RE/MAX International, Inc. v. Lorna Kang
Claim Number: FA0207000117325
PARTIES
Complainant
is RE/MAX International, Inc.,
Greenwood Village, CO, USA (“Complainant”) represented by Nancy L. Dempsey, of LeBoeuf,
Lamb, Greene & MacRae LLP. Respondent
is Lorna Kang, Perak, MALAYSIA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <remaxcalifornia.com>,
registered with Iholdings.com.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding.
Hon.
Carolyn Marks Johnson sits as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 30, 2002; the Forum received a hard copy of the
Complaint on July 31, 2002.
On
August 1, 2002, Iholdings.com confirmed by e-mail to the Forum that the domain
name <remaxcalifornia.com> is
registered with Iholdings.com and that Respondent is the current registrant of
the name. Iholdings.com has verified
that Respondent is bound by the Iholdings.com registration agreement and has
thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
August 1, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 21,
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@remaxcalifornia.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
September 10, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks
Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the Forum has discharged its responsibility under Paragraph 2(a) of
the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to
employ reasonably available means calculated to achieve actual notice to
Respondent.” Therefore, the Panel may
issue its decision based on the documents submitted and in accordance with the
ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
allegations in this proceeding:
The
<remaxcalifornia.com> domain name registered by Respondent is
confusingly similar to Complainant’s RE/MAX mark.
Respondent has no rights or legitimate
interests in the <remaxcalifornia.com> domain name.
Respondent
registered and used the <remaxcalifornia.com> domain name in bad
faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant holds numerous trademarks registered
with the United States Patent and Trademark Office (“USPTO”) for the RE/MAX
mark, including, inter alia, Reg. Nos. 1,139,014; 1,339,510 and
2,054,698. Complainant actively uses
the RE/MAX mark in association with real estate brokerage services and
insurance brokerage services, along with denoting ancillary products.
Complainant operates through a network of
franchisees and affiliated independent contractor associates who are authorized
to use the RE/MAX mark in connection with providing real estate brokerage
services. Complainant has used the
RE/MAX mark in connection with its real estate business since at least as early
as 1973.
Complainant’s network is comprised of as many as
4,200 individual offices and its RE/MAX mark has been used in connection with
millions of home sale transactions in the United States and abroad, resulting
in approximately one trillion dollars in sales.
Complainant has spent roughly $3 billion on
worldwide advertisements and promotions for services offered under the RE/MAX
mark. In addition, each authorized
RE/MAX agent spends an average of $5,000. per year on promotional and
advertising activities publicizing the RE/MAX mark.
Complainant operates a portion of its business and
promotions at the <remax.com> website.
Complainant also holds registration rights in numerous other domain
names, including, but not limited to:
<remax.net>, <remax.org>, <remax.us> and
<remaxcommercialbrokerage.com>.
Furthermore, through one of its franchisees, RE/MAX of California &
Hawaii, Inc., Complainant owns registration rights in the domain names
<remax-california.com>, <remax-ca.com>, <remax-ca.net>,
<remax-cahi.com>, and <remax-cahi.net>.
Respondent registered the <remaxcalifornia.com> domain name on
March 23, 2002. Respondent uses the
domain name to direct Internet traffic to a website that displays an
advertisement for a real estate brokerage service unrelated to Complainant. In addition, the website attached to <remaxcalifornia.com> displays links
to online casinos and purports to operate as a search engine.
DISCUSSION
Paragraph 15(a) of the Rules instructs this Panel to
“decide a complaint on the basis of the statements and documents submitted in
accordance with the Policy, these Rules and any rules and principles of law
that it deems applicable.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers appropriate pursuant to paragraph
14(b) of the Rules.
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following
three elements to obtain an order that a domain name should be cancelled or
transferred:
(1) the domain name registered by Respondent
is identical or confusingly similar to a trademark or service mark in which
Complainant has rights; and
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3)
the domain name has been registered and is being used in bad faith.
Complainant has established rights in
the RE/MAX mark through proof of numerous registrations with the USPTO and by
continuous use of the mark since at least 1973.
The domain name registered by Respondent,
<remaxcalifornia.com>, contains Complainant’s entire RE/MAX mark
absent the forward-slash and with the addition of the geographic qualifier
“California.” The omission of a forward
slash in a second-level domain, which is a part of Complainant’s mark, is
insignificant in determining the similarity of the disputed domain name and the
mark in question, because letters, numbers, and hyphens are only permitted in
second level domains. Also, the
addition of a geographic qualifier to Complainant’s mark fails to distinguish
the disputed domain name from the RE/MAX mark.
