TM Acquisition Corp. v. Michael Gonzalez
a/k/a Mike Gonzalez
Claim
Number: FA0505000477193
Complainant is TM Acquisition Corp. (“Complainant”), represented
by Tom K. Ara of Lord Bissell &
Brook LLP, 300 S. Grand
Avenue, Suite 800, Los Angeles, CA, 90071.
Respondent is Michael Gonzalez a/k/a Mike Gonzalez (“Respondent”), 5751 Treaschwig Rd., Spring, TX,
77373.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <mycentury21agent.com> and <21realestate.com>,
registered with Spot Domain Llc and Tucows Inc., respectively.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically May 13,
2005; the National Arbitration Forum received a hard copy of the Complaint May
16, 2005.
On
May 16, 2005, Spot Domain Llc confirmed by e-mail to the National Arbitration
Forum that the domain name <mycentury21agent.com> is registered
with Spot Domain Llc and that Respondent is the current registrant of the
name. Spot Domain Llc verified that
Respondent is bound by the Spot Domain Llc registration agreement and thereby
has agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On
May 18, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum
that the domain name <21realestate.com> is registered with Tucows
Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is
bound by the Tucows Inc. registration agreement and thereby has agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On
May 25, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 14, 2005, 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@mycentury21agent.com and
postmaster@21realestate.com by e-mail.
A
timely Additional Submission was received from Complainant June 20, 2005.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
June 20, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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 National Arbitration Forum's Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent
registered, <mycentury21agent.com> and <21realestate.com>,
are confusingly similar to Complainant’s CENTURY 21 and C-21 marks.
2. Respondent has no rights to or legitimate
interests in the <mycentury21agent.com> and <21realestate.com>
domain names.
3. Respondent registered and used the <mycentury21agent.com>
and <21realestate.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, TM Acquisition Corp., is a Delaware
corporation that holds a family of CENTURY 21 marks, which it licenses to
Century 21 Real Estate LLC. Both
entities are subsidiaries of Cendant Corporation. Complainant holds numerous registrations with the United States
Patent and Trademark Office (“USPTO”) for CENTURY 21-related marks, including
the CENTURY 21 (Reg. No. 2,178,970 issued August 4, 1998) and C-21 (Reg. No.
1,268,185 issued February 21, 1984) marks.
Respondent registered the <mycentury21agent.com> domain name April 23, 2002 and the <21realestate.com>
domain name February 5, 2004. Respondent
is using the <21realestate.com> domain name to resolve to a
website that advertises Respondent’s real estate business with Complainant’s
competitor, RE/MAX Advantage. From
about June 2004 until about April 2005, Respondent used the <mycentury21agent.com>
domain name for the same purpose.
Currently, the <mycentury21agent.com> domain name resolves
to a website that states that it is the “Future home of mycentury21agent.com!”
and contains advertisements and links to various services, including real estate
services.
Respondent is a
former affiliate of a Century 21 franchisee with which Respondent was
associated from about October 24, 2001, through June 15, 2004. In June 2004, Respondent moved its real
estate business to RE/MAX Advantage, a company in direct competition with
Complainant.
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 will
draw such inferences as the Panel considers appropriate pursuant to paragraph
14(b) of the Rules. The Panel is
entitled to accept all reasonable allegations and inferences set forth in the
Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc.
v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000)
(holding that the respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of the complaint to be deemed true); see
also Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is
appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a)
of the Policy requires Complainant to 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 has
established by extrinsic proof in this proceeding that it has rights in the
CENTURY 21 and C-21 marks through registration of the marks with the
USPTO. In the absence of a response
from Respondent, the Panel has before it no evidence to rebut Complainant’s prima
facie case of rights. Therefore,
the Panel concludes that Complainant has established rights in the marks under
Policy ¶ 4(a)(i). 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. The respondent has the
burden of refuting this assumption).
The <mycentury21agent.com>
domain name includes Complainant’s CENTURY 21 mark in its entirety and adds
the generic or descriptive terms “my” and “agent.” Under the Policy, addition of generic or descriptive terms to the
registered mark of another does not create a distinction between the domain
name and the mark. Therefore, the Panel
finds that the <mycentury21agent.com> domain name is confusingly
similar to a mark in which Complainant has rights pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or
generic nouns can rarely be relied upon to differentiate the mark if the other
elements of the domain name comprise a mark or marks in which another party has
rights).
The <21realestate.com>
domain name registered by Respondent contains the dominant portion of
Complainant’s C-21 mark as well as generic or descriptive terms that bear an
obvious relation to Complainant’s business.
Respondent’s attempt to distinguish the domain name from the mark by
adding words to a significant term of Complainant’s mark is unsuccessful in
this instance and the Panel finds the domain name to be confusingly similar to
a mark in which Complainant has rights pursuant to Policy ¶ 4(a)(i). See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the
<asprey.com> domain name was confusingly similar to the complainant’s
ASPREY & GARRARD and MISS ASPREY marks); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing
similarity where the respondent’s domain name combined the complainant’s mark
with a generic term that had an obvious relationship to the complainant’s
business).
Complainant has
satisfied Policy ¶ 4(a)(i).
