TMT Enterprises, Inc. v. ACE d/b/a
Oceanfront Properties
Claim Number: FA0507000520042
PARTIES
Complainant
is TMT Enterprises, Inc. (“Complainant”),
represented by Mark B. Angres, of Davidson, Berquist, Jackson, & Gowdey LLP, 4300 Wilson Boulevard, Suite 700,
Arlington, VA 22203. Respondent is ACE d/b/a Oceanfront
Properties (“Respondent”),
represented by Jim Adams,
P.O. Box 590, Murrells Inlet, SC 29576.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <oceanbroker.com>,
registered with Network Solutions, Inc.
PANEL
The
undersigned Daniel B. Banks, Jr., as Panelist, 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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on July
19, 2005; the National Arbitration Forum received a hard copy of the Complaint
on July 25, 2005.
On
July 22, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <oceanbroker.com>
is registered with Network Solutions, Inc. and that the Respondent is the
current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
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
July 27, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 16,
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@oceanbroker.com by e-mail.
A
timely Response was received and determined to be complete on August 15, 2005.
An
Additional Submission was timely received from Complainant on August 19, 2005.
On August 23, 2005, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Daniel B. Banks, Jr. as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of the THE OCEAN BROKER service mark, having registered that
service mark with the United States Patent and Trademark Office on March 13,
1984. It was issued the United States
Service Mark Registration No. 1,313,864 and uses the mark to identify its real
estate brokering services on the website <theoceanbroker.com>. Complainant has used its mark in commerce
since as early as June 1982 and is well known under the name “The Ocean Broker”
both nationally and locally in South Carolina.
It routinely obtains clients from all over the United States. It is the premier real estate broker of
properties located in the coastal portion of South Carolina and throughout
Hilton Head Island.
Respondent
is a registered real estate agent for the independently owned and operated
franchise of Re/Max Carolina and does business in South Carolina under the
individual name “Jim Adams” and/or the business names “Oceanfront Properties”
and/or “Remax by the Sea.” It has a
place of business in Hilton Head, South Carolina and uses the domain name <oceanbroker.com>
to identify its real estate brokerage services.
On
January 3, 2000, Complainant attempted to register the
<theoceanbroker.com> domain name but was unable to do so because it had
already been registered by Respondent.
As a temporary solution, Complainant registered the
<theoceanbrokers.com> domain name, being unaware that Respondent had also
registered the disputed domain name, <oceanbroker.com>. Thereafter, Complainant checked the
registration status of the <theoceanbroker.com> domain name on a regular
basis and on September 28, 2000, found that the registration had lapsed. It then immediately registered the
<theoceanbroker.com> domain name.
In April 2005, Complainant became aware of Respondent’s use of the disputed
domain name, <oceanbroker.com>, by virtue of a client attempting
to email Complainant. Thereafter,
Complainant’s counsel attempted, without success, to get Respondent to transfer
the disputed domain name registration.
Respondent’s position was that the disputed domain name was not
identical because it lacked the word “the;” that it was not being used as a
mark; that it in no way violates the rights of Complainant; and, that it is merely a location on the
world wide web.
Complainant
complains that the disputed domain name is identical or confusingly similar to
Complainant’s mark and that Respondent has no rights or legitimate interests in
the disputed domain name because it has never been commonly known as “ocean
broker.” In a June 9, 2005 email, Respondent stated that he “never professed’
to be “The Ocean Broker.” Also, Complainant
has not licensed Respondent to use Complainant’s service mark in connection
with the disputed domain name.
Complainant
also claims that Respondent registered and uses the domain name in bad faith to
attract for, commercial gain, Internet users to Respondent’s website by
creating a likelihood of confusion with Complainant’s mark. Respondent clearly knew of Complainant’s
registration and use of its mark prior to registering the disputed domain name
because both engage in the same exact real estate brokerage business in the
same geographic region. Also,
Respondent brokered property on Hilton Head Island during his career.
B.
Respondent
Respondent
does not dispute that Complainant owns the THE OCEAN BROKER service mark and
uses the mark to identify its real estate brokerage service. Complainant’s operations are in a general
geographic area of approximately fifteen miles and it does not have operations
in other coastal areas of the state.
Respondent’s place of business is in Myrtle Beach, South Carolina,
approximately four hours away from Complainant’s service area. Respondent has never used Complainant’s
service mark to describe the services of Respondent. Complainant’s service mark is three separate words and the mark
is defined as those three separate words when used together.
Respondent
registered the disputed domain name on November 2, 1999. During its ownership of that name, there has
only been one instance of someone visiting that domain in error. Respondent immediately gave that individual
the Complainant’s correct address.
Respondent has used the disputed domain name for several years. It in no way violates any name or mark owned
by Complainant. It was registered prior
to Complainant’s decision to register a completely different domain name. Respondent has several domain names
registered and each is directed to its website. Respondent has never claimed to be “the ocean broker’ or “an
ocean broker” or “a ocean broker.”
Respondent brokered property on Hilton Head at one time but never
profited from, received business from, sought customers or clients from,
diverted business or customers or clients from Complainant’s mark.
When
this dispute arose, Respondent tried, without success, to work out a business
arrangement with Complainant so that both might profit. Each could choose to come to the others area
but neither can use any registered marks or names belonging to the other.
