TM Acquisition Corp. v. Gary Lam
Claim
Number: FA0405000280499
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Kathryn S. Geib, 1 Sylvan Way, Parsippany, NJ 07054. Respondent is Gary Lam (“Respondent”), 2/F Industrial Building, 6 Yip Fat Street,
Wong Chuk Hang, 00000, Hong Kong.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <coldwellbankerrealestate.com>, registered
with Enom, Inc.
The
undersigned certifies that she has acted independently and impartially and to
the best of her knowledge has no known conflict in serving as Panelist in this
proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on May 26, 2004; the Forum received a hard copy of the Complaint
on May 27, 2004.
On
May 28, 2004, Enom, Inc. confirmed by e-mail to the Forum that the domain name <coldwellbankerrealestate.com>
is registered with Enom, Inc. and that Respondent is the current registrant of
the name. Enom, Inc. has verified that Respondent is bound by the Enom, 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
June 1, 2004, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 21, 2004 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@coldwellbankerrealestate.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
June 25, 2004, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed Sandra Franklin 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <coldwellbankerrealestate.com>
domain name is confusingly similar to Complainant’s COLDWELL BANKER mark.
2. Respondent does not have any rights or
legitimate interests in the <coldwellbankerrealestate.com> domain
name.
3. Respondent registered and used the <coldwellbankerrealestate.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM
Acquisition Corp., is the owner of numerous COLDWELL BANKER marks and has
licensed those marks to Coldwell Banker Real Estate Corporation. Both of these companies are subsidiaries of
Cendant Corporation.
Complainant
holds numerous registrations for the COLDWELL BANKER mark with the United
States Patent and Trademark Office (Reg. 1,154,155 issued May 12, 1981, Reg.
No. 1,215,241 issued November 2, 1982, Reg. No. 2,057,608 issued April 29,
1997, Reg. No. 2,059,501 issued May 6, 1997 and Reg. No. 2,453,334 issued May
22, 2001). Complainant also holds
several trademark registrations in Hong Kong and ninety-eight other countries.
Complainant
began using the COLDWELL BANKER mark in 1914, and associated it with real
estate services in 1974. Since that
time, Complainant has expanded its use of the mark to include a variety of real
estate-related services. Complainant’s
sister company, Coldwell Banker, has more than 3,500 independently owned and
operated residential and commercial real estate offices with over 112,000 sales
associates globally. The company is an industry leader in residential real
estate, and in niche markets such as resort, new homes and luxury properties.
Complainant’s
main website is operated at the <coldwellbanker.com> domain name.
Respondent
registered the <coldwellbankerrealestate.com> domain name on
September 12, 2003. Respondent is using
the domain name to redirect Internet users to a website that features
advertising for a variety of goods and hosts a search engine that links viewers
to a variety of websites, including competing real estate-related websites and
links to Coldwell Banker agents.
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.
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
established with extrinsic proof in this proceeding that it has rights to the
COLDWELL BANKER mark as evidenced by its registration with the United States
Patent and Trademark Office and through continued use of its marks in commerce
for the last ninety and thirty years, respectively. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently distinctive and have acquired secondary
meaning.”); see also Janus Int’l
Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that
Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).
The <coldwellbankerrealestate.com>
domain name registered by Respondent is confusingly similar to
Complainant’s COLDWELL BANKER mark because the domain name incorporates
Complainant’s mark in its entirety and simply adds the generic or descriptive
terms, “real” and “estate.” The mere
addition of generic or descriptive terms, especially those that describe
Complainant’s business, does not negate the confusing similarity of
Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Oki Data Americas, Inc. v. ASD Inc.,
D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a
Complainant’s registered mark is sufficient to establish identical or confusing
similarity for purposes of the Policy despite the addition of other words to
such marks”); see also Treeforms,
Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000)
(finding that confusion would result when Internet users, intending to access
Complainant’s website, think that an affiliation of some sort exists between
Complainant and Respondent, when in fact, no such relationship would exist); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where Respondent’s domain name combines Complainant’s mark with a
generic term that has an obvious relationship to Complainant’s business); see
also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5,
2001) (finding that the <hoylecasino.net> domain name is confusingly
similar to Complainant’s HOYLE mark, and that the addition of “casino,” a
generic word describing the type of business in which Complainant is engaged,
does not take the disputed domain name out of the realm of confusing
similarity).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant has
alleged that Respondent has no rights or legitimate interests in the domain
name that contains in its entirety Complainant’s mark. Due to Respondent’s failure to respond to
the Complaint, the Panel will assume that Respondent lacks rights and
legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in
support of its allegations, the burden shifts to Respondent to show that it
does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating
that “[p]roving that the Respondent has no rights or legitimate interests in
respect of the Domain Name requires the Complainant to prove a negative. For
the purposes of this sub paragraph, however, it is sufficient for the
Complainant to show a prima facie case and the burden of proof is then shifted
on to the shoulders of Respondent. In those circumstances, the common approach
is for [R]espondents to seek to bring themselves within one of the examples of
paragraph 4(c) or put forward some other reason why they can fairly be said to
have a relevant right or legitimate interests in respect of the domain name in
question”); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that under certain circumstances the mere assertion by Complainant
that Respondent has no right or legitimate interest is sufficient to shift the
burden of proof to Respondent to demonstrate that such a right or legitimate
interest does exist).