Complainant
established that it has rights to and legitimate interests in the marks
contained in their entirety in the disputed domain names. Complainant also has the initial burden of
establishing that Respondent lacks such rights and legitimate interests. Once Complainant has established a prima
facie case, the burden shifts to Respondent to establish a claim of rights
or legitimate interests in the disputed domain names, which may be done in
accordance with one of the three safe harbor provisions under Policy ¶
4(c). In this instance, Complainant met
its initial burden and Respondent failed to contest Complainant’s allegations. Therefore, the Panel determines that
Respondent has not established rights or legitimate interests in the disputed
domain names. See G.D. Searle
v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that,
where the complainant has asserted that the respondent has no rights or
legitimate interests with respect to the domain name, it is incumbent on the
respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once the complainant asserts that
the respondent has no rights or legitimate interests with respect to the
domain, the burden shifts to the respondent to provide credible evidence that
substantiates its claim of rights and legitimate interests in the domain name);
see also Parfums Christian Dior v.
QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a
response, the respondent has failed to invoke any circumstance which could
demonstrate any rights or legitimate interests in the domain name).
Complainant
contends that Respondent is using the <21realestate.com> domain
name to advertise Respondent’s real estate business, which he conducts through
RE/MAX, a direct competitor of Complainant.
Complainant further claims that Respondent used the <mycentury21agent.com>
domain name for the same purpose until approximately April 2005. Under the Policy, clear precedent allows the
inference that Respondent’s use of domain names that are confusingly similar to
Complainant’s registered mark to divert Internet users to Respondent’s website
is not sufficient to satisfy Respondent’s burden pursuant to Policy ¶¶ 4(c)(i)
or (iii), especially where Respondent’s website advertises services that
compete with Complainant. See Avery
Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding
that the respondent had no rights or legitimate interests in the disputed
domain name where it used the complainant’s mark, without authorization, to
attract Internet users to its business, which competed with the complainant); see
also Clear Channel Commc’ns, Inc. v. Beaty Enters., FA 135008 (Nat. Arb.
Forum Jan. 2, 2003) (finding that the respondent, as a competitor of the
complainant, had no rights or legitimate interests in a domain name that
utilized the complainant’s mark for its competing website); see also MSNBC Cable, LLC v. Tysys.com,
D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in
the famous MSNBC mark where the respondent attempted to profit using the
complainant’s mark by redirecting Internet traffic to its own website). Additionally, the fact that Respondent was
employed by a licensee of Complainant does not bestow upon Respondent the right
to use variations of Complainant’s marks as an individual. See TM Acquisition Corp. v.
Schneider, FA 96272 (Nat. Arb. Forum Feb. 2, 2001) (holding that
respondent, an employee of one of complainant’s licensees, had no rights or
legitimate interests in a domain name that contained a variation of
complainant’s mark, because a respondent can “gain no greater right to the use
of an unlicensed variation of the mark than can her employer”).
Complainant
claims that no evidence suggests that Respondent has been commonly known by the
<mycentury21agent.com> or <21realestate.com> domain
name. The only evidence of Respondent’s
identity is the WHOIS information, which indicates that Respondent is known as
“Michael Gonzalez.” Thus, since
Respondent has defaulted and provided no evidence to challenge Complainant’s
assertions in this regard, the Panel determines that Respondent has not
established rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(c)(ii). See
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 Gallup Inc. v. Amish Country
Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that respondent
has no rights in a domain name when the respondent is not known by the mark).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Complainant
alleges that Respondent acted in bad faith in registering and using the domain
names. Complainant uses its CENTURY 21
and C-21 marks in association with its real estate business and Respondent
works in the same field. In fact,
Respondent is a former affiliate of one of Complainant’s licensees and
subsequently moved its real estate business to Complainant’s competitor, RE/MAX
Advantage. Furthermore, Respondent is
using or has used the <mycentury21agent.com> and <21realestate.com>
domain names to advertise Respondent’s competing services. These circumstances indicate that Respondent
registered the disputed domain names primarily to disrupt Complainant’s
competing business, which is evidence of bad faith registration and use under
Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters,
D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive
relationship between the complainant and the respondent, the respondent likely
registered the contested domain name with the intent to disrupt the
complainant's business and create user confusion); see also VeriSign, Inc. v. Tandon, D2000-1216
(WIPO Nov. 16, 2000) (finding bad faith where the respondent has connections
with a competitor of the complainant’s digital security business and the
respondent indicated that she intended to enter the same business); see also
S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Complainant
argues that Respondent’s use of the <mycentury21agent.com> and <21realestate.com>
domain names to resolve to Respondent’s competing website is an attempt to
attract Internet users to Respondent’s commercial website by rendering it
likely that users will become confused as to Complainant’s affiliation with the
resulting website. The Panel finds that
by using portions of Complainant’s marks that have become distinctive in the
real estate business to resolve to a website advertising Respondent’s real
estate business with Complainant’s competitor, Respondent has created a
likelihood of confusion for Respondent’s commercial gain, which is evidence of
bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding
that the respondent intentionally attempted to attract Internet users to his
website for commercial gain by creating a likelihood of confusion with the
complainant’s mark and offering the same chat services via his website as the
complainant); see also Identigene,
Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith
where the respondent's use of the domain name at issue to resolve to a website
where similar services are offered to Internet users is likely to confuse the
user into believing that the complainant is the source of or is sponsoring the
services offered at the site).
Complainant has
satisfied Policy ¶ 4(a)(iii).
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mycentury21agent.com> and <21realestate.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: July 5, 2005.
Click Here to return
to the main Domain Decisions Page.
Click Here to return to our Home
Page
National Arbitration Forum