DECISION

 

Opus Northwest Construction Corporation v. Opus Realty and Eldon Chan

Claim Number: FA0408000318960

 

PARTIES

Complainant is Opus Northwest Construction Corporation (“Complainant”), represented by Michael M. Lafeber, of Briggs & Morgan P.A., 2200 IDS Center, 80 South 8th Street, Minneapolis, MN 55402-2157.  Respondent is Opus Realty and Eldon Chan (“Respondent”), represented by Robert J. Mitchell, of Lobb & Cliff, LLP, 1650 Spruce Street, Suite 404, Riverside, CA 92507.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <opusrealty.com>, registered with Register.com.

 

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.

 

Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 30, 2004; the Forum received a hard copy of the Complaint on August 31, 2004.

 

On August 31, 2004, Register.com confirmed by e-mail to the Forum that the domain name <opusrealty.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified Respondent is bound by the Register.com 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 September 7, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 27, 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@opusrealty.com by e-mail.

 

A timely Response was received and determined to be complete on or about September 27, 2004.

 

An additional submission was made by the Complainant on October 4, 2004.

 

On October 5, 2004 , pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES’ CONTENTIONS

A. Complainant

Opus Realty registered the domain name <opusrealty.com> on November 6, 2002.  Opus Realty is the business name of one Eldon Chan.  Mr. Chan is a licensed real estate broker in the State of California and lists his address with the State of California as 1 Embarcadero Ctr., San Francisco, CA.  This is the same address listed by the registrar for the owner of the disputed <opusrealty.com> domain name.  Mr. Chan and Opus Realty hold themselves out as real estate agents in San Francisco.  The domain name <opusrealty.com> is currently used as a hyperlink to bring the user to a website for "The LFI Group."  No information is available concerning The LFI Group.  Mr. Chan has failed to respond to any of Complainant's letters, emails or telephone calls as set forth hereinafter, and thus Complainant has been unable to obtain from Mr. Chan any further information concerning The LFI Group.  However, it is plain that the domain name <opusrealty.com> has been and continues to be held and used by Mr. Chan in connection with his real estate brokerage business and activities, a use which directly contravenes Complainant's federally registered and common law trademark rights.  Upon learning of Opus Realty's use of the federally registered "Opus" mark in conjunction with real estate services, Complainant sent a cease and desist letter dated May 22, 2003 which, among other things, requested Opus Realty to cease its use of the infringing domain name <opusrealty.com>.  Complainant received no response to the May 22, 2003 cease and desist letter.  Complainant sent a follow-up cease and desist letter to Opus Realty on July 19, 2004 to the address listed in the Whois database.  The July 19, 2004 letter was returned to sender marked "insufficient address."  Complainant has made multiple attempts to contact Opus Realty at the telephone number listed in the Whois database and sent emails to Mr. Chan, both at the email address provided at the website at www.opusrealty.com (info@lfigroup.com) and the address listed in the Whois database (eldon@1figroup.com), all with no success.  This has left Complainant no alternative but to initiate this UDRP action.

[a.]       The OPUSREALTY.COM domain name is identical or confusingly similar to Complainant's federally Registered "Opus" mark and trade name under ICANN Policy ¶ 4(a)(i).

            [i.]        Complainant has rights in the "Opus" mark

Federal registration of a mark is prima facie evidence of Complainant's rights in the mark.  Hudson v. Machi & Associates, NAF Claim No. FA0211000133759 ("Complainant has rights to the service mark HOUSELAW by virtue of registration with the United States Patent and Trademark Office."); See also Koninklijke KPN N.V. v. Telepathy, WIPO Claim No. D2000-0217.

