National Arbitration Forum

 

DECISION

 

RE/MAX International, Inc. v. O.P.M. Corporation c/o Giovanni Caporaso

Claim Number: FA0506000497851

 

PARTIES

 

Complainant is RE/MAX International, Inc. (“Complainant”), represented by Nancy L. Dempsey, of RE/MAX International, Inc., 8390 East Crescent Parkway, Suite 600, Greenwood Village, CO 80111.  Respondent is O.P.M. Corporation c/o Giovanni Caporaso  (“Respondent”), represented by Luiz Gonzaga da Silva, Rua Floriano Peixoto 215 Manaus, 69007050, AM, Brazil.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <remaxoffshore.com>, registered with Namesecure.com.

 

PANEL

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2005; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2005.

 

On June 20, 2005, Namesecure.com confirmed by e-mail to the National Arbitration Forum that the domain name <remaxoffshore.com> is registered with Namesecure.com and that the Respondent is the current registrant of the name.  Namesecure.com has verified that Respondent is bound by the Namesecure.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 July 7, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 27, 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@remaxoffshore.com by e-mail.

 

A timely Response was received and determined to be complete on July 20, 2005.

 

Both parties made Additional Submissions which were deemed to be received timely.

 

On July 25, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

RELIEF SOUGHT

 

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

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complaint asserts the following. 

 

Complainant RE/MAX International, Inc. (“RE/MAX”) is the owner of the following subsisting federal trademark registrations: U.S. Trademark Registration Nos. 1,139,014; 1,339,510; 2,403,626; 2,468,858; and 2,119,607 for the service mark RE/MAX and U.S. Trademark Registration Nos. 2,054,698 and 2,106,387 for the service mark REMAX.  Each of these U.S. Trademark Registrations are valid and subsisting, and U.S. Trademark Registration Nos. 1,139,014; 1,339,510; 2,054,698; 2,106,387; and 2,119,607 have achieved incontestability under 15 U.S.C. § 1065. 

 

Throughout the United States, Complainant provides real estate brokerage services through a network of franchisees and affiliated independent contractor/sales associates who are given limited authorization to use these trademarks in connection with providing real estate brokerage services (the "RE/MAX Network").  Since at least as early as 1973, those affiliated with the RE/MAX Network have provided real estate brokerage services throughout the United States under the distinctive RE/MAX registered trademarks, including RE/MAX and REMAX.  At present, the RE/MAX Network is comprised of approximately 5,700 individual offices with a worldwide force of sales agents numbering approximately 100,000.  Of those worldwide sales agents, approximately 77,000 offer real estate brokerage services under the mark RE/MAX in interstate commerce in the United States.

 

Complainant contends that the dominant portion of the <remaxoffshore.com> domain name contains Complainant’s distinct RE/MAX mark.  The addition of the geographically descriptive and/or generic term “offshore” does not create the distinction necessary to overcome the confusing similarity between the disputed domain name and Complainant’s mark.  Thus, Respondent’s <remaxoffshore.com> domain name is confusingly similar to Complainant’s RE/MAX trademark. 

 

Complainant claims that Respondent has used and currently uses the <remaxoffshore.com> domain name to advertise the sale of offshore real estate and the sale of franchises providing the opportunity to sell offshore real estate under the name “RE/MAX Offshore.”  Respondent is not now, nor has ever been, affiliated with Complainant in any manner whatsoever.  Respondent is not, nor has ever been, licensed, authorized or otherwise permitted in any way by Complainant to use Complainant’s trademarks, including without limitation, Complainant’s REMAX and RE/MAX trademarks. 

 

Further, when an Internet user clicks on the “Franchise Available” link on the web site located at Respondent’s <remaxoffshore.com> domain name, the Internet user is redirected to a web site located at <offshore-world.org/RemaxOffshoreFranchise.htm>, where the following text is displayed: 

 

RE/MAX OFFSHORE is your online resource for home buying, home selling, financing and property listings. We are the Real Estate network that MAXimize your profits with OFFSHORE estate investments and that has the most competitive advantages to offer both buyers and sellers.

 

This web page then provides a comparison of the franchise opportunity it provides with the franchise opportunity provided by Complainant’s leading competitors, including without limitation, Coldwell Banker, Century 21, ERA and Keller Williams.  This use by Respondent of the domain name to divert Internet users to a web site that purports to compare Respondent’s services with those provided by Complainant’s leading competitors infringes upon Complainant’s RE/MAX trademark.     

