Century 21 Real Estate LLC v. Wiechert At the Rockies
Claim Number: FA1602001660574
Complainant is Century 21 Real Estate LLC (“Complainant”), represented by Jason H. Kasner of Intellectual Property Realogy Holdings Corp., New Jersey, United States. Respondent is Wiechert At the Rockies (“Respondent”), represented by Daniel J. Tobler of Slemboski & Tobler, Utah, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <c21rockies.com>, registered with Network Solutions, LLC.
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.
Jaime Delgado as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 11, 2016; the Forum received payment on February 18, 2016.
On February 11, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <c21rockies.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC, has verified that Respondent is bound by the Network Solutions, LLC 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 February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2016 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@c21rockies.com. Also on February 22, 2016, 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.
A timely Response was received and determined to be complete on March 14, 2016.
Complainant filed an Additional Submission on March 18, 2016
Respondent filed an Additional Submission on March 23, 2016
On March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jaime Delgado 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the C21 mark in connection with the offering of real estate brokerage services since at least as early as 1982. Complainant has registered the C21 mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,933,408, registered March 15, 2005), which demonstrates Complainant’s rights in its mark. The Panel is directed to Attached Exhibit A for a copy of Complainant’s USPTO registration. Complainant also owns common law rights in the mark that predate Respondent’s registration of the domain. The <c21rockies.com> domain is confusingly similar to Complainant’s mark as it wholly incorporates Complainant’s mark and merely adds the generic and geographic term “rockies” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. First, Respondent is not commonly known by the disputed domain name or any variant of Complainant’s mark. Second, even though Respondent is a former franchisee of Complainant, Respondent is not licensed or authorized to use Complainant’s mark. Finally, Respondent is not making a bona fide offering of goods or services through the disputed domain name or a legitimate noncommercial or fair use. Rather, Respondent’s resolving domain redirects Internet users to its own website offering competing services. The Panel is directed to Attached Exhibit C for a screenshot of Respondent’s resolving webpage.
Respondent has registered and is using the disputed domain name in bad faith. First, Respondent’s use of the disputed domain to offer competing services violated Policy ¶ 4(b)(iii). Second, Respondent registered and is using the disputed domain to promote services that are in direct competition with Complainant, thereby engaging in conduct proscribed by Policy ¶ 4(b)(iv). Finally, Respondent registered the disputed domain with actual knowledge of Complainant’s mark.
B. Respondent
Complainant has not established rights in its mark that preclude Respondent. Complainant falsely asserts that the disputed domain was registered on July 24, 2012; the domain was actually registered on May 14, 1998, several years before Complainant registered the C21 mark in 2005. The <c21rockies.com> domain is not confusingly similar to Complainant’s mark because the term “rockies” is not a geographically descriptive term; rather, the term refers generally to part of an enormous mountain range that spans the entire Western Hemisphere.
Respondent has rights and legitimate interests in the domain. Respondent established the domain while it was affiliated with Complainant, and the domain was created for the purpose of advertising and providing real estate brokerage services. Respondent continues to conduct business related to real estate brokerage services.
Respondent did not register the domain in bad faith. The domain was not registered in an attempt to compete with Complainant; rather, as aforementioned, Respondent registered the domain while it was affiliated with Complainant, and while Respondent was offering real estate brokerage services. For these same reasons, Respondent has not violated Policy ¶ 4(b)(iv). Respondent did not register the domain with actual knowledge of Complainant’s mark as Respondent registered the mark years before Complainant registered the C21 mark.
C. Additional Submissions:
In its Additional Submission, Complainant states that:
Respondent correctly identifies a transcription error in the original Complaint date of July 24, 2012 for the Domain name <c21rockies.com> (“Domain”) when the actual registration date of the Domain was May 1998.
At the time of the Domain was registered in 1998 Complainant owned a federal registration for the mark C21 in connection with real estate brokerage services (USTM Reg. 1,257,866) registered on November 15, 1983. This registration was cancelled on August of 2004 (over six years after the registration of the Domain.
Complainant maintained its valid trademark registration for the same mark C-21 (USTM Reg. 1,268,185) a common punctuation such as a hyphen is not considered when determining similarity between a domain name and a trademark.
The mark C21 has been used consistently and continuously since at least as early as 1982. The mark is clearly an acronym for the famous CENTURY21 brand.
In its reply to Complainant’s additional submission, Respondent argues that:
The registration periods of both the domain name and the service mark are vital to this dispute.
The fact that the Complainant let this prior registration lapse canceled any rights or protection it had in the mark at that time.
Complainant has not provided any proof that would establish its rights to the mark prior or during the time the Respondent registered its domain name. Complainant has not included any proof dating back to 1998 or earlier.