[ii.]       OPUSREALTY.COM is identical or confusingly similar to Complainant's registered mark

The offending <opusrealty.com> website incorporates and utilizes Complainant's registered "Opus" mark in its entirety.  Adding a generic or descriptive word to Complainant's mark does not preclude a finding of confusing similarity.  This is especially true where the word added relates to Complainant's business.  Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd, NAF Claim No. FA141825  ("[I]t is also well-established under the Policy that a domain name composed of a trademark coupled with a generic term still is confusingly similar to the trademark"); Experian Information Solutions, Inc. v. BPB Prumerica Travel WIPO Claim No. D2002-0367 (addition of the generic term 'automotive' does not distinguish Respondent's domain name from Complainant's mark because the domain contains Complainant's EXPERIAN® mark in its entirety); Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, NAF Claim No. FA129123 (thriftyairportparking.com confusingly similar with the THRIFTY marks since those additions have connotations that relate to Complainant's business services); Foot Locker, Inc. v. Blezin Widmaer, NAF Claim No. FA113283  ("The addition of generic words is especially confusing where the generic words bear an obvious relationship to Complainant's business.").

Opus Realty has registered a domain name which utilizes or incorporates Complainant's federally registered mark in its entirety coupled with the generic or descriptive term "realty." The generic or descriptive term "realty" relates directly to goods and services offered by Complainant in association with the federally registered "Opus" mark.  Accordingly, Complainant has satisfied the requirements of ICANN Policy ¶ 4(a)(i).

[b.]       Respondent has no rights or legitimate interests in the domain name OPUSREALTY.COM under ICANN Policy ¶ 4(a)(ii).

Complainant need only make a prima facie showing that Respondent should not be considered to have any rights or legitimate interest in the domain name at issue. Amazon.com, Inc. v. Amazonpic, (WIPO Claim No. D2002-0330) (finding that Complainant should not be required to "prove a negative" where the relevant facts are wholly within the knowledge of Respondent).  Because it is difficult to prove a negative (i.e., that Respondent lacks any rights or legitimate interests in the mark), especially where the rights or interests at issue ordinarily would be peculiarly within the knowledge of Respondent, Complainant's initial burden on this element is light. De Agostini S.p.A. v. Marco Cialone, WIPO Claim No. DTV2002-0005.

While Complainant is not required to do a trademark search, a trademark search will help Complainant meet its initial burden of proof.  Ronson Plc v. Unimetal Sanayi ve Tic.A.S, WIPO Claim No. D2000-0011 (Complainant found no registrations in any country of the dispute mark in the name of Respondent.)  In the present case, Complainant has conducted a trademark search in the United States and found no registrations of Respondent involving the disputed "Opus" mark.

Once Complainant makes out a prima facie showing on ¶ 4(a)(ii), the burden shifts to Respondent to rebut the showing by providing evidence that it has rights to or legitimate interests in the domain name. De Agostini S.p.A. v. Marco Cialone, WIPO Claim No. DTV2002-0005.

[c.]       Respondent registered and used the OPUSREALTY.COM domain name in bad faith under ICANN Policy ¶ 4(a)(iii).

The ICANN Policy sets forth four factors for consideration in the bad faith analysis.  ICANN Policy ¶ 4(b).  The factors are not exclusive and not dispositive.  Bellsouth Intellectual Property Corp. v. Freeworld, (WIPO Claim No. D2000-1807) (even where none of the ICANN Policy's factors are present, the circumstances can support a finding of bad faith).  In this case, Respondent should be considered to have registered and used the domain name in bad faith for numerous reasons.

            [i.]        Respondent had constructive knowledge of Complainant's Mark

Actual or constructive knowledge of a complainant's mark before domain name registration is evidence of bad faith.  RRI Financial, Inc., v. Ray Chen (WIPO Claim No. D2001-1242).

Pursuant to applicable United States trademark law, Respondent is presumed to have constructive knowledge of Complainant's federally registered mark.  Section 22 of the Trademark Act states that "[r]egistration of a mark on the principal register . . . shall be constructive notice of the registrant's claim of ownership thereof."  Accordingly, it is presumed as a matter of law that Respondent was on notice of Complainant's rights in the "Opus" mark which was federally registered in 1983, nineteen years before Respondent registered the offending <opusrealty.com> domain name.

            [ii.]       Respondent Violated Paragraph 2 of the UDRP Policy

Pursuant to paragraph 2 of the UDRP Policy, a registrant affirmatively represents that its requested domain name does not infringe upon or violate the rights of any third party.  The registrant acknowledges further that it is responsible for determining whether the requested domain name infringes or violates someone else's rights. The UDRP Policies provide:

Your Representations.  By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights. UDRP ¶ 2.

