national arbitration forum

 

DECISION

 

Coldwell Banker Real Estate LLC v. piperleffler piperleffler / null

Claim Number: FA1311001529565

 

PARTIES

Complainant is Coldwell Banker Real Estate LLC (“Complainant”), represented by Jason H. Kasner of Coldwell Banker Real Estate LLC, New Jersey, USA.  Respondent is piperleffler piperleffler / null (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <coldwellbankerllc.com>, registered with TUCOWS DOMAINS INC.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2013; the National Arbitration Forum received payment on November 13, 2013.

 

On November 13, 2013, TUCOWS DOMAINS INC. confirmed by e-mail to the National Arbitration Forum that the <coldwellbankerllc.com> domain name is registered with TUCOWS DOMAINS INC. and that Respondent is the current registrant of the name.  TUCOWS DOMAINS INC. has verified that Respondent is bound by the TUCOWS DOMAINS 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 November 15, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2013 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@coldwellbankerllc.com.  Also on November 15, 2013, 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 December 16, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

Complainant

a)    Complainant offers real estate services, and has been in business since 1906. Complainant is a franchisor of a system of business for the promotion and assistance of independently-owned and operated real estate brokerages offices. Coldwell Banker licenses its franchisees the right to use its COLDWELL BANKER mark in their real estate brokerage offices through the United States and elsewhere. Currently, there are approximately 3,100 independently-owned and operated franchised broker offices operating under the COLDWELL BANKER mark in fifty-one countries and territories worldwide. Complainant’s principal website, <coldwellbanker.com>, was registered on May 2, 1995.

b)    Complainant is the owner of the COLDWELL BANKER mark, used in connection with real estate brokerage services. Complainant owns registrations for the COLDWELL BANKER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,154,155 registered May 12, 1981).

 

 

c)    Respondent’s <coldwellbankerllc.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark. Respondent adds the generic and descriptive term “llc,” which has the commonly known meaning “limited liability company.”

d)    Respondent has no rights or legitimate interests in the <coldwellbankerllc.com> domain name because Respondent is not commonly known by the disputed domain name. Complainant has not licensed Respondent to use its marks in any way and the disputed domain name was registered three months ago.

e)    Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <coldwellbankerllc.com> domain name. Respondent appears to defraud consumers and illegally profit from Respondent’s fraudulent scheme uses an e-mail address with the disputed domain name as the extension to pose as a representative of Complainant. See Complainant’s Exhibit D.

f)     Respondent registered and is using the disputed domain name in bad faith by disrupting Complainant’s business by using the <coldwellbankerllc.com> domain name for Respondent’s fraudulent commercial gain. See Complainant’s Exhibit D. Respondent is using an email address with the disputed domain name as the extension to pose as a representative of Complainant and defraud small business owners. See Complainant’s Exhibit D.

g)    Respondent is using the <coldwellbankerllc.com> domain name to create a likelihood of confusion with Complainant’s COLDWELL BANKER mark for Respondent’s own commercial gain. Respondent is using an email address with the disputed domain name as the extension to pose as a representative of Complainant and defraud small business owners. See Complainant’s Exhibit D.

 

h)    Respondent is attempting to pass itself off as Complainant’s legitimate business. Respondent uses fraudulent e-mails to pose as Complainant solely to lend credibility to its fraudulent scheme to defraud consumers for Respondent’s own commercial gain. See Complainant’s Exhibit D.

 

B.  Respondent has failed to submit a response to this Complaint. The Panel notes that Respondent registered the disputed domain name on July 17, 2013, and the registrant is listed as “piperleffler piperleffler.”

 

FINDINGS

1.    Respondent’s <coldwellbankerllc.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.

2.    Respondent does not have any rights or legitimate interests in the  <coldwellbankerllc.com> domain name.

3.    Respondent registered or used the <coldwellbankerllc.com> domain name in bad faith.

 

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."

