Verani Realty, Inc. d/b/a Prudential
Verandi Realty, Inc. v. B. Ytagen
Claim Number: FA0207000117020
PARTIES
Complainant is Verani Realty, Inc., Londonberry, NH
(“Complainant”) represented by John F.
Bisson, of Wenger & Cronin, PC. Respondent is B. Ytagen, New Boston, NH (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names
at issue are <prudentialverani.com>,
<prudentialveranirealty.com> and
<prudentialverani-foster.com>,
registered with Network Solutions, Inc.
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.
Judge Karl V.
Fink (Ret.) is the Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 23, 2002; the Forum received a hard copy of the
Complaint on July 24, 2002.
On July 26, 2002,
Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <prudentialverani.com>,
<prudentialveranirealty.com> and
<prudentialverani-foster.com>
are registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the names. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. 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 July 31, 2002,
a Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of August 20, 2002 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@prudentialverani.com, postmaster@prudentialveranirealty.com,
and postmaster@prudentialverani-foster.com by e-mail.
A timely Response
was received and determined to be complete on August 20, 2002.
On September 10, 2002, pursuant to Complainant’s request to have the
dispute decided by a single-member
Panel, the Forum appointed Judge Karl V.
Fink (Ret.) as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant,
Verani Realty, Inc. d/b/a Prudential Verani Realty, has been providing real
estate brokerage services in New Hampshire since 1964.
In 1989,
Complainant joined The Prudential Real Estate Affiliates, Inc. as a
franchisee. Under the franchise
agreement, Complainant was granted a license to use the PRUDENTIAL mark as part
of its business name. It registered the
trade name “Prudential Verani Realty” with the Secretary of State for the State
of New Hampshire and begun conducting its real estate business under that name
starting in 1989.
Marsha W.
Foster, Inc., similarly became a franchisee of The Prudential Real Estate Affiliates
in 1989. It registered the trade name
“Prudential Marsha W. Foster Realtors” and begun using that name in providing
real estate services. Complainant
purchased the assets of Marsha W. Foster, Inc., including the goodwill and the
protected rights in the name in 2001.
Through the long
use and promotion of the business and service marks PRUDENTIAL VERANI REALTY
and PRUDENTIAL VERANI FOSTER REALTY (the “Service Marks”), Complainant has
achieved a tremendous amount of goodwill in those marks. Consumers of real estate services in New
Hampshire, as well as the real estate trade have come to associate the Service
Marks exclusively with Complainant.
On July 5, 2001,
the Respondent, B. Ytgen, registered the domain names <prudentialveranirealty.com>,
<prudentialverani.com>, and <prudentialverani-foster.com>
(the “Domain Names”) with the domain registrar VeriSign, Inc.
Respondent is
not, and never has been, affiliated with Complainant or Prudential Marsha
Foster.
On or about June
25, 2002, Respondent posted a website accessible at each of the Domain
Names. The website criticized the
services allegedly provided by Complainant to Respondent, and included
offensive images.
Complainant,
through its attorney, contacted Respondent and requested that he cease and
desist from his registration and use of the Domain Names.
Respondent
admitted that he deliberately chose domain names that consumers would believe
lead to Complainant’s website in order to increase traffic to his website. He then offered to sell the Domain Names to
Complainant.
For the transfer
of the Domain Names, Complainant offered to reimburse Respondent’s
out-of-pocket registration costs.
Respondent, however, refused this offer stating that the names were far
more valuable on the “open market.”
At some point
after the correspondence, Respondent removed the offensive material accessible
at each of the Domain Names and replaced it with a placeholder stating, “under
construction.”
The Domain Names
are identical to or confusingly similar to Complainant’s Service Marks, which
are protected by common law.
Respondent has
no rights or legitimate commercial interest in the Domain Names. It is well settled that a person’s right to
voice criticism of any entity’s mark is not unbridled. Numerous decisions have held that the use of
a confusingly similar domain name that only incorporated a third party mark for
a critical site and that does not include a communicative element, such as
“sucks” or some other pejorative term, is not a legitimate noncommercial use of
a third party’s mark.
It is inevitable
that many Internet users looking for Complainant’s website will type <prudentialveranirealty.com>,
<prudentialverani.com>, or <prudentialverani-foster.com>
and be misdirected to Respondent’s website.
Respondent admitted that he chose the Domain Names because of the
potential to confuse the searching public into viewing his website
postings.
Respondent’s
misdirection of users to his website not a legitimate use of the Domain Names
and constitutes evidence of bad faith.
Respondent’s registration of multiple domain names that incorporates
Complainant’s Service Marks is additional evidence of bad faith. Respondent’s bad faith is also shown by his
seeking to make a profit from the sale of the Domain Names on the “open
market.”
B. Respondent
Respondent
obtained the “.com” names to tell the world how badly it was treated by the
then Foster Realty, which is now Complainant.
Respondent chose the names so that potential customers would believe it
lead to the web site of Complainant.
Respondent
complied with Complainant’s request and has had the site’s content dropped
leaving only a “under construction” header.
Respondent never
offered to sell the domain names.