Registration of a domain name without determining whether it violates or infringes upon a third party's rights has repeatedly been held to constitute bad faith.  Sleep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., NAF Claim No. FA2002000093636 (Bad faith registration and use found due to violation of Paragraph 2(b) of the Policy which charges Respondent with the responsibility to "determine whether your domain name registration infringes or violates someone else's rights."); The Sun Chronicle v. Web Solutions, Inc., NAF Claim No. FA0005000094895 (by failing to check whether the registration would infringe on the right of a third party as required by paragraph 2(b), Respondent registered the domain name in bad faith). Even assuming no willful misrepresentation, "the careless registration of a domain name, with the clear risk of infringing third party's trademark rights. . .is. . .an act of bad faith which falls in ICANN's Policy criteria." Everything for a Dollar Store Inc. v. Sheri Brown (DeC/AF-0222).  In the present case, Respondent's registration of the disputed domain name which incorporates Complainant's registered mark in its entirety supports a finding of bad faith.

[iii.]      Respondent's failure to respond to Complainant's cease and desist requests evidences bad faith

The Respondent's failure to respond to cease and desist letters or other communications is a factor in considering bad faith. CIGNA Corp. v. JIT Consulting, (DeC/AF-174)(Respondent's failure to respond to Complainant's cease and desist letter coupled with Respondent's infringement on Complainant's mark constituted bad faith.); Southern Exposure v. Southern Exposure, Inc., NAF Claim No. FA0005000094864 (Respondent's failure to respond to Complainant's cease and desist letter was further evidence of bad faith.); NFL Properties, Inc. et al. v. BBC Ab, WIPO Claim No. D2000-0147 ("Respondent's failure to respond to the inquiries of Complainants supports the inference that the registration and the use of the domain name has been in bad faith.").  In the present case, Respondent's failure to respond to Complainant's multiple attempts to contact Respondent and resolve the ongoing infringement of Respondent’s "Opus" mark supports a finding of bad faith.

            [iv.]      Respondent's use of the "Opus" mark for commercial gain

Use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with Complainant's mark constitutes bad faith use.  ICANN Policy ¶ 4(b)(iv).  Actual confusion is not required.  For example, where a person uses a domain name to cause "initial interest confusion" such that Internet users might abandon their effort to find Complainant's products, such use is bad faith use. Tall Oaks Publishing, Inc. v. National Trade Publications, Inc., NAF Claim No: FA0003000094346. In the present case it appears from the evidence that Respondent has been using the domain name to attract real estate business to his website.  The Opus mark is very well known in the real estate industry, and Complainant believes it is a famous mark.  Persons searching the Internet for Complainant under the term "Opus," would be led to Respondent's website because of the identity of Respondent's domain name with Complainant's mark.

It has been repeatedly recognized that registration of a domain name containing Complainant's mark plus a generic or descriptive term supports a finding of bad faith under paragraph ¶ 4(b)(iv).  Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Claim No. D2000- 0878 ("ink", and "inkjet(s)" added to "Canon" evidences bad faith); AltaVista Company v. S.M.A., Inc., WIPO Claim No. D2000-0927 ("usa" added to "altavista" supports finding of bad faith); ESPN, Inc. v Players Sportsbook & Casino, NAF Claim No. FA0008000095402 ("sportzone" added to "ESPN" evidences bad faith.).

In the present case, Respondent intentionally registered a domain name incorporating Complainant's federally registered mark in its entirety in conjunction with the very types of goods and services Complainant's well-known mark is associated with.  This was clearly an attempt to attract Internet users for commercial gain by creating a likelihood of confusion with Complainant's mark and constitutes bad faith.

 

B. Respondent

This Response specifically responds to the statements and allegations contained in the Complaint and includes any and all bases for Respondent to retain registration and use of the disputed domain name. ICANN Rule 5(b)(i).

 

            [a.]       “Opusrealty.com” is neither identical nor confusingly similar to Complainant’s mark.