Use or non use of a hyphen is not the case presently before the panel and this discussion appears to be an attempt to amend the Complaint contrary to Rule 7(f) of the Supplementary rules. Further “C-21” and “c21rockies.com” are not confusingly similar.
Respondent and Complainant were affiliated with one another at the time the Respondent’s Domain Name was registered and used it during their 12 year relationship. If Complainant took issue with Respondent’s Domain Name it should not have waited almost two decades.
Complainant’s claim should be barred by the doctrine of Laches.
FACTUAL FINDINGS
Complainant relies on the following United States trademark registrations
containing the term C21 (“C21”)
Mark C21 Reg. No. 2933408 for “real estate brokerage services” in class 36.
C21 MARKETING ASSISTANT
Reg. No. 4752071 for “Providing online marketing management services,
namely, marketing, advertising, promotional services and business development
services” in class 35.
C21 SOCIAL XCHANGE
Reg. No. 4771292 for “Providing an internet website portal featuring online non-
downloadable media creation and management software applications” in class
42.
C21 TAP Serial No. 86326516 for “Educational services, namely, conducting
personal and lifestyle training and coaching services for real estate professionals
and distribution of training materials in connection therewith” in class 41 and
“Providing temporary use of online non-downloadable software for conducting
personal and lifestyle training and coaching services for real estate professionals”
in Class 42.
C21 TAP IN Serial No. 86796284 for “Providing a website featuring information
regarding professional, personal and lifestyle topics for real estate professionals”
in class 41.
C21 UNIVERSITY Serial No. 86669522 for “educational services, namely,
conducting workshops, conferences, classes and/or seminars via the Internet
in the field of real estate brokerage and distributing non-downloadable
educational materials in connection therewith” in class 41.
In its Additional Submission Complainant added the mark C21 USTM Reg.
1,257,866 cancelled on August 2004 and C-21 USTM 1,268,185.
Respondent is the owner of Domain Name <c21rockies.com>.
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.
Identical and/or Confusingly Similar : Policy ¶ 4(a)(i).
Based on its trademark registrations, Complainant has not established rights in its mark that preclude Respondent. Complainant recognized that the disputed domain was not registered on July 24, 2012; the domain was actually registered on May 14, 1998, several years before Complainant registered the C21 mark in 2005. Complainant also asserts common law rights in the mark based on its continued use and promotion of the mark since 1982 but did not supply any evidence to prove such use. All the material supplied appears to be recent. Complainant has not included any proof dating back to 1998 or earlier. Thus, there is no evidence before the Panel that the Complaint was using or disseminating the C21 mark that would grant common law rights.
In its Additional Submission Complainant added that at the time the Domain was
registered in 1998, Complainant owned a federal registration for the mark C21 in
connection with real estate brokerage services (US TM Reg. No. 1,257,866,
registered on November 15, 1983). A variety of factors including the concurrent
existence of US TM Reg. No. 1,268,185 for the same mark C-21 led to the
business decision not to maintain US TM Reg. No. 1,257,866 and this
registration was cancelled in August of 2004. Complainant maintained its valid
trademark registration for the same mark, C-21 (US TM Reg. No. 1,268,185). A
common punctuation such as a hyphen is not considered when determining
confusing similarity between a domain name and a trademark and “rockies” is
a geographically descriptive term.
Respondent alleges that the <c21rockies.com> domain is not confusingly similar to Complainant’s mark because the term “rockies” is not a geographically descriptive term; rather, according to Respondent, the term refers generally to a part of an enormous mountain range that spans the entire Western Hemisphere. However, because this argument is not applicable under Policy ¶ 4(a)(i), the argument will be presented under Policy ¶ 4(a)(iii).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent established the domain while it was affiliated with Complainant and that the domain was created for the purpose of advertising and providing real estate brokerage services. Respondent contends that it continues to conduct business in real estate brokerage services today. Prior panels have decided that where a respondent was affiliated with a complainant when the respondent registered a domain, respondent was making a bona fide use of the domain. See Educ. Directories Unlimited v. Reflex Publ’g, Inc., FA 142378 (Nat. Arb. Forum Mar. 26, 2003) (finding that the respondent was making a bona fide use of the domain name as the complainant had a business relationship with the respondent, where the respondent was part of its affiliate program and the complainant sought jointly to exploit the domain name by paying for click-through traffic to the complainant’s site generated by the respondent).
Therefore, Respondent has rights and legitimate interests in the domain.
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant failed to meet the burden of proof of bad faith registration and use under Policy ¶ 4(a)(iii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that the respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish Policy ¶ 4(a)(iii); see also Graman USA Inc. v. Shenzhen Graman Indus. Co., FA 133676 (Nat. Arb. Forum Jan. 16, 2003) (finding that general allegations of bad faith without supporting facts or specific examples do not supply a sufficient basis upon which the panel may conclude that the respondent acted in bad faith).