Therefore, Respondent’s <remaxcalifornia.com> domain name
is confusingly similar to Complainant’s mark.
See Mrs. World Pageants,
Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding
that punctuation is not significant in determining the similarity of a domain
name and mark); see also Chi-Chi’s
Inc. v. Rest. Commentary, D2000-0321 (WIPO June 29, 2000) (finding the
domain name <chichis.com> to be identical to Complainant’s CHI-CHI’S
mark, despite the omission of the apostrophe and hyphen from the mark); see
also CMGI, Inc. v. Reyes,
D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name
<cmgiasia.com> is confusingly similar to Complainant’s CMGI mark); see
also Net2phone Inc, v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the
domain name <net2phone-europe.com> is confusingly similar to
Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(i) has
been satisfied.
Complainant has established its rights
and legitimate interests to the mark contained in its entirety in the domain
name that Respondent registered.
Respondent did not answer Complainant’s assertions that Respondent had
no rights or legitimate interests in the <remaxcalifornia.com>
domain name. Complainant’s assertions
shift the burden to Respondent to affirmatively show such rights and legitimate
interests in the domain name. Since
Complainant’s assertions have gone uncontested, the Panel may presume that
Respondent has no such rights or legitimate interests in the domain name. See Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts
that Respondent has no rights or legitimate interests in respect of the domain,
the burden shifts to Respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name); see also
Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’
failure to respond can be construed as an admission that they have no
legitimate interest in the domain names).
Furthermore, in the absence of a
Response, all reasonable inferences may be drawn in favor of Complainant. See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint”); see also
Vertical Solutions Mgmt., Inc. v.
Webnet-Marketing, Inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Respondent uses the <remaxcalifornia.com>
domain name to resolve to a website that purports to be a search engine. Complainant’s investigation reveals that
upon entering the <remaxcalifornia.com> domain name an Internet
user is diverted to the search engine website where a prominent banner
advertisement pops up. The banner
advertisement relates to the real estate brokerage industry and has no
connection with Complainant. Thus, Respondent
is using the subject domain name to divert Internet traffic to a website that
develops revenue from a real estate entity in competition with
Complainant. Such a use does not
represent a connection with a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i) and it does not constitute a noncommercial fair use under
Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc.,
FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial
use of the domain name to confuse and divert Internet traffic is not a
legitimate use of the domain name); see also 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 FAO Schwarz v. Zuccarini, FA 95828 (Nat.
Arb. Forum Dec. 1, 2000) (finding no rights or legitimate interests in the
domain names <faoscwartz.com>, <foaschwartz.com>,
<faoshwartz.com>, and <faoswartz.com> where Respondent was using
these domain names to link to an advertising website).
No evidence on record shows that
Respondent is commonly known by the <remaxcalifornia.com> domain
name and Respondent has not come forward with evidence to that effect. Furthermore, Complainant has averred and
Respondent has not challenged Complainant’s assertion that Respondent is not a
franchisee of Complainant’s and that Respondent has no authorized permission to
use the RE/MAX mark. Therefore,
Respondent has no rights or legitimate interests in the domain name 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).
Accordingly, the Panel finds that
Respondent has no rights or legitimate interests in the <remaxcalifornia.com>
domain name; thus, Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of the <remaxcalifornia.com>
domain name clearly represents bad faith under Policy ¶ 4(c)(iv). Respondent’s purported search engine
website, to which the domain name resolves, contains banner
advertisements. The very nature of
banner advertisements is to generate revenue for the website owner/operator,
Respondent. Respondent is gaining
commercially from the infringing use of the subject domain name, while at the
same time Respondent is using Complainant’s RE/MAX mark as a means of confusing
Internet users as to Complainant’s affiliation with the purported search engine
website. Prior Panels have consistently
held that such use represents bad faith registration and use under Policy ¶
4(b)(iv). See Am. Online, Inc. v. Tencent Comm. Corp.,
FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent
registered and used an infringing domain name to attract users to a website
sponsored by Respondent); see also Drs.
Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where Respondent directed Internet users seeking
Complainant’s site to its own website for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380
(Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted
users to advertisements).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under the ICANN Policy, the Panel concludes that the requested relief
shall be hereby granted.
Accordingly, it is Ordered that the
domain name <remaxcalifornia.com> be transferred from
Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: September 24, 2002.
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