 

Respondent, The Opus Realty Group (“Respondent”), registered the domain name of <opusrealty.com> on November 6, 2002. The Opus Realty Group is the fictitious business name The LFI Group, Inc. (“The LFI Group”).  The LFI Group is a licensed real estate broker in the State of California, and Respondent is an officer of The LFI Group.  The LFI Group has been a licensed broker in California and doing business under the name of The Opus Realty Group for over ten (10) years.  While Complainant asserts rights to the trademark, service mark and trade name of “Opus,” Respondent asserts that the domain name <opusrealty.com> is neither identical nor confusingly similar to the name “Opus.”  Complainant does not have a website under the name Opus Realty.  The Opus Realty Group is distinct to Respondent as it specifies in its title that it is in the real estate business.

 

                       

                        [i.]        Complainant’s Mark is Particularly Weak and it is therefore Less Likely to be Confused with Respondent’s Business.

 

A factor to be considered in determining if there is a likelihood of confusion is the strength of the trademark. The federal circuit has noted the importance of fame as a factor in likelihood of confusion tests, noting that famous marks are accorded more protection and “demand great vigilance on the part of a competitor who is approaching a famous mark, for...the lure of undercutting or discounting the fame of a mark is especially seductive.” Recot Inc. v. M.D. Becton 214 F.3d 1322 (Fed. Cir. 2000).

 

Complainant’s mark is particularly weak with respect to the business use of Respondent. Respondent has used the name “The Opus Realty Group” in connection with residential real estate sales in the San Francisco area for over ten (10) years.  Respondent’s use is local to the San Francisco area, and, in fact, Respondent does not do any business outside of the State of California. In doing business under the name “Opus Realty,” Respondent never even knew Complainant’s company existed, until he received this complaint. Between 1994 and the filing of this complaint, Complainant has never taken action to put Respondent on notice of its alleged claims against Respondent.

 

                        [ii.]       Complainant’s Mark is Particularly Weak When Translated from Its Latin Root.

 

A foreign language word mark is ordinarily considered to have the effect of its English equivalent for purposes of determining whether confusion is likely. Ex parte Odel-Werke Wien G.m.b.H., 111 U.S.P.Q. 286 (Comm’r 1956). Further, common words that are frequently used for different products or services, particularly those with descriptive or laudatory connotations, are usually found to be weak marks. Lang v. Retirement Living Pub. Co., 949 F.2d 576 (2d Cir. 1991).

 

Here, Complainant has registered the term “Opus,” with respect to a host of business activities. However, “opus,” when translated from the latin word “opus” simply means “work; labor; [or] the product of work or labor.” Black’s Law Dictionary, 3^rd Edition, page 1296. Therefore, Respondent’s business name is translated to “Realty Work.” The word work, especially in the context of a service business such as a real estate brokerage is so common as to make Complainant’s mark particularly weak. This situation is no different than if Complainant had a trademark of the term “service.” These terms are so vague and related to the service business as to further the weakness of Complainant’s mark.

 

                        [iii.]      In the Geographical Region Respondent is Operating, Respondent’s Services Do Not Compete with Complainant.

 

Where products are noncompeting, the degree of trademark similarity necessary to establish likelihood of confusion is increased. David Sherman Corp. v. Heublein, Inc., 340 F.2d 377 (3d. Cir. 2000). A holder of a mark needs to show the products are sufficiently related so that the public is likely to assume that he is the source or that there is a common origin or sponsorship. HMH Publishing Co. v. Brincat, 504 F.2d 713 (9^th Cir. 1974). Complainant must show the public is likely to be confused. Respondent asserts Complainant cannot carry this burden.

