CB TM LLC and Coldwell Banker Real Estate LLC v. Rahul Rahul
Claim Number: FA0904001255841
Complainant is CB TM LLC and Coldwell Banker Real Estate LLC (“Complainant”), represented by Joan
T. Pinaire,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <coldwellbankerfirstrealty.com>, registered with Red Register, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2009; the National Arbitration Forum received a hard copy of the Complaint on April 6, 2009.
On April 17, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <coldwellbankerfirstrealty.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, 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 April 22, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 12, 2009 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@coldwellbankerfirstrealty.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 15, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <coldwellbankerfirstrealty.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
2. Respondent does not have any rights or legitimate interests in the <coldwellbankerfirstrealty.com> domain name.
3. Respondent registered and used the <coldwellbankerfirstrealty.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, CB TM LLC, owns the COLDWELL BANKER mark and has licensed Complainant, Coldwell Banker LLC, to use the COLDWELL BANKER mark. These entities will hereafter be collectively referred to as Complainant. Complainant operates a real estate business through numerous franchise agreements. Complainant registered its COLDWELL BANKER mark with the United States Patent and Trademark Office (“USPTO”) on May 12, 1981 (Reg. No. 1,154,155).
Respondent registered the <coldwellbankerfirstrealty.com> domain name on March 16, 2007. Respondent’s disputed domain name resolves to a website displaying adult-oriented content.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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 registered its COLDWELL BANKER mark with the
USPTO on May 12, 1981. The Panel finds
Complainant’s registration sufficiently establishes its rights in its COLDWELL
BANKER mark pursuant to Policy ¶ 4(a)(i). See
Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”); see also
Complainant argues that Respondent’s <coldwellbankerfirstrealty.com> domain name is confusingly
similar to Complainant’s COLDWELL BANKER mark pursuant to Policy ¶
4(a)(i). Respondent’s disputed domain
name contains Complainant’s mark in its entirety, adds the generic term “first,”
the descriptive term “realty,” and adds the generic top-level domain “.com.” The Panel finds that the additions of a
generic term and a descriptive term with an obvious relationship to a
complainant’s business creates a confusing similarity between the disputed
domain name and the complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the
complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which
is an obvious allusion to complainant’s business.”); see also Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937
(Nat. Arb. Forum Nov. 18, 2005) (holding that the addition of both the word “advisors”
and the gTLD “.com” did not sufficiently alter the disputed domain name to
negate a finding of confusing similarity under Policy ¶ 4(a)(i)). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a registered mark. See Trip
Network Inc. v. Alviera, FA 914943
(Nat. Arb. Forum Mar. 27, 2007)
(concluding that the affixation of a gTLD to a domain name is irrelevant to a
Policy ¶ 4(a)(i) analysis); see also Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level
domain “.com” is insufficient to differentiate a disputed domain name from a
mark). Therefore, the Panel finds that
Respondent’s <coldwellbankerfirstrealty.com>
domain name
is confusingly similar to Complainant’s COLDWELL BANKER mark pursuant to Policy
¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent does not possess rights or legitimate interests in the disputed domain name. Complainant is required to produce a prima facie case that supports its allegation. The burden of proof then shifts to Respondent to contradict Complainant’s allegations. The Panel finds Complainant has established a sufficient prima facie case. Respondent has failed to submit a Response to these proceedings, thus the Panel may infer Respondent lacks rights and legitimate interests in the disputed domain name. The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Euromarket Designs, Inc. v. Domain For Sale VMI, D2000-1195 (WIPO Oct. 26, 2000) (“In the absence of direct evidence, the complainant and the panel must resort to reasonable inferences from whatever evidence is in the record. In addition . . . Paragraph 14(b) of the Rules [authorizes] a panel to draw such inferences from respondent’s failure to respond ‘as it considers appropriate.’”).
Complainant contends Respondent is not commonly known by the disputed domain name. The WHOIS information reflects Respondent is known as “Rahul Rahul,” and Complainant states it has not authorized Respondent to use its COLDWELL BANKER mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent is using the disputed domain name to display adult-oriented content. The Panel finds Respondent’s use is not 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). See Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent presumably receives compensation in return for its use of the confusingly similar disputed domain name to display adult-oriented content. The Panel finds Respondent is attempting to profit by creating confusion amongst Internet users as to Complainant’s affiliation with the disputed domain name. Thus, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”).
Furthermore, the Panel finds Respondent’s use of the disputed domain name to display adult-oriented content is in itself evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding bad faith where the respondent linked the domain name in question to websites displaying banner advertisements and adult-oriented material); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <coldwellbankerfirstrealty.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: May 28, 2009
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