 

Moreover, Complainant contends that Respondent is using the <remaxoffshore.com> domain name and Complainant’s RE/MAX trademark for the questionably legal purpose of attracting to Respondent’s web site foreign investors who seek to evade taxes in their home countries.  Such conduct constitutes dilution (by tarnishment) of Complainant’s RE/MAX trademark, and cannot establish rights or legitimate interests on behalf of Respondent in the domain name.  In total, Respondent's use of the <remaxoffshore.com> domain name infringes upon and/or dilutes Complainant's RE/MAX trademark, and is therefore not a bona fide offering of goods or services nor a legitimate noncommercial or fair use.

 

B.     Respondent

 

The Respondent contends that the disputed domain name is not confusingly similar to service marks in which Complainant has rights because on its web site, Respondent has placed a disclaimer stating that its business is not related to that of Complainant.  Respondent states that its business is completely different from that of Complainant and that Complainant does not hold a trademark registration in Panama where the Respondent is administrating his business and web site.

Respondent states that the name of its domain name is an abbreviation of its business name, Real Estate Maximization Offshore and that Respondent has run an offshore business “Real Estate Maximization Offshore – Offshore World” at <offshore-world.org> since 1995. The new domain has been registered with the purpose of separating the real estate offshore listing from offshore services listing, and the initials of the business name, “Real Estate Maximization Offshore,” have been used to create the domain name.

Respondent states that it has used the domain name <remaxoffshore.com> in good faith in association with its services and business and the domain name is clearly descriptive of the activity and the geographical name of the location of the Respondent’s business activities.

 

Respondent states that it has not registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or  to a competitor of  Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.  Further, Respondent contends that it has not attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark, because there is not confusion between a real estate broker and a listing business like Respondent’s business.

 

Finally, Respondent states that it registered the <remaxoffshore.com> domain name on April 22, 2005 and that the domain name does not incorporate the RE/MAX trademark, because “Offshore” is part of the name and identifies the type of business and creates the distinction necessary to overcome any confusing similarity between the disputed domain name and Complainant’s mark.  Respondent states that the RE/MAX mark is recognized worldwide because of the slash and the balloon logo, and neither of these have been used in the disputed domain name.  Furthermore, Respondent states that the Complainant has never promoted offshore investments and/or listings.

 

C.     Additional Submissions

 

Both parties have submitted timely additional submissions.

 

In its Additional Submission, Complaint contends that it does indeed hold a valid Panamanian trademark for the service mark RE/MAX and that it, and its affiliates, do offer real estate brokerage and real estate related services in more than 50 countries, including those countries alleged to be served by Respondent.  Complaint disputes Respondent’s contention that its mark is merely descriptive stating that under applicable trademark law, registered marks hold a presumption that they are inherently distinctive.  Complaint also contends that Respondent’s argument that RE/MAX is recognized only because of the “slash and balloon logo” is misplaced.  Complaint points that although it owns trademark registrations that include the slash and balloon logo, it owns trademark registrations for the RE/MAX mark alone.  Complainant’s Additional Submission also responds to the assertion by Respondent that it has operated “Real Estate Maximazation Offshore—Offshore World” at <offshore-world.org> since 1995.  Complainant points out that the disputed domain name was not registered until April 21, 2005.  According to Complainant, prior to the registration of <www.remaxoffshore.com> Respondent was known as Offshore World; thus Complainant contends that Respondent was not commonly known by the domain name.  Next Complaint alleges that Respondent undoubtedly had actual or constructive knowledge of Complainant’s marks, particularly in light of the similarity between Complainant’s mark and Respondent’s logo.  Next Complainant points out that the Respondent uses its domain name to advertise the sale of franchises providing the opportunity to sell offshore real estate.  Respondent’s site provides a link to another site which offers a comparison of franchise opportunities provided by Complainant’s leading competitors.

 

Respondent has made an Additional Submission.

 

Respondent states that some of the exhibits provided by Complainant do not give an accurate representation of Respondent’s business.  Respondent states that it has to use the domain name because if it were to use the whole name of its business, it is so long, no one would remember it.  Respondent states that Complainant has no intention of operating offshore; thus the only purpose of this proceeding is to “abduct” the domain name.  Respondent also asserts that Complainant has not been consistent in its actions as it has not proceeded against similar companies in several other countries.  Finally, Respondent states that because Complainant’s real mark is the balloon with the name “RE/MAX,” consumers will not be confused by the domain name.

 

FINDINGS

 

Complainant RE/MAX International, Inc. is the owner of the following subsisting federal trademark registrations: U.S. Trademark Registration Nos. 1,139,014; 1,339,510; 2,403,626; 2,468,858; and 2,119,607 for the service mark RE/MAX and U.S. Trademark Registration Nos. 2,054,698 and 2,106,387 for the service mark REMAX. Each of these U.S. Trademark Registrations is valid and subsisting, and U.S. Trademark Registration Nos. 1,139,014; 1,339,510; 2,054,698; 2,106,387; and 2,119,607 have achieved incontestability under 15 U.S.C. § 1065. 