Respondent did reflect that perhaps the names were worth more than
Complainant’s $100 offer on the open market.
FINDINGS
For
the reasons set forth below, the Panel finds Complainant has proven that the
domain names should be transferred.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution
Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2) the
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
The Panel finds
based on Complainant’s longstanding use of the two trade names that Complainant
has common law rights to the VERANI REALTY and PRUDENTIAL VERANI REALTY
marks. The ICANN dispute resolution
policy is “broad in scope” in that “the reference to a trademark or service
mark ‘in which the complainant has rights’ means that ownership of a registered
mark is not required–unregistered or common law trademark or service mark
rights will suffice” to support a domain name Complaint under the policy. McCarthy
on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000). See British Broadcasting Corp. v.
Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the Policy “does not
distinguish between registered and unregistered trademarks and service marks in
the context of abusive registration of domain names” and applying the Policy to
“unregistered trademarks and service marks”).
The Panel finds
the <prudentialveranirealty.com> domain name is identical to
Complainant’s PRUDENTIAL VERANI REALTY mark because it incorporates
Complainant’s entire mark and merely adds the generic top-level domain
“.com.” The disputed domain name is
identical because the addition of a generic top-level domain is irrelevant when
determining whether a domain name is identical. See Pomellato S.p.A
v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com>
identical to Complainant’s mark because the generic top-level domain “.com”
after the name POMELLATO is not relevant); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users
searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the
domain name of a particular company will be the company name [or trademark]
followed by ‘.com.’”).
The Panel finds
that <prudentialverani.com> and <prudentialverani-foster.com>
are confusingly similar to Complainant’s marks because they incorporate most of
Complainant’s mark and merely omit the term realty. The omission of word from Complainant’s mark does not create a
distinct mark capable of overcoming a claim a confusing similarity. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name
<asprey.com> is confusingly similar to the Complainant’s “Asprey &
Garrard” and “Miss Asprey” marks); see also WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb.
Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is
confusingly similar to Complainant’s mark, where Complainant holds the WEST JET
AIR CENTER mark).
The Panel also
finds that the <prudentialverani-foster.com> domain name is
confusingly similar because it adds the name of one of Complainant’s real
estate agents to the mark. The addition
of a term that describes Complainant’s business does not create a distinct mark
capable of overcoming a claim of confusing similarity. See Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13,
2000) (finding that Respondent’s domain name <marriott-hotel.com> is
confusingly similar to Complainant’s MARRIOTT mark).
Respondent admits that the domain names in dispute are identical and
confusingly similar to Complainant’s marks.
Complainant has
proven this element as to each of the domain names.
Rights
or Legitimate Interests
The Panel finds
that Respondent has no rights or legitimate interests in the disputed domain
names because it is using confusingly similar and identical domain names to
attract Complainant’s customers to Respondent’s website. The use of domain names that are identical
and confusingly similar to Complainant’s mark in order to attract Internet
users to Respondent’s website is not in relation to a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i). See Big Dog
Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks); see also Toronto-Dominion
Bank v. Karpachev, 188 F.Supp.2d
110, 114 (D. Mass. 2002) (finding that, because
Respondent's sole purpose in selecting the domain names was to cause confusion
with Complainant's website and marks, it's use of the names was not in
connection with the offering of goods or services or any other fair use).
Respondent
is not commonly known by any of the disputed domain names or by the PRUDENTIAL VERANI REALTY marks. Therefore, Respondent has no rights or
legitimate interests in the disputed domain names pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where Respondent was not commonly known by the mark and never applied
for a license or permission from Complainant to use the trademarked name).
Respondent is
not using the disputed domain names for a legitimate noncommercial or fair
use. Respondent is using confusing
similar and identical domain names to attract Complainant’s customers to a
criticism website. The Panel finds that
the use of identical and confusingly similar domain names for a criticism website
is not legitimate noncommercial or fair use pursuant to Policy ¶
4(c)(iii). See Robo Enter., Inc. v. Tobiason, FA 95857
(Nat. Arb. Forum Dec. 24, 2000) (rejecting Respondent’s asserted rights or
legitimate interest in the domain name <roboenterprises-investors.com>,
noting that while the content of Respondent’s website may enjoy First Amendment
and fair use protection, those protections do not create rights or a legitimate
interest with respect to a domain name which is confusingly similar to another’s
trademark); see also Weekley
Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18,
2001) (finding that establishment of a website containing criticism is not a
legitimate use of the <davidweekleyhome.com> domain name because the
disputed domain name is confusingly similar to Complainant's DAVID WEEKLEY
HOMES mark).
Complainant has
proven this element as to each of the domain names.
Registration
and Use in Bad Faith
Complainant has
proven this element as to each of the domain names.
Complainant
has proven each of the required elements as to each of the domain names.
Therefore, it is ordered that the domain names, <prudentialveranirealty.com>,
<prudentialverani.com> and <prudentialverani-foster.com>,
be transferred to Complainant.
___________________________________________________
Judge Karl V. Fink (Ret.), Panelist
Dated: September 20, 2002
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