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

Complainant contends it is the owner of the COLDWELL BANKER mark, used in connection with real estate brokerage services. Complainant states it owns registrations for the COLDWELL BANKER mark with the USPTO (e.g., Reg. No. 1,154,155 registered May 12, 1981). Therefore, the Panel finds that Complainant has rights in the COLDWELL BANKER mark pursuant to Policy ¶ 4(a)(i) via a valid trademark registration with the USPTO. See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant claims that Respondent’s <coldwellbankerllc.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark. Complainant notes that Respondent adds the generic and descriptive term “llc,” which has the commonly known meaning “limited liability company.” The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com” and removes the space that exists in Complainant’s mark between the words “Coldwell” and “Banker.” First, the Panel finds that the addition of a descriptive term does not sufficiently differential a disputed domain name from a trademark. See Am. Int’l Group, Inc. v. Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Next, the Panel finds that the addition of a gTLD and removal of spaces between words are irrelevant for the purposes of confusing similarity analysis under Policy ¶ 4(a). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Respondent’s <coldwellbankerllc.com> domain name is confusingly similar to Complainant’s COLDWELL BANKER mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent has no rights or legitimate interests in the <coldwellbankerllc.com> domain name because Respondent is not commonly known by the disputed domain name. Complainant states it has not licensed Respondent to use its marks in any way and the disputed domain name was registered three months ago. The Panel notes that the WHOIS record for the disputed domain name lists ““piperleffler piperleffler” as the domain name registrant. Past panels have looked to the WHOIS record, whether the respondent was authorized to use the trademark, and the evidence on record as whole in determining whether the respondent is commonly known by the disputed domain name. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Therefore, because Respondent was not authorized by Complainant to use the COLDWELL BANKER mark, and neither the WHOIS information nor the other evidence on record indicates otherwise, the Panel finds that Respondent is not commonly known by the <coldwellbankerllc.com> domain name under Policy ¶ 4(c)(ii).

 

Complainant alleges that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <coldwellbankerllc.com> domain name. Complainant states that Respondent appears to defraud consumers and illegally profit from Respondent’s fraudulent scheme of using an e-mail address with the disputed domain name as the extension to pose as a representative of Complainant. See Complainant’s Exhibit D. In previous cases, panels have found that a respondent attempting to pass itself off as a complainant is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Therefore, the Panel finds that Respondent is not making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).

 

Registration and Use in Bad Faith

Complainant asserts that Respondent registered and is using the disputed domain name in bad faith by disrupting Complainant’s business by using the <coldwellbankerllc.com> domain name for Respondent’s fraudulent commercial gain. See Complainant’s Exhibit D. In previous cases, panels have found that a respondent who uses a complainant’s name to mislead consumers and sell competing goods is disrupting a complainant’s business in bad faith under Policy ¶ 4(b)(iii). See Lambros v. Brown, FA 198963 (Nat. Arb. Forum Nov. 19, 2003) (finding that the respondent registered a domain name primarily to disrupt its competitor when it sold similar goods as those offered by the complainant and “even included Complainant's personal name on the website, leaving Internet users with the assumption that it was Complainant's business they were doing business with”). Therefore, the Panel finds that Respondent registered and is using the <coldwellbankerllc.com> domain name in bad faith under Policy ¶ 4(b)(iii) because Respondent is using the disputed domain name to compete with Complainant for Respondent’s fraudulent commercial gain.

 

Complainant alleges that Respondent is using the <coldwellbankerllc.com> domain name to create a likelihood of confusion with Complainant’s COLDWELL BANKER mark for Respondent’s own commercial gain. Complainant states that Respondent is using an e-mail address with the disputed domain name as the extension to pose as a representative of Complainant and defraud small business owners. See Complainant’s Exhibit D. In World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001), the panel held that Respondent registered and used the disputed domain name in bad faith because the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site. Here, there is a similar likelihood of confusion as to the source of the products offered by Respondent because of the fraudulent and deceptive scheme employed by Respondent. Therefore, the Panel finds that Respondent registered and is using the <coldwellbankerllc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s COLDWELL BANKER mark for Respondent’s own commercial gain.

 

Complainant claims Respondent is attempting to pass itself off as Complainant’s legitimate business. Complainant states that Respondent uses fraudulent e-mails to pose as Complainant solely to lend credibility to its fraudulent scheme to defraud consumers for Respondent’s own commercial gain. See Complainant’s Exhibit D. Past panels have found bad faith registration and use where a respondent attempts to pass itself off as a complainant in an attempt to obtain commercial gain. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”). Therefore, the Panel finds that Respondent’s attempt to pass itself off as Complainant constitutes bad faith registration and use under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <coldwellbankerllc.com> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  December 27, 2013

 

 

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