 

Throughout the United States and internationally, Complainant provides real estate brokerage services through a network of franchisees and affiliated independent contractor/sales associates who are given limited authorization to use the RE/MAX trademark in connection with providing real estate brokerage services.  At present, the RE/MAX Network is comprised of approximately 5,700 individual offices with a worldwide force of sales agents.  Complainant holds a valid Panamanian registration for the service mark RE/MAX and that it, and its affiliates, do offer real estate brokerage and real estate related services in more than 50 countries, including those alleged to be served by Respondent. 

 

The record reflects that although Respondent has operated “Real Estate Maximazation Offshore—Offshore World” at <offshore-world.org> since 1995, the disputed domain name was not registered until April 21, 2005.   Prior to the registration of <www.remaxoffshore.com> Respondent was known as Offshore World; thus  Respondent was not commonly known by the domain name.  Respondent uses its domain name to advertise the sale of franchises providing the opportunity to sell offshore real estate and its site provides a link to another site which offers a comparison of franchise opportunities provided by Complainant’s leading competitors

 

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 has demonstrated it has established rights in the REMAX mark by registering it with the United States Patent and Trademark Office.[1]  Complainant argues that the <remaxoffshore.com> domain name is confusingly similar to Complainant’s REMAX mark because the only differences between the mark and the domain name are the addition of the word “offshore” and the addition of the generic top-level domain “.com.”  These additions to Complainant’s registered mark are insufficient to negate the confusingly similar aspects of Respondent’s domain name 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);  Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").

 

The record in this case indicates, contrary to the assertion of Respondent, that Complainant has an established network of franchisees and affiliated independent contractors who use the RE/MAX trademark in connection with providing real estate brokerage services not only in the United States, but also throughout the world.  Indeed, Complainant offers these services internationally in 50 countries, including countries advertised on Respondent’s web site.   Unlike Prudential Ins. Co. of Am. v. QuickNet Commc’ns, FA 146242 (Nat. Arb. Forum Mar. 27, 2003), where the panel held that the <prudentialmotors.com> domain name, which incorporated the PRUDENTIAL mark with the addition of the word “motors,” had no apparent connection to the complainant or the insurance and financial industry and was thus not confusingly similar to the complainant’s mark, here the similarity between Respondent’s business and Complainant’s business creates a confusing similarity within the meaning of Policy ¶ 4(a)(i). 

 

Finally, the Panel rejects Respondent’s arguments with respect to the claims that the domain name is clearly descriptive, and lacks the slash and balloon.  Complainant has established rights in the word REMAX mark and as such Complainant has established a presumption that the mark, without regard to the slash and balloon, is inherently distinctive and has acquired secondary meaning.  See Mens’ Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002).  Respondent has done nothing to overcome that presumption.

 

Rights or Legitimate Interests

 

The Panel agrees with Complainant’s assertion that the Respondent is using the <remaxoffshore.com> domain name to redirect Internet users that may be interested in Complainant’s  services to Respondent’s web site featuring advertisements for the sale of offshore real estate and real estate services in direct competition with Complainant’s business.   Thus, Respondent’s use of a domain name for this purpose is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated web sites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

 

Complainant has established that Respondent is not commonly known by the <remaxoffshore.com> domain name and that Respondent has not been licensed or otherwise authorized by Complainant to use the REMAX mark.   Thus, Respondent has not established rights or legitimate interests in the domain name 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"). 

 

Registration and Use in Bad Faith

 

The record supports Complainant’s contention that Respondent is using the <remaxoffshore.com> domain name for Respondent’s commercial gain to attract Internet users to Respondent’s web site by creating a likelihood of confusion with Complainant’s mark; this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).  Although Respondent points to a disclaimer on the web site, and some ICANN panels have found these disclaimers persuasive on the issue of bad faith, the Panel is more persuaded by the line of cases rejecting this argument because, under the facts of this case, the disclaimer will not prevent initial interest confusion, and would likely be ignored by Internet users.  See Cavalera v. 420 Gear, FA 96315 (Nat. Arb. Forum Jan. 25, 2001).

 

Furthermore, the record reflects that Respondent registered the <remaxoffshore.com> domain name with actual or constructive knowledge of Complainant’s rights in the REMAX mark due to Complainant’s registration of the mark. Therefore, the Panel concludes that Respondent’s  registration of a domain name that is confusingly similar to another’s mark despite actual or constructive knowledge of the mark holder’s rights constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). 

 

DECISION

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

 

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

 

 

 

 

Bruce E. Meyerson, Panelist
Dated: August 4, 2005