TM Acquisition Corp. v. Sign Guards a/k/a
William Moore
Claim Number: FA0211000132439
PARTIES
Complainant
is TM Acquisition Corp., Las Vegas,
NV (“Complainant”) represented by Kathryn
S. Geib. Respondent is Sign Guards a/k/a William Moore,
Wixom, MO (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com>, registered with Register.com.
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.
James
A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 8, 2002; the Forum received a hard copy of the
Complaint on November 11, 2002.
On
November 5, 2002, Register.com, Inc. confirmed by e-mail to the Forum that the
domain names <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> are registered with Register.com,
Inc. and that Respondent is the current registrant of the names. Register.com,
Inc. has verified that Respondent is bound by the Register.com, 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
November 21, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 11, 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@century21alabama.com,
postmaster@century21alaska.com, postmaster@century21arkansas.com,
postmaster@century21california.com, postmaster@century21connecticut.com,
postmaster@century21idaho.com, postmaster@century21iowa.com,
postmaster@century21kansas.com, postmaster@century21kentucky.com,
postmaster@century21louisiana.com, postmaster@century21maryland.com,
postmaster@century21michigan.com, postmaster@century21minnesota.com,
postmaster@century21mississippi.com, postmaster@century21missouri.com,
postmaster@century21montana.com, postmaster@century21nebraska.com,
postmaster@century21nevada.com, postmaster@century21newmexico.com,
postmaster@century21northcarolina.com, postmaster@century21northdakota.com, postmaster@century21oklahoma.com,
postmaster@century21oregon.com, postmaster@century21pennsylvania.com,
postmaster@century21rhodeisland.com, postmaster@century21southcarolina.com,
postmaster@century21tennessee.com, postmaster@century21texas.com, postmaster@century21virginia.com,
postmaster@century21westvirginia.com, postmaster@century21wyoming.com and
postmaster@century21southdakota.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
December 26, 2002, pursuant to Complainant’s request to have the dispute
decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following
assertions:
Respondent’s
<century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names are confusingly similar to Complainant’s registered CENTURY
21 mark.
Respondent does not have any rights or legitimate
interests in the disputed domain names.
Respondent registered and used the disputed
domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, TM Acquisition Corp., holds numerous
trademark registrations for variations on the CENTURY 21 mark, including five
for the CENTURY 21 word mark (e.g. U.S. Reg. No. 1,063,488, registered
on April 12, 1977). Complainant licenses these marks to its licensee, Century
21 Real Estate Corporation, who in turn operates a franchise buisness for the
promotion and assistance of independently owned and operated real estate
brokerage offices. Currently, there are approximately 4,200 franchised offices
in the United States and approximately 2,400 franchised offices in other
countries, all licensed to operate under the CENTURY 21 mark.
Respondent, Sign Guards a/k/a William
Moore, is not licensed or authorized to use Complainant’s CENTURY 21 mark for
any purpose. Respondent registered the <century21alabama.com>, <century21arkansas.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names on April 5, 2000 (the “April 2000 Domain Names”).
Respondent has made no use of these domain names since their registration. Respondent registered the <century21oregon.com> domain name on May 19, 2002, and has failed
to post any original content on this website as well.
Respondent
registered the <century21alaska.com>, <century21california.com>, <century21michigan.com>, <century21montana.com>, <century21tennessee.com>, <century21texas.com> and <century21virginia.com> domain names
on July 9, 2002 (the “July 2002 Domain Names”). These domain names resolve to a
web portal page with links to various other websites, including websites with
subject matter pertaining to “real estate” and “home loans.”
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 the 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.
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 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.
Identical and/or Confusingly Similar
Complainant has established rights in the
CENTURY 21 mark through proof of registration on the Principal Register of the
United States Patent and Trademark Office.
All of the disputed domain names are
confusingly similar to Complainant’s CENTURY 21 mark. For each domain name,
Respondent has appropriated Complainant’s mark in its entirety, and merely
added the name of one of the fifty United States. The dominant feature of each
of the disputed domain names is Complainant’s mark, not the addition of a state
name; each is therefore found to be confusingly similar to Complainant’s mark. See
Net2phone Inc, v. Netcall SAGL,
D2000-0666 (WIPO Sept. 26, 2000) (finding that the Respondent’s registration of
the domain name <net2phone-europe.com> is confusingly similar to
Complainant’s mark…"the combination of
a geographic term with the mark does not prevent a domain name from being found
confusingly similar"); see also Wal-Mart Stores, Inc. v. Walmarket Canada,
D2000-0150 (WIPO May 2, 2000) (finding that the domain name,
<walmartcanada.com> is confusingly similar to Complainant’s famous mark).
Accordingly, the Panel finds that the
disputed domain names are all confusingly similar to Complainant’s registered
CENTURY 21 mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
In lieu of a response, Complainant can
meet is burden of showing that Respondent has no rights or legitimate interests
in the disputed domain names through a showing that the elements of Policy ¶
4(c)(i)-(iii) are inapplicable to Respondent. At that point, the burden will
shift to Respondent to rebut Complainant’s allegations, and without a response
to rely upon, the result will be a finding for Complainant. 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).