Moreover, where
Respondent does not respond, the Panel may accept reasonable allegations and
inferences in the Complaint as true. See
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.”); see also
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response the Panel is free to make
inferences from the very failure to respond and assign greater weight to
certain circumstances than it might otherwise do); see also Ziegenfelder Co. v. VMH Enter., Inc.,
D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on Respondent’s
failure to respond: (1) Respondent does not deny the facts asserted by
Complainant, and (2) Respondent does not deny conclusions which Complainant
asserts can be drawn from the facts).
Respondent’s
domain name fully incorporates Complainant’s mark and redirects Internet users
to a website that features advertising for a variety of goods and hosts a
search engine to link viewers to a variety of websites, predominantly real
estate-related websites and links to Coldwell Banker agents. The Panel finds that Respondent’s use of a
domain name that is confusingly similar to Complainant’s mark and redirects
Internet users to commercial websites that compete with Complainant’s business
does not constitute a bona fide offering of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name
pursuant to Policy ¶ 4(c)(iii). See
eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the
"use of complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use"); see also TM Acquisition
Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding
that Respondent’s diversionary use of Complainant’s marks to send Internet
users to a website which displayed a series of links, some of which linked to
competitors of Complainant, was not a bona fide offering of goods or services);
see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002)
(finding no “bona fide” offering of goods or services where Respondent used
Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors).
Nothing in the
record, including the WHOIS domain name registration information, for the <coldwellbankerrealestate.com>
domain name suggests that Respondent is commonly known by the domain name
or by Complainant’s COLDWELL BANKER mark pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 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"); see also Nike, Inc. v. de Boer, D2000-1397 (WIPO
Dec. 21, 2000) (finding that no person besides Complainant could claim a right
or a legitimate interest with respect to the domain name
<nike-shoes.com>).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
intentionally registered the <coldwellbankerrealestate.com> domain
name that contains in its entirety Complainant’s well-known mark. Furthermore, Respondent is using the
disputed domain name to attract, for commercial gain, Internet users to its
website by creating a likelihood of confusion with Complainant as to the
source, sponsorship, affliliation or endorsement of its website purusant to
Policy ¶ 4(b)(iv). See H-D
Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003)
(finding that the disputed domain name was registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv) through Respondent’s registration and use of the
infringing domain name to intentionally attempt to attract Internet users to
its fraudulent website by using Complainant’s famous marks and likeness); see
also Kmart v. Khan, 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000)
(finding that Respondent acted in bad faith by registering the <fossilwatch.com>
domain name and using it to sell various watch brands where Respondent was not
authorized to sell Complainant’s goods).
Respondent is
using the <coldwellbankerrealestate.com> domain name to provide a
search engine that links viewers to a variety of websites, including competing
real estate-related websites and links to Coldwell Banker agents. Complainant’s business also provides real
estate services. The Panel finds that,
by creating confusion around Complainant’s COLDWELL BANKER mark, Respondent is
attempting to disrupt the business of a competitor. Respondent’s use of Complainant’s mark to sell goods and services
similar to Complainant’s goods and services is evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001)
(finding that, given the competitive relationship between Complainant and
Respondent, Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding
Respondent acted in bad faith by attracting Internet users to a website that
competes with Complainant’s business); see also Gorstew Ltd. & Unique Vacations, Inc. v. Satin Leaf, Inc., FA
95414 (Nat. Arb. Forum Oct. 4, 2000) (transferring <sandalsagency.com>
and <sandalsagent.com> from Respondent travel agency to Complainants, who
operate Sandals hotels and resorts).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <coldwellbankerrealestate.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
July 9, 2004
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