 

At the time Respondent began using the “Opus” name, Complainant was not qualified to sell the services Respondent sells, nor did Respondent do business in an area where it could compete with Plaintiff. In California, the Real Estate Brokerage business is highly regulated by the State government. To become a broker, a party must take a series of exams, and complete various employment requirements. Only after completing such requirements can a party be authorized to act as a broker in purchasing and selling real property. Respondent is licensed as a California real estate broker, and only performs realty work in California. Respondent has been licensed in this capacity under the name The Opus Realty Group, since 1994. Complainant did not become licensed to sell real estate until 1998. Between 1994 and the filing of this complaint (mid-2004), Complainant did not contact Respondent to indicate there was any trademark infringement occurring. Complainant allowed ten (10) years to pass after they began doing business in Respondent’s area before they contacted Respondent regarding their alleged claims. Essentially, if Complainant engages in the same business as Respondent, Complainant has now “moved-in” on Respondent’s local business. If this is allowed, Complainant will essentially be using the goodwill of Respondent’s business to help Complainant’s relatively new venture of selling real estate in California.

 

                        [b.]       Respondent Has Established Rights in the name “The Opus Realty Group.”

 

Respondent has used the name The Opus Realty Group in the San Francisco area in performing residential real estate brokerage services for over ten (10) years. During this time, Respondent has maintained a fictitious business name filing with the County Recorder’s Office, putting the world on notice of the person doing business as “The Opus Realty Group.” Further, the California Department of Real Estate website also provides notice that Respondent is doing business under this name. In doing so, Respondent has built up substantial good will in the name “The Opus Realty Group” in the market of residential real estate sales in this locale.

 

Not only does Respondent have substantial rights in the name “The Opus Realty Group” in the San Francisco area, Complainant is potentially seeking a bad faith use of Respondent’s business name. In this situation, if Respondent’s website were to be cancelled, Complainant may attempt to register the website. Because this site has been used by The Opus Realty Group, it would seem any subsequent registration and/or use made by Complainant would divert the good will from Respondent.

 

                        [c.]       Respondent Neither Registered nor Used the “Opus” name in Bad Faith.

 

A finding of bad faith may be made when it is found that Respondent has attempted to divert business from Complainant’s website. Respondent has made no such attempt, as Respondent had no knowledge of Complainant’s company or trademark prior to the filing of this Complaint. Further, with respect to the market in which Respondent operates, Respondent had long used the name The Opus Realty Group prior to Complainant opening an office in this locale.

 

Respondent had no knowledge of Complainant’s company until it received this complaint. Although Complainant alleges to have sent cease and desist letters, Respondent did not receive such letters until this Complaint was filed. Prior to receiving this Complaint, Respondent was neither aware of the existence of Complainant’s company, nor was it aware of Complainant’s trademark. Respondent simply understood he was performing “Realty Work,” in accord with the translated trade name of “Opus Realty.”

 

Respondent cannot divert business from Complainant. As is described above, in the highly regulated field of real estate sales, Complainant was not qualified to sell real estate inside the State California. However, Respondent is not authorized to sell real estate outside the state of California. In fact, a review of Complainant’s website <opuscorp.com> shows Complainant primarily deals in commercial real property. The Opus Realty Group only deals in residential properties. Therefore, the two entities are not competing in this market.

 

C. Additional Submissions

With little or no support, Respondent contends that Complainant's "Opus" mark is merely descriptive or weak and therefore no likelihood of confusion exists.  First, Respondent ignores that Complainant has obtained two separate registrations from the United States Patent and Trademark office for the "Opus" mark.  Such registrations create a presumption the mark is inherently distinctive and are given great deference in these proceedings.  In an analogous case, the respondent alleged the complainant's federally registered "AIM" mark was descriptive and therefore weak.  The panel explained:

[T]he USPTO is charged, in the first instance during examination of a federal trademark application, with ensuring that the mark, if registration is sought on the Principal Register,. . .is not "merely descriptive or deceptively misdescriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services." The majority of the Panel notes here that the PTO, through normal exercise of its responsibility and expertise, issued two separate trademark registrations to Complainant for its mark "AIM.”

The PTO, as an official governmental body having specialized expertise, is accorded a very strong presumption that, in furtherance of its official duties -- here being issuing a trademark registration, it correctly carried out its duties, i.e., it properly (a) examined both underlying "AIM" trademark applications and (b) reached a conclusion of registrability for each. The Respondent has simply not provided any proof that calls into question the validity of either of the "AIM" registrations, let alone enough to overturn the presumption accorded to the PTO. As such, the Panel strongly defers to the determination by the PTO that Complainant's "AIM" marks are sufficiently distinctive.

