeding. The Respondent attempted to include the Alberta corporation Sutton Promotional Products Ltd. as a second Respondent in this proceeding. The Respondent stated that he will represent Sutton Promotional Products Ltd. in the proceeding. No evidence was filed indicating the nature of the business which Sutton Promotional Products Ltd. will carry on or what information will appear on the website associated with the purchaser of the domain name in dispute. The Respondent advises that he, the seller, will remove content from the current website when the sale is completed.

The sale of the domain name in dispute to a company incorporated after the proceeding is commenced and whose owners and business are unknown do not support a finding of use of the domain name in connection with a bona fide offering of goods and services.

The Respondent, individually, or as a business, has been known as Promedia or Promo Media Inc. The Respondent as an individual, business or other organization has never been commonly known by a domain name including SUTTON.

The Respondent has not established a legitimate non-commercial use or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.

The onus remains on the Complainants to establish that the Respondent has no rights or legitimate interests in respect of the domain name. The Respondent under Paragraph 4(c) of the Policy may demonstrate his rights and legitimate interests in the domain name in responding to the Complaint.

The Panel finds that the Complainants have established that the Respondent has no rights or legitimate interests in respect of the domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith. The four circumstances described in Paragraph 4(b) are not limiting to other circumstances of bad faith registration and use.

Paragraph 4(b)(iv) of the Policy provides that, if the Panel were to find that respondent is using a domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement, such a finding shall be evidence of the registration and use of the domain name in bad faith. DeDietrich Process Systems v. Kemtron Ireland Ltd., WIPO Case No. D2003-0484; Glaxo Group Limited, SmithKlineBeecham Corporation d/b/a GlaxoSimithKline v. Michale Kelly, WIPO Case No. D2004-0262.

The Respondent carries on the business of selling promotional items bearing company logos under the trade name Promo Media. (See Exhibit 7 to the Complaint which shows portions of the web pages associated with “www.pmbrand.com” of Promo Media).

The home page for the domain name <suttonpromo.com> is found at Exhibit 8 to the Complaint. The top center of the home page features a large SUTTON logo. Also within the first frame is a link to the Respondent’s website located at “www.pmbrand.com”.

Below the SUTTON logo is the statement “Sutton promotional and marketing items to help you build your real estate business.” Appearing below the statement are two links in the form of large icons which are entitled “Sutton Stock Items” and Personalized Items.” Pictures of various merchandise bearing the SUTTON trademarks cycle through these two icons. Many of these pages include reference to Promo Media and provide the Promo Media address, phone numbers and Promo Media domain names <pmbrand.com>. Nevertheless, the general impression is that this is a website that is affiliated with Complainants as the SUTTON franchisor.

The Respondent had knowledge of the Complainants’ SUTTON trademarks since at least 1991. The Respondent registered the domain name in dispute on August 6, 2003. The Web Pages associated with the domain name in dispute include a link to the Respondent’s website located at “www.pmbrand.com” as well as icons, which direct the internet user to Promo Media, provide its address, telephone numbers, fax number and domain names other than the domain name in dispute.

The Panel finds paragraph 4(a)(iv) of the Policy is applicable in this case because the Respondent is intentionally attempting to attract for commercial gain, Internet users to his website, by creating a likelihood of confusion with the SUTTON trademarks as to sponsorship, affiliation or endorsement of the website and the products on the Respondent’s website.

Reverse Domain Name Hijacking

Because the Panel has ruled for the Complainants, it need not consider Respondent’s allegation of Reverse Domain Name Hijacking.

7. 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 <suttonpromo.com> be transferred to the Complainant, Sutton Group Financial Services Ltd.

Ross Carson
Presiding Panelist

Edward C. Chiasson, Q.C.
Panelist

David H. Bernstein
Panelist

Dated: June 27, 2005