Keller Williams Realty, Inc. v. Tessa Sims
Claim Number: FA2205001997684
Complainant is Keller Williams Realty, Inc. (“Complainant”), represented by Henry M. Pogorzelski of K&L Gates LLP, Texas, USA. Respondent is Tessa Sims (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <kwrealestateschools.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2022; the Forum received payment on May 24, 2022.
On May 25, 2022, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <kwrealestateschools.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2022 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@kwrealestateschools.com. Also on May 31, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on June 17, 2022.
Complainant filed an Additional Submission on July 1, 2022.
On June 28, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed dr. Katalin Szamosi 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it is Keller Williams Realty, Inc., a technology and real estate brokerage franchise which allows its franchisees to operate real estate brokerages known as “Market Centers” using Complainant’s trademarks. The Complainant is also a real estate-related educational service provider.
Complainant states that Complainant has rights in the KW mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,146,559, registered March 24, 1998).
The <kwrealestateschools.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark, and added the descriptive phrase “real estate schools” and the “.com” generic top level domain (“gTLD”).
Complainant argues that, Respondent does not have rights or legitimate interests in the <kwrealestateschools.com> domain because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s KW mark. Respondent is a former real estate agent who was formerly associated with one of Keller Williams’ third-party franchisees in Southern California.
Complainant contends that Respondent failed to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the disputed domain to pass itself off as affiliated with Complainant. Respondent’s offer to sale the domain name to Complainant demonstrates that Respondent lacks rights or legitimate interests in the name.
Respondent has registered and uses the <kwrealestateschools.com> domain name in bad faith because Respondent uses the disputed domain name to create bad faith attraction for commercial gain and to disrupt Complainant’s business.
Respondent offered the domain for sale to Complainant in excess of its out-of-pocket costs.
Respondent had constructive and actual knowledge of Complainant’s rights in the KW mark prior to registering the domain due to her employment by a Market Center (licensee of the Complainant).
B. Respondent
Respondent argues that she held a position as a team leader with a licensee of the Complainant (Market Center) until her employment in 2017 was terminated. The Respondent concluded an agreement with the Market Center upon the termination of her employment in which the parties agreed that the <kwrealestateschools.com> domain name (amongst other domain names) was transferred to the Respondent.
Respondent contends that after the termination of her employment she operated her own business for more then five years with various franchisees of the Complainant. Respondent had 15 training location agreements with franchisees of the Complainant. Respondent argues that in the training location agreements she received license to use the trademarks of the Complainant.
Respondent entered into negotiations with the Complainant regarding the transfer of the <kwrealestateschools.com> domain name after a transition period to a new brand, however no agreement was reached.
C. Additional Submissions
Complainant in its additional submission contends the following.
After Complainant confronted Respondent with the wrongful nature of her activities, Respondent rebranded her infringing business, effectively admitting her lack of rights or legitimate interests in the disputed domain name.
Complainant contends that it has no relevance that the Respondent operated her infringing business in conjunction with Complainant’s other franchisees, since none of the franchisees (Market Centers) had, or have, a legal right to sublicense the trademarks of the Complainant.
For the reasons set out below the Panel finds for Complainant and orders a transfer of the Domain Name.
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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant asserts rights in Complainant’s “KW” Marks based on evidence of registration of the marks with the United States Patent & Trademark Office, a national trademark authority. The Panel finds that Complainant has rights in the Complainant’s Marks under Policy¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Here, Complainant provides evidence of its registration with the USPTO for the KW mark (e.g., 2146,559, registered Mar. 24, 1998). See Compl. Annex 5. Therefore, the Panel may find that Complainant has rights in the KW mark under Policy ¶ 4(a)(i).
Complainant argues that the <kwrealestateschools.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark, and added descriptive words and a gTLD. Domain names which incorporate the entire mark are usually considered confusingly similar, while adding a gTLD and descriptive terms generally does not create a sufficient distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”).
Here, Respondent has incorporated the entire KW mark and added the “.com” gTLD, as well as the descriptive phrase “real estate schools.” The addition of the descriptive words may only add to the confusing similarity as it references Complainant’s real estate services. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
The Panel accordingly finds that Complainant has satisfied the first element of the Policy.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in Domain Name to then enable the burden to shift to Respondent to show it does have rights or legitimate interests.