American Online, Inc. v. John Deep, NAF Claim No. FA0103000096795.  As in American Online, the USPTO has issued two separate trademark registrations to Complainant for the "Opus" marks. (Reg. No. 1,262,651, issued Dec. 7, 1983 and Reg. No. 2,520,075, issued 2001).  The federal registrations create a presumption of distinctiveness which has not been overcome by Respondent.

Respondent's descriptive argument is based solely on the "doctrine of foreign equivalents."  According to Respondent, "opus" is a Latin term which means "work" or "labor" when translated into English.  The purpose of the "foreign equivalents" doctrine is to assess "whether, to those American buyers familiar with the foreign language, the word would have a descriptive connotation." McCarthy on Trademarks § 11:34.  Contrary to Respondent's argument, the term "opus" is not a foreign word, but has become a recognized part of the English language with its own English meaning and English definition.  The Merriam Webster Dictionary defines "opus" as a noun meaning "work; esp: a musical composition."  The noun "work," as in a musical or other composition, is in no way descriptive of real estate related services.[1]

In addition to being inherently distinctive, the mark has developed substantial goodwill and secondary meaning as a result of Complainant prominently and continually using the mark in association with all of its goods and services throughout the United States since as early as 1975.  A cursory review of Complainant's website (http://www.opus-group.com) confirms it provides a full range of integrated services across the United States, including, without limitation, real estate development, architecture and engineering, property management, financing, leasing and sales. Complainant is specifically involved in residential and multifamily projects, including projects in California. Complainant divides its U.S. business into five different regions, including Opus West, which has no less than five California offices located in San Francisco, Sacramento, Los Angeles, Irvine and San Diego.  Accordingly, Respondent's attempts to classify the "Opus" mark as weak lack merit.

[a.]       OPUSREALTY.COM is identical or confusingly similar to Complainant's registered mark

Respondent does not challenge that its real estate services are the very type of goods and services covered by Complainant's registered "Opus" trademarks.  Respondent also does not dispute that Complainant offers real estate related services in California, including the San Francisco area.  Rather, Respondent erroneously contends it somehow has priority to use the "Opus" mark in the San Francisco area because it allegedly began using the "Opus" mark in 1994, stating that “essentially, if Complainant engages in the same business as Respondent, Complainant has now "moved-in" on Respondent's local business.  If this is allowed, Complainant will essentially be using the goodwill of Respondent's business to help Complainant's relatively new venture of selling real estate in California."  First, Complainant's use of the "Opus" mark in California is not "relatively new."  Complainant was actively using the "Opus" mark in California as early as 1985 when Opus West Construction Corp. was qualified to do business in the state.  Even if Complainant had not actually used the mark in California before Respondent, Complainant's federal registration with the USPTO eleven (11) years before Respondent's first use established nationwide priority.[2]

Rather than disputing that the domain name is confusingly similar to Complainant's registered mark, Respondent is actually making a latches or waiver type argument.  “Between 1994 and the filing of this complaint (mid-2004), Complainant did not contact Respondent to indicate there was any trademark infringement occurring. Complainant allowed ten (10) years to pass after they began doing business in Respondent’s area before they contacted Respondent regarding their alleged claims."  First, latches is not a defense to injunctive relief such as the cancellation of an offending domain name.  Lyons Partnership, L.P. v. Morris Costumes, Inc., 243 F.3d 789 (4th Cir. 2001) ("[L]aches does not bar a claim for prospective injunctive relief."); Sara Lee Corp. v. Kayser Roth Corp., 81 F.3d. 455 (4th Cir. 1996) (doctrine of latches "sparingly applied" where plaintiff seeks only equitable relief).  Moreover, the action complained of in this proceeding is Respondent's registration of the offending domain name in November 2002, which occurred just six (6) months before Complainant sent its first cease and desist letter.