Through its lack of response to the
Complaint, Respondent not only fails to meet its burden, but has also made a
tacit assertion that it has no rights or legitimate interests in the disputed
domain names. See Am. Online, Inc.
v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or
legitimate interests where Respondent fails to respond); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
Respondent has
not used either the April 2000 Domain Names or the <century21oregon.com>
domain name since their registration. By failing to utilize these domain names,
Respondent is not making a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶
4(c)(iii). See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000)
(finding no rights or legitimate interests where Respondent failed to submit a
Response to the Complaint and had made no use of the domain name in question); see
also Vestel Elektronik Sanayi ve
Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”).
Respondent has also failed to use the <century21oregon.com> domain
name since its registration over six months ago; while the time frame involved
is substantially shorter, this domain name falls under the same analysis above.
Respondent has
used the July 2002 Domain Names, but has used them in a manner that does not
reflect rights or legitimate interests in the domain names. Respondent
appropriated Complainant’s CENTURY 21 mark and used it to redirect Internet
users to a website that hosts links to websites offering products in
competition with Complainant. Respondent’s diversionary uses alone would deny
it the protections of Policy ¶¶ 4(c)(i) and (iii); Respondent’s diversion to
websites of Complainant’s competitors only reinforces this conclusion. See
Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or
legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website); 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 Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding
no rights in the domain name where Respondent has an intention to divert
consumers of Complainant’s products to Respondent’s site by using Complainant’s
mark).
Respondent’s
WHOIS information reveals that it is known by the name “Sign Guards” or “William Moore.”
Complainant’s unconsted allegations attest to the fact that Respondent is not
“commonly known by” any derivative of the CENTURY 21 mark, or that it is
commonly known by the name of any of the 50 United States in conjunction with
that mark. The Panel finds Policy ¶ 4(c)(ii) inapplicable to Respondent. See
Vestel Elektronik Sanayi ve
Ticaret AS v. Kahveci, D2000-1244 (WIPO Nov. 11, 2000) (finding that
“merely registering the domain name is not sufficient to establish rights or
legitimate interests for purposes of paragraph 4(a)(ii) of the Policy”); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16,
2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has
been commonly known by the domain name prior to registration of the domain name
to prevail").
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶
4(a)(ii).
Registration and Use in Bad Faith
Respondent
registered 24 of the infringing domain names on April 5, 2000. On May 19, 2002,
Respondent registered an additional infringing domain name, and shortly after
this registered an additional 7 infringing domain names. Each registration
incorporated in its entirety Complainant’s CENTURY 21 mark. These registrations
of infringing domain names prevent Complainant from reflecting its mark on the
Internet, and the fact that Respondent performed these registrations 32 times
evidences a pattern of such conduct permitting the Panel to conclude that
Respondent registered and used each of the disputed domain names in bad faith
pursuant to Policy ¶ 4(b)(ii). See Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple
domain names in a short time frame indicates an intention to prevent the mark
holder from using its mark and provides evidence of a pattern of conduct); see
also BIC Deutschland GmbH & Co.
KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the Respondent
violated ¶ 4(b)(ii), as revealed by the number of other domain name
registrations incorporating others’ trademarks and the fact that the domain
names in question do not link to any online presence or website); see also Harcourt, Inc. v. Fadness, FA 95247
(Nat. Arb. Forum Sept. 8, 2000) (finding that registration of more than one
domain name that infringes on another’s registered mark(s) supports the
inference that Respondent knew of Complainant’s marks upon registering the
domain names; and the registration of multiple domain names that infringe on
Complainant’s trademark(s) is evidence of a pattern of conduct).
Respondent’s
failure to develop the April 2000 Domain Names, in light of the fact that each
incorporates Complainant’s CENTURY 21 mark, permits the Panel to conclude that
those registrations were done with actual knowledge of Complainant’s mark. As
Respondent passively held these domain names for over two years, these
registrations coupled with inactivity equates with bad faith use and
registration. See Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown,
D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its
website in a two year period raises the inference of registration in bad
faith); see also DCI S.A. v. Link
Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that
Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii)
of the Policy).
The Panel infers from Respondent’s use of
the May 2002 Domain Names that it receives a commission for each redirected
Internet user it attracts online, an inference that Respondent has offered no evidence
rebutting. As each of these domain names are confusingly similar to
Complainant’s mark, this attraction for commercial gain equates to bad faith
use and registration under Policy ¶ 4(b)(iv). See Kmart v. Kahn, FA
127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from
its diversionary use of Complainant's mark when the domain name resolves to
commercial websites and Respondent fails to contest the Complaint, it may be
concluded that Respondent is using the domain name in bad faith pursuant to
Policy 4(b)(iv)); see also 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).
Therefore, the
Panel finds that Respondent registered and used the disputed domain names in
bad faith, and Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <century21alabama.com>, <century21alaska.com>, <century21arkansas.com>, <century21california.com>, <century21connecticut.com>, <century21idaho.com>, <century21iowa.com>, <century21kansas.com>, <century21kentucky.com>, <century21louisiana.com>, <century21maryland.com>, <century21michigan.com>, <century21minnesota.com>, <century21mississippi.com>, <century21missouri.com>, <century21montana.com>, <century21nebraska.com>, <century21nevada.com>, <century21newmexico.com>, <century21northcarolina.com>, <century21northdakota.com>, <century21oklahoma.com>, <century21oregon.com>, <century21pennsylvania.com>, <century21rhodeisland.com>, <century21southcarolina.com>, <century21tennessee.com>, <century21texas.com>, <century21virginia.com>, <century21westvirginia.com>, <century21wyoming.com> and < century21southdakota.com> domain names be TRANSFERRED from Respondent
to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2002
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