Complainant claims that Respondent does not have rights or legitimate interests in the <kwrealestateschools.com> domain name because Respondent is not commonly known by the disputed domain name and is not associated with Complainant or authorized to use Complainant’s KW mark. Previously, WHOIS information has been used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the guardair.com domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding that the respondent was not commonly known by the disputed domain names where it maintained the domain name registrations on the complainant’s behalf and then appropriated the disputed domain names for itself, without permission from the complainant).
The Panel notes that there is no evidence that the Respondent has been authorized by the Complainant to use Complainant’s KW marks. The Respondent entered into agreements with the franchisees of the Complainant which had no right to sublicense the use of Complainant’s KW marks. Therefore, the Panel concludes that the Complainant never authorized Respondent to use the KW marks and that Respondent’s name also suggests that Respondent is not commonly known by the <kwrealestateschools.com>. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent does not use the <kwrealestateschools.com> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use, as Respondent attempts to create the illusion of an association between the parties. Under Policy ¶¶ 4(c)(i) and (iii), past panels have found no bona fide offering of goods or services, nor any legitimate noncommercial or fair use where the respondent uses the domain name to pass its self off as affiliated with the complainant. See D Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Based on the submitted evidence it can be established that:
(a) the disputed <kwrealestateschools.com> domain name is not sufficiently distinct from Complainant’s mark and Respondent’s resolving webpage features the similar scheme as that featured at Complainant’s webpage;
(b) Respondent uses the disputed domain name to redirect to Respondent’s <agentrealestateschools.com> domain where it offers competing real-estate school related services;
(c) Respondent offered the disputed <kwrealestateschools.com> domain name for to sale, first for $250,000 and then for a “fair market value.”.
Therefore, the Panel finds that Respondent has failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
The Panel accordingly finds that Complainant has satisfied the second element of the Policy.
Complainant argues that Respondent uses the <kwrealestateschools.com> domain in bad faith to create bad faith attraction for commercial gain and to disrupt Complainant’s business. Respondent seeks to attract prospective real estate agents to Respondent’s business by using Complainant’s KW marks in the disputed domain. Respondent’s services (real estate educational services), are identical to Complainant’s services. Complainant asserts that Respondent disrupts its business by using a confusingly similar domain name to redirect internet users to its competing <agentrealestateschools.com>. Past panels have agreed that using a confusingly similar domain name to host competing services or create an affiliation between complainant and respondent use is evidence of bad faith per Policy ¶ 4(b)(iv) and 4(b)(iii). See Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that the respondent took advantage of the confusing similarity between the <machinerytraderparts.com> domain name and the complainant’s MACHINERY TRADER mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also LoanDepot.com, LLC v. Kaolee (Kay) Vang-Thao, FA1762308 (Forum Jan. 9, 2018) (Finding that Respondent’s use of the disputed domain name to offer competing loan services disrupts Complainant’s business under Policy ¶ 4(b)(iii)).
The Panel finds that Respondent uses the disputed domain in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent registered the <kwrealestateschools.com> domain in bad faith because Respondent had constructive and actual knowledge of Complainant’s rights in the KW mark prior to registering the disputed domain name. Complainant argues that Respondent had constructive knowledge given Complainant’s prior registration of the mark with the USPTO and that Respondent is a former employee of one of Complainant’s franchisees. While constructive knowledge alone is not sufficient to establish bad faith, actual knowledge may be found given the name of the domain and previous agreements between the parties and is evidence of bad faith per Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Vita-Mix Management Corporation v. OOO "WG-STAHL", FA 1725713 (Forum May 30, 2017) (“Respondent must have had actual knowledge of the VITAMIX mark because Complainant previously authorized Respondent to distribute its product until Complainant terminated the non-exclusive distribution agreement on January 16, 2015.”).
The Panel finds that Respondent registered the disputed domain in bad faith under Policy ¶ 4(a)(iii).
The Panel accordingly finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <kwrealestateschools.com> domain name be TRANSFERRED from Respondent to Complainant.
dr. Katalin Szamosi, Panelist
Dated: July 12, 2022
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