Century 21 Real Estate LLC v. VistaPrint Technologies Ltd
Claim Number: FA1201001422157
Complainant is Century 21 Real Estate LLC (“Complainant”), represented by Linda M. Dooley of Realogy Corporation, New Jersey, USA. Respondent is VistaPrint Technologies Ltd (“Respondent”), Bermuda.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <century21realestatelapl.com>, registered with Tucows, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 3, 2012; the National Arbitration Forum received payment on January 4, 2012.
On January 3, 2012, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <century21realestatelapl.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 January 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2012 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@century21realestatelapl.com. Also on January 4, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <century21realestatelapl.com> domain name is confusingly similar to Complainant’s CENTURY 21 mark.
2. Respondent does not have any rights or legitimate interests in the <century21realestatelapl.com> domain name.
3. Respondent registered and used the <century21realestatelapl.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Century 21 Real Estate LLC, is a franchisor of a system of business for the promotion and assistance of independently owned and operated real estate brokerage offices, including policies, procedures, and techniques enabling such offices to compete effectively in the real estate mark. Complainant owns numerous trademark registrations for the CENTURY 21 mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,062,488 registered April 12, 1977;
Reg. No. 1,085,039 registered February 7, 1978;
Reg. No. 1,304,095 registered November 6, 1984;
Reg. No. 1,429,531 registered February 17, 1987;
Reg. No. 2,178,970 registered August 4, 1998; &
Reg. No. 2,662,159 registered December 17, 2002.
Respondent, VistaPrint Technologies Ltd, registered the <century21realestatelapl.com> domain name on August 25, 2011. The disputed domain name resolves to Respondent’s commercial website offering competing real estate services.
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 owns numerous trademark registrations for the CENTURY 21 mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 1,062,488 registered April 12, 1977;
Reg. No. 1,085,039 registered February 7, 1978;
Reg. No. 1,304,095 registered November 6, 1984;
Reg. No. 1,429,531 registered February 17, 1987;
Reg. No. 2,178,970 registered August 4, 1998; &
Reg. No. 2,662,159 registered December 17, 2002.
The Panel finds that, despite Respondent’s location in Bermuda, these USPTO trademark registrations provide sufficient evidence of Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <century21realestatelapl.com> domain name is confusingly similar to the CENTURY 21 mark. In constructing the disputed domain name, Respondent begins with the CENTURY 21 mark without the space between terms and adds the descriptive terms “real” and “estate,” the letters “l,” “a,” and “p,” and the generic top-level domain (“gTLD”) “.com.” Based on prior UDRP decisions, such as AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), and Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the Panel concludes that adding descriptive terms to Complainant’s mark does not make the disputed domain name unique from the mark. Previous panels also held that added letters do not distinguish a disputed domain name in Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) and L.F.P., Inc. v. Yarbrough, FA 114420 (Nat. Arb. Forum July 9, 2002). Finally, UDRP decisions have settled the issue of confusing similarity with regard to removed spaces and added gTLDs, finding that neither is a consequential change. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). According to this precedent, the Panel determines that Respondent’s <century21realestatelapl.com> domain name is confusingly similar to Complainant’s CENTURY mark pursuant to Policy ¶ 4(a)(i).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(i).
In order to shift the burden of proving rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) requires that Complainant put forth a prima facie case against Respondent. In this proceeding, Complainant has satisfied its obligation under the Policy and presented a sufficient prima facie case so that now Respondent must put forward some proof of its case. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has not presented any proof or arguments of any kind, however, and therefore the Panel is left with only Complainant’s allegations. Because of Respondent’s silence, the Panel may take Complainant’s contentions as true and infer that Respondent lacks rights and legitimate interests. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant). The Panel chooses to continue its analysis under the Policy ¶ 4(c) factors, however, in order to independently reach a conclusion on the issue of Respondent’s rights and legitimate interests in the disputed domain name.
Complainant asserts that Respondent is neither licensed to use Complainant’s CENTURY 21 mark nor commonly known by the disputed domain name. The WHOIS information for the <century21realestatelapl.com> domain name reveals that the registrant is “VistaPrint Technologies Ltd.” The Panel finds that this name suggests no connection or relationship with the disputed domain name and, thus, Respondent is not commonly known by the <century21realestatelapl.com> domain name according to Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); 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).
Complainant argues that Respondent’s <century21realestatelapl.com> domain name resolves to Respondent’s commercial website, entitled “Century 21 Real Estate L.A.P.L.,” which offers competing real estate services. Complainant also provides a screenshot of the resolving website which shows that the resolving website prominently displays the CENTURY 21 mark in connection with its offering of real estate services. The Panel finds that Respondent’s commercial use of the disputed domain name to offer competing real estate services under Complainant’s mark does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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 also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s use of the disputed domain name to offer competing services under Complainant’s mark disrupts Complainant’s business. The Panel agrees with Complainant and finds that Respondent’s operation of its real estate business under Complainant’s mark constitutes competitive disruption and illustrates bad faith under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent registered the <century21realestatelapl.com> domain name for use in connection with its “Century 21 Real Estate L.A.P.L.” website that offers and advertises real estate services that compete with Complainant’s services. Complainant argues that Respondent hosts this website under Complainant’s mark in order to lend credibility to Respondent’s real estate services and take advantage of the goodwill of Complainant’s mark for Respondent’s own commercial gain. The Panel determines that Respondent’s use of Complainant’s mark in the disputed domain name to attract consumers and create the misleading perception that Respondent is somehow affiliated with or sponsoring the resolving website for Respondent’s profit indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
The Panel holds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <century21realestatelapl.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 2, 2012
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