Respondent's argument that it has established rights in a confined, localized use of Complainant's mark, places an impossible burden on Complainant and other holders of federally registered marks.  By Respondent's own admission, it has used "Opus Realty" only in the San Francisco area, and has registered the mark as an assumed name with the county only.  The name does not appear in the State of California Secretary of State database, or in any other readily accessible database.  There are thousands of counties in the U.S.  Respondent would require Complainant to physically check all of those county databases continually for infringements such as Respondent's, when Respondent had the option and duty to simply check the USPTO records for possible infringements.  Respondent then contends that because it was able to "fly under the radar" for a period of years by virtue of its confined local use and local registration, it has the right to register and use a conflicting domain name on the Internet throughout the U.S., indeed throughout the world.  The burden this would place on federal trademark registrants is simply untenable and unwarranted.

The offending <opusrealty.com> domain name incorporates and utilizes Complainant's registered "Opus" mark in its entirety.  The addition of the generic or descriptive term "realty" to the mark does not eliminate the potential for confusion.  This is especially true considering the word "realty" is directly related to Complainant's core goods services. Accordingly, the offending domain name is confusingly similar and should be cancelled.

[b.]       Respondent has no rights or legitimate interests in the domain name OPUSREALTY.COM

Respondent claims it has a legitimate interest in the offending domain name as a result of alleged use of the "Opus Realty" name in the San Francisco, California area since 1994.  The infringing use of a mark subsequent to its federal registration without any authorization from the mark owner does not establish any rights or legitimate interest in the mark.  An infringer's inability to establish a legitimate interest based on activities first occurring subsequent to registration was explained by the American Online panel:

Based on its federal trademark registrations, Complainant has acquired exclusive rights to use its "AIM" marks. Furthermore, by virtue of the registrations of these marks, as discussed above, the USPTO has implicitly recognized that each of these marks has acquired appropriate secondary meaning in the marketplace.

The majority of the Panel believes that Respondent has yet to provide any basis that would legitimize any claim it has to any of the contested "AIM" based domain names. In fact, it is extremely unlikely that the Respondent can even make such a claim.

The simple reason is that the contested domain name includes Complainant's "AIM" marks under which Complainant provides it services, and has been doing so for several years. Complainant has never authorized Respondent to utilize its registered "AIM" marks, nor does Complainant have any relationship or association whatsoever with Respondent. Hence, any use to which Respondent were to put the "AIM" marks, in connection with the goods or services set forth in Complainant's registrations or those related thereto -- as is the case here, would directly violate the exclusive trademark rights now residing in Complainant, both in terms of its federal rights and those at common law.

American Online, Inc. v. John Deep, NAF Claim No. FA0103000096795

[c.]       Respondent registered and used the OPUSREALTY.COM domain name in bad faith under ICANN Policy ¶ 4(a)(iii).

The Response alleges that "Respondent had no knowledge of Complainant's company until it received this complaint." Respondent's Response, p. 5.  This assertion is unsupported by any Affidavit or other evidentiary support from Respondent.  Moreover, Respondent has failed to provide any explanation why cease and desist letters sent to Respondent's "Whois" U.S. mail and email addresses, as well as the e-mail address listed on the offending website, were not received.  Respondent has also completely ignored that it is presumed to have constructive knowledge of Complainant's mark as a result of the federal registration. RRI Financial, Inc., v. Ray Chen, WIPO Claim No. D2001-1242 (actual or constructive knowledge of a complainant's mark before domain name registration is evidence of bad faith.)

Lastly, Respondent does not dispute that it failed to meet its obligations pursuant to paragraph 2 of the UDRP Policy.  Pursuant to paragraph 2, a registrant affirmatively represents that its requested domain name does not infringe upon or violate the rights of any third party.  The registrant acknowledges further that it is responsible for determining whether the requested domain name infringes or violates someone else's rights.  Respondent's silence on the issue confirms that Respondent failed to conduct any search prior to registering the offending domain name.  Sleep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc., NAF Claim No. FA2002000093636 (Bad faith registration and use found due to violation of Paragraph 2(b) of the Policy which charges Respondent with the responsibility to "determine whether your domain name registration infringes or violates someone else's rights."); The Sun Chronicle v. Web Solutions, Inc., NAF Claim No. FA0005000094895 (by failing to check whether the registration would infringe on the right of a third party as required by paragraph 2(b), Respondent registered the domain name in bad faith.) Even assuming no willful misrepresentation, "the careless registration of a domain name, with the clear risk of infringing third party's trademark rights. . .is. . .an act of bad faith which falls in ICANN's Policy criteria."  Everything for a Dollar Store Inc. v. Sheri Brown (DeC/AF-0222).