C.
Additional Submissions
In
an additional submission, Complainant states that Respondent has failed to make
a requisite and sufficient response to refute the evidence offered by
Complainant and that the panel should grant the relief requested. In addition, Complainant says that the
disputed domain name is nearly identical to Complainant’s federally registered service
mark and only differs by deleting the word “the.” Such a minor change is inconsequential in finding that the domain
name and service mark are confusingly similar.
Respondent
has not demonstrated a right or legitimate interest in the disputed domain
name. In fact, Respondent advocates its
position that it is not known as or operating under the name “ocean broker” and
that it has never claimed to be, and has never been commonly known as “the
ocean broker” or “ocean broker.”
Respondent
has registered and uses the disputed domain in bad faith. Respondent admits that it was aware of
Complainant’s service mark. There is
ample evidence to believe that Respondent knew of Complainant’ rights at the
time of registration because Respondent had been working on Hilton Head and had
actual knowledge of Complainant’s mark.
Even lacking actual knowledge, Respondent had constructive knowledge by
virtue of the federal registration of the service mark. Such knowledge is evidence of bad faith
registration and use. Also, Respondent
has used the disputed domain name in bad faith. It admits to actual confusion and to thousands and thousands of
hits on its website. Moreover, there is
no explanation as to why Respondent registered the subject domain name in the
first place. Respondent’s use
constitutes a disruption of Complainant’s legitimate interests and is evidence
of bad faith.
FINDINGS
1 – The disputed domain name is identical
or confusingly similar to a service mark in which Complainant has rights.
2 – Respondent has no rights or
legitimate interests in the disputed domain name.
3 – The disputed domain was 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.
The
omission of the article “the” from Respondent’s <oceanbroker.com>
domain name is insufficient to differentiate the disputed domain name from
Complainant’s THE OCEAN BROKER mark pursuant to Policy ¶ 4(a)(i). See Antoun v. Truth Squad, FA 114766
(Nat. Arb. Forum Aug. 21, 2002) (stating that the article "the"
is often added only for grammatical purposes, and may be superfluous to the
name itself"); see also Mega Soc. v. LoSasso, FA 215404 (Nat. Arb.
Forum Jan. 30, 2004) (finding that the <megasociety.net> and <megasociety.com> domain names
were identical or confusingly similar to Complainant's THE MEGA SOCIETY
mark).
Also,
Respondent’s addition of the generic top-level domain “.com” fails to
distinguish Complainant’s mark from Respondent’s <oceanbroker.com>
domain name pursuant to Policy ¶ 4(a)(i).
See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000)
(finding <pomellato.com> identical to the complainant’s mark because the
generic top-level domain (gTLD) “.com” after the name POMELLATO is not
relevant); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June
25, 2000) (finding that the top level of the domain name such as “.net” or
“.com” does not affect the domain name for the purpose of determining whether
it is identical or confusingly similar).
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
Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000)
(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 Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228
(WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere
assertion by the complainant that the respondent has no right or legitimate
interest is sufficient to shift the burden of proof to the respondent to
demonstrate that such a right or legitimate interest does exist). Respondent has failed to submit evidence to
meet its burden of proof of legitimate interests.
Respondent is
using the disputed domain name, which is confusingly similar to Complainant’s
THE OCEAN BROKER mark, to operate a website that features competing real estate
brokerage services. Such use is neither
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 Computerized
Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of
[Complainant’s] SAFLOK mark to market products that compete with Complainant’s
goods does not constitute a bona fide offering of goods and services.”); see
also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
Furthermore, Respondent is
not commonly known by the <oceanbroker.com> domain name. Respondent operates under the names ACE,
LLC, Jim Adams, and RE/MAX By The Sea.
The Panel finds that Respondent does not have rights or legitimate
interests pursuant to Policy ¶ 4(c)(ii).
See Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13,
2002) (finding that the respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because the respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”); Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan.
23, 2001) (finding that the respondent does not have rights in a domain name
when the respondent is not known by the mark).
Respondent
is using the disputed domain name to operate a website that offers competing
real estate brokerage services. Such
use constitutes disruption under Policy ¶ 4(b)(iii). See 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 the
respondent and the 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 that the respondent registered the domain name in question to disrupt
the business of the complainant, a competitor of the respondent)
Furthermore,
Respondent’s use of the <oceanbroker.com> domain name, which is
confusingly similar to Complainant’s THE OCEAN BROKER mark, will likely cause
confusion among Internet users as to Complainant’s sponsorship of or
affiliation with the resulting website.
Such commercial use is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs.,
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); see also MathForum.com, LLC
v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly
similar to the complainant’s mark and the domain name was used to host a
commercial website that offered similar services offered by the complainant
under its mark).
Finally,
it appears that Respondent registered the disputed domain name with actual or
constructive knowledge of Complainant’s rights in the trademark due to
Complainant’s registration with the USPTO.
Respondent’s registration of the domain name, in spite of actual or
constructive knowledge, amounts to bad faith registration and use pursuant to
Policy ¶ 4(a)(iii). See Digi Int’l
v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively.”); see also Orange Glo
Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also 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 <oceanbroker.com>
domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr., Panelist
Dated: September 5, 2005
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