Respondent has rights or legitimate interests in the <c21rockies.com> domain name pursuant to Policy ¶ 4(a)(ii), Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Respondent has not registered or used the <c21rockies.com> domain name in bad faith as Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent registered the domain while it was affiliated with Complainant and while Respondent was offering real estate brokerage services. Further, there is no evidence that it registered the domain for the purpose of disrupting Complainant’s business or to attract Internet users to its website. For these reasons, Respondent maintains that it has not demonstrated bad faith under Policy ¶ 4(b)(iii) or ¶ 4(b)(iv). Past panels have concluded that a respondent does not demonstrate bad faith where it registers a domain while affiliated with complainant. See Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (finding that the respondent did not register the disputed domain name in bad faith when he “registered the Domain Name with the full consent and knowledge of Complainant,” and therefore the respondent “did not have the requisite bad faith when he registered the Domain Name, which is an express requirement of the Policy”). Past panels have also held a respondent did not register a domain in bad faith where there was no evidence that the respondent intended to disrupt the complainant’s business. See Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith). The Panel agrees with Respondent’s contentions and finds that Respondent did not register the domain in bad faith.
Respondent argues that the term “rockies” in the <c21rockies.com> domain is not a geographically descriptive term; rather, according to Respondent, the term refers generally to a part of an enormous mountain range that spans the entire Western Hemisphere. The registration and use of domain name comprising such a common term is not necessarily done in bad faith. The Panel finds that a respondent is free to register a domain name consisting of common terms and that the domain name currently in dispute contains such common term, Respondent did not register or use the <c21rockies.com> domain name in bad faith under Policy ¶ 4(a)(iii). See Zero Int'l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) ("Common words and descriptive terms are legitimately subject to registration as domain names on a 'first-come, first-served' basis."); see also Target Brands, Inc. v. Eastwind Group, FA 267475 (Nat. Arb. Forum July 9, 2004) (holding that the respondent’s registration and use of the <target.org> domain name was not in bad faith because the complainant’s TARGET mark is a generic term); see also Miller Brewing Co. v. Hong, FA 192732 (Nat. Arb. Forum Dec. 8, 2003) (finding that because the respondent was using the <highlife.com> domain name, a generic phrase, in connection with a search engine, the respondent did not register and was not using the disputed domain name in bad faith).
Furthermore, Respondent contends that it did not register the domain with actual knowledge of Complainant’s mark because Respondent registered the mark years before Complainant registered the C21 mark.
The Complainant states in its Additional Written Statement that it owns rights in a second service mark, C-21, and because this is confusingly similar to C21 the Respondent’s Domain Name should be transferred. Complaint further cites to a case wherein it was determined the addition of a hyphen did not avoid confusion. However, if we compare the trademark C-21 with <c21rockies.com> in its entirety it is hard to find confusing similarity. However, the use or nonuse of a hyphen is not the case presently before the Panel and this argument appears to be an attempt to amend the Complainant’s Complaint contrary to Rule 7(f) of the Supplemental Rules.
LACHES
Respondent and Complainant were affiliated with one another at one time. The Respondent’s Domain Name was registered at this time and used throughout their approximate 12 year relationship. As indicated by Respondent, Complainant would have been well aware of the Respondent’s use of this Domain Name from the beginning as Respondent used email addresses with the root @C21rockies.com exclusively at that time. Now, the Respondent still uses these email addresses for the reasons stated in Respondent’s Response including the fact it is known by these email addresses and does not want to lose the contacts and connections it has built over the past approximate 18 years. If the Complainant took issue with the Respondent’s Domain Name it should have made it known at that time, rather than waiting almost two decades and after innumerable contacts have been created to attempt to take the domain for its own purposes.
See Headroom Corporation v. Peter Comitini dba Peter Comitini Design,
FA0111000102522 (Nat. Arb. Forum December 27, 2001) (“Trademark law is
peculiarly equitable in nature and laches is a purely equitable doctrine. Courts
generally weigh several factors in a trademark laches analysis such as 1) length
of delay, 2) excuse(s), if any, for the delay, 3) degree and extent of infringer’s
reliance on mark owner’s inaction, 4) degree of intent in the infringement, 5)
strength of the mark, 6) likelihood of confusion, and 7) harm to the parties from
denial or granting of relief. Gilson, Trademark Law and Practice, §8.12(a)-(b)
(Matthew Bender)”). A review of these factors with the facts of this case in mind
supports the conclusion to deny the Complainant’s claim.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <c21rockies.com> domain name REMAIN with RESPONDENT
Jaime Delgado, Panelist
Dated: April 4, 2016
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