In the present case, Respondent's undisputed registration of the offending domain name without conducting any search whatsoever, including a trademark search which would have revealed Complainant's federally registered marks, establishes bad faith.

 

FINDINGS

            The Panel makes the following findings:

(1)                the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)                the Respondent has 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.

 

 

 

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)                the 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 holds a registration with the United States Patent and Trademark Office (USPTO) for the OPUS mark (Reg. No. 1,262,651, issued Dec. 27, 1983) for use in connection with leasing, purchasing, selling and managing land and buildings for others; construction services, namely constructing commercial, residential, governmental and industrial buildings for others; architectural, engineering and design services.  Complainant has established rights in the OPUS mark due to its registration with the USPTO. 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.”); 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).

 

Respondent’s <opusrealty.com> domain name is confusingly similar to Complainant’s OPUS mark pursuant to Policy ¶ 4(a)(i) because the domain name fully incorporates the mark and merely adds the generic or descriptive term “realty,” which relates to Complainant’s business, and the top-level domain “.com.” Thrifty, Inc. and Thrifty Rent-a-Car System, Inc. v. Airportparkinglots.com, NAF Claim No. FA129123 (thriftyairportparking.com confusingly similar with the THRIFTY marks since those additions have connotations that relate to Complainant's business services); 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); Christie’s Inc. v. Tiffany’s Jewelry Auction, Inc., D2001-0075 (WIPO Mar. 6, 2001) (finding that the domain name  <christiesauction.com> is confusingly similar to Complainant's mark since it merely adds the word "auction" used in its generic sense); Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); and Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants").

 

Rights or Legitimate Interests

 

Respondent has rights and legitimate interests in the <opusrealty.com> domain name because Respondent registered and is using the domain name for a bona fide offering of goods and services, i.e. residential real estate brokerage services, under Respondent’s registered trade name. Policy ¶ 4(c)(i). VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding Respondent has rights and legitimate interests in the domain name since the domain name reflects Respondent’s company name); Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO March 19, 2002) (finding Respondent’s use of the disputed domain name to make a bona fide offering of services bestowed rights and legitimate interests in the domain name); Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding Respondent’s operation of a bona fide business of online prop rentals for over two years was evidence Respondent had rights or legitimate interests in the disputed domain name).  Respondent has used the <opusrealty.com> domain name since November 6, 2002.

 

Respondent is commonly known by the <opusrealty.com> domain name and has conducted business under the Opus Realty registered trade name since February 2, 1995. Respondent has used the name Opus Realty Group for roughly ten years in connection with its residential real estate brokerage services in the San Francisco area.  Respondent has rights or legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Nat. Arb. Forum Oct. 21, 2002) (holding Respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s); see also World Publ’g, Inc. v. World Pen, Seattle Pen, Inc., D2000-0736 (WIPO Sept. 14, 2000) (finding that as Respondent registered the trade name "WORLD PEN" in July 1996 and had been conducting business under that name since that date, it had rights or legitimate interests in the disputed domain name).

 

This does not mean Respondent will necessarily prevail over Complainant in a trademark infringement case.  It merely means the expeditious Uniform Dispute Resolution Policy is not available to Complainant to resolve this case.

 

Registration and Use in Bad Faith

 

Within the United States, Respondent has constructive notice of a trademark registered with the United States Patent and Trademark Office.  The parties to this proceeding are both in the same general area of commerce.  Respondent knew (or should have known) about the registration.

 

Complainant and Respondent are competitors.  This Panel concludes Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iii). Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); 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).

 

DECISION

Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

 

 

 

 

Houston Putnam Lowry, Chartered Arbitrator and Panelist
Dated: October 19, 2004

 

 

 

 

 

 

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