TM Acquisition Corp. v. ERA Park Associates
Claim Number: FA0601000635086
Complainant is TM Acquisition Corp. (“Complainant”), represented by Kristen M. Walsh, of Nixon Peabody LLP, Clinton Square, P.O. Box 31051, Rochester, NY 14603-1051. Respondent is ERA Park Associates (“Respondent”), 1678 Beacon Street, Brookline, MA 02445.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <eraboston.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 23, 2006; the National Arbitration Forum received a hard copy of the Complaint on January 26, 2006.
On January 24, 2006, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <eraboston.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 January 30, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 20, 2006 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@eraboston.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <eraboston.com> domain name is confusingly similar to Complainant’s ERA mark.
2. Respondent does not have any rights or legitimate interests in the <eraboston.com> domain name.
3. Respondent registered and used the <eraboston.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, TM Acquisition Corp., is the owner of several ERA marks, which it licenses to ERA Franchise Systems, Inc. (“ERA”) for use in its business. Complainant and ERA are subsidiaries of the same parent company, Cendant Corporation. ERA is a franchisor of a business system for assisting independent real estate brokerages, and has used the ERA mark since 1971 in conjunction with providing real estate services. Complainant owns several registrations of the ERA mark with the United States Patent and Trademark Office (“USPTO”), for such services as real estate brokerage (Reg. No. 1,078,060 issued November 22, 1977) and mortgage banking (Reg. No. 2,691,643 issued February 15, 2003). ERA owns and operates a website under the <era.com> domain name.
Respondent registered the <eraboston.com> domain
name on November 15, 2002. At that
time, Respondent was a franchisee of ERA, but was warned by ERA that
registration of the <eraboston.com> domain name was not in
compliance with ERA policies and procedures.
ERA advised Respondent to take remedial action by June 18, 2005, or else
Respondent would be terminated.
Respondent did not take remedial action, and was terminated for this and
other violations of ERA’s policies and procedures. ERA’s Membership Agreement requires Respondent to “immediately
discontinue all use of the ERA Identification issued to you by this Membership
Agreement in any and all of your materials” and that “any continued use of the
ERA Identification…will constitute willful and knowing mark infringement,
dilution of ERA’s trademark rights, and unfair competition.”
Despite Respondent’s termination, and the terms in ERA’s Membership Agreement, the WHOIS database still lists Respondent as the owner of the <eraboston.com> domain name. Internet users who access this domain name are directed to a website with no active content.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has registered its ERA mark with the USPTO, which establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("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’s <eraboston.com> domain name incorporates Complainant’s ERA mark in its entirety, and adds the geographic term, “boston.” Complainant notes that some current ERA franchisees operate in the city of Boston. The addition of a geographic term to Complianant’s mark does not adequately distinguish Respondent’s domain name from the mark. See AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is confusingly similar to the Complainant's trade mark ‘AXA’” because “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”); see also Wal-Mart Stores, Inc. v. Walmarket Canada, D2000-0150 (WIPO May 2, 2000) (finding that the domain name, <walmartcanada.com> is confusingly similar to the complainant’s famous mark); see also JVC Americas Corp. v. Macafee, CPR007 (CPR Nov. 10, 2000) (finding that the domain name registered by the respondent, <jvc-america.com>, is substantially similar to, and nearly identical to the complainant's JVC mark). Therefore, Respondent’s <eraboston.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Once Complainant has made a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name, the burden shifts to Respondent to prove that it does have rights or legitimate interests under Policy ¶ 4(a)(ii). See 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); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). Complainant has presented a prima facie case. Therefore, the Panel will consider whether the evaluation of the evidence demonstrates rights or legitimate interests under Policy ¶ 4(c).
Respondent’s non-use of the disputed domain name is neither 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 Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where the respondent has advanced no basis on which the panel could conclude that it has a right or legitimate interest in the domain names, and no commercial use of the domain names has been established).
Complainant asserts that Respondent is not commonly known by the <eraboston.com> domain name. Furthermore, although Respondent at one time had limited authorization to use Complainant's marks, such license did not extend to the registration of the <eraboston.com> domain name. In fact, Respondent's registration of the disputed domain name violated its franchise agreement. Therefore, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See MB Fin. Bank, N.A. v. mbfinancialmortgage.com, FA 405073 (Nat. Arb. Forum Mar. 11, 2005) (“[D]espite being listed in the WHOIS information as ‘mbfinancialmortgage.com,’ Respondent is not commonly known by this domain name nor is [it] authorized to register domain names featuring Complainant’s MB FINANCIAL mark.”); see also 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).
Additionally, while Respondent was still a franchisee of ERA, Respondent was notified that it was not allowed to register the disputed domain name. Complainant also asserts that Respondent’s registration of the <eraboston.com> domain name was one of the reasons that led to ERA terminating Respondent’s franchise. After Respondent was terminated, the terms of the ERA Membership Agreement prohibited Respondent from making any future use of Complainant’s ERA mark. Respondent’s status as a former franchisee of ERA, especially in light of the situation surrounding Respondent’s termination, does not establish Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Savino Del Bene Inc. v. Gennari, D2000-1133 (WIPO Dec. 12, 2000) (finding that a former employee does not acquire rights or legitimate interests in a domain name identical to the former employer's trademark); see also Vinidex Pty Ltd. v. Auinger, AF-0402 (eResolution Oct. 18, 2000) (finding that the respondent lacked rights and legitimate interests in the domain name because it did not resolve to a developed website and the respondent, a former employee of the complainant, had constructive knowledge of the complainant’s rights in the mark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The fact that Respondent has not used the disputed domain name in connection with any active content does not prevent of finding of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Furthermore, the fact that Respondent was a former franchisee of Complainant who registered the disputed domain name in direct violation of its franchise agreement is indicative of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name); see also Express Services, Inc. v. Personnel Plus a/k/a Tony Mayer, FA 112624 (Nat. Arb. Forum Jun. 20, 2002) (finding that where the respondent, a former franchisee of the complainant, continued to use the complainant's marks in domain names, despite a franchise termination agreement prohibiting the respondent from using the complainant's marks, such use is further evidence of the respondent's bad faith).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <eraboston.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 14, 2006
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