Residential Equity, LLC v. Amjad Kausar
Claim Number: FA0209000125266
PARTIES
Complainant
is Residential Equity, LLC,
Parsippany, NJ, USA (“Complainant”) represented by Kathryn S. Geib. Respondent is
Amjad Kausar, Karachi, PAKISTAN (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwcoldwellbanker.com>,
registered with eNom, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 18, 2002; the Forum received a hard copy of the
Complaint on September 19, 2002.
On
September 18, 2002, eNom, Inc. confirmed by e-mail to the Forum that the domain
name <wwwcoldwellbanker.com>
is registered with eNom, Inc. and that Respondent is the current registrant of
the name. eNom, Inc. verified that Respondent is bound by the eNom, 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
September 24, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of October 14, 2002, 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@wwwcoldwellbanker.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 1, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the “Panel”)
finds that the 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 Forum’s Supplemental Rules and any rules and
principles of law that the Panel deems applicable, without the benefit of any
Response from Respondent.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
The
domain name registered by Respondent, <wwwcoldwellbanker.com>, is confusingly similar to Complainant’s
registered COLDWELL BANKER family of marks.
Respondent has no rights or legitimate interests in the <wwwcoldwellbanker.com> domain name. Respondent registered and used the <wwwcoldwellbanker.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant, Residential Equity, LLC, is
the holder of the trademark COLDWELL BANKER (U.S. Reg. No. 1,154,155),
registered on May 12, 1981 on the Principal Register of the United States
Patent and Trademark Office (“USPTO”) and used in commerce since 1974. Complainant
has also registered many variations of this mark. Complainant’s family of marks
has also been registered in numerous nations worldwide.
Complainant is a franchiser of a system
of business for the promotion and assistance of independently owned and operated
real estate brokerage offices and uses its family of marks in conjunction with
this service. Complainant has operated its principal website at
<coldwellbanker.com> since May 2, 1995.
From September 14, 2001, through the
present, Respondent’s domain name has redirected Internet users to cites such
as <gotoo.com> (offering “free searches of forclosures” and providing
links to <forsalebyowner.com> and <mortgages-loan.net>) and
<ownbox.com> (offering both real estate foreclosure services and
listings). Respondent is not licensed or otherwise authorized to use
Complainant’s registered COLDWELL BANKER mark for any purpose.
Sometime on or before September 2001,
R.S. Potdar registered the <wwwcoldwellbanker.com> domain name, linking the domain name
to various other websites. Complainant’s attempt to notify Potdar of his
infringement was not replied to. Subsequently, it was discovered that Potdar
had transferred the domain name to Respondent, Amjad Kausar. When Complainant
contacted Respondent to notify it of Complainant’s rights in the COLDWELL
BANKER mark, Respondent replied with a sale offer of $500 for the domain name
registration. Complainant in turn replied that it would never purchase the
disputed domain name registration but would be willing to pay any transfer fees
associated with a voluntary transfer of Respondent’s rights in the domain name.
Respondent ceased communication after Complainant’s offer to pay for transfer.
Complainant has given uncontested evidence indicating that Potdar and Respondent
are either the same person or acting in concert with one another. For the
purposes of this dispute, the Panel has decided to treat both Potdar and
Respondent as the same identity.
DISCUSSION
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 the Complainant's undisputed representations
pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and may draw such
inferences as it considers appropriate pursuant to paragraph 14(b) of the
Rules.
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.
Identical to and/or Confusingly Similar
Complainant established in this
proceeding that it has rights in the COLDWELL BANKER mark through registration
on the Principal Register of the USPTO as well as by continuous and widespread
use of the mark.
The domain
name registered by Respondent, <wwwcoldwellbanker.com>, is
confusingly similar to Complainant’s COLDWELL BANKER mark. The only differences
between the disputed domain name and Complainant’s mark are removal of the
space between COLDWELL and BANKER, the addition of “.com” after the mark, and the
prefix “www”. The deletion of a space and the addition of a “.com” from a
registered mark do not prevent a domain name from being found to be confusingly
similar to a mark under the Policy. See Hannover Ruckversicherungs-AG v.
Ryu, FA 102724
(Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical
to HANNOVER RE, “as spaces are impermissible in domain names and a generic
top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); 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). Furthermore,
Respondent’s addition of “www” before Complainant’s mark is not enough of a
variation to prevent a finding of confusing similarity by the Panel. See
Bank of Am. Corp. v. InterMos, FA
95092 (Nat. Arb. Forum Aug. 1, 2000) (finding that Respondent’s domain name
<wwwbankofamerica.com> is confusingly similar to Complainant’s registered
trademark BANK OF AMERICA because it “takes advantage of a typing error
(eliminating the period between the www and the domain name) that users
commonly make when searching on the Internet”).
Accordingly, the Panel finds that the <wwwcoldwellbanker.com> domain
name is confusingly similar to Complainant’s registered COLDWELL BANKER mark
under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
It is neither a bona fide offering of
goods or services, nor an example of a legitimate noncommercial or fair use
under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name that is
confusingly similar to an established mark attempts to sell the domain name
registration to Complainant. See
Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding
Respondent’s conduct purporting to sell the domain name suggests it has no
legitimate use); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where Respondent registered
the domain name with the intention of selling it). From Respondent’s offer to
sell the disputed domain name to Complainant for $500. while declining it’s
offer to pay associated transfer fees for the domain name, the Panel infers
that Respondent is not using the domain name in connection with a bona fide
offering of goods or services or making a noncommercial or fair use of the
domain name.
Likewise, registering a confusingly
similar domain name and then linking it to the website of a competitor of the
holder of the registered mark is not a fair use under Policy ¶ 4(c)(iii). See
Vapor Blast Mfg. Co. v. R & S
Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that
Respondent’s commercial use of the domain name to confuse and divert Internet
traffic is not a legitimate use of the domain name); see also Hewlett Packard Co. v. Full Sys., FA
94637 (Nat. Arb. Forum May 22, 2000) (holding that Respondent’s failure to
offer any evidence permits the inference that the use of Complainant’s mark in
connection with Respondent’s website is misleading and Respondent is
intentionally diverting business from Complainant). Respondent’s activity
emulates the circumstances in the aforementioned citations because Respondent
registered <wwwcoldwellbanker.com> and then redirected it to
websites such as <gotoo.com> and <ownbox.com>, sites that compete
with Complainant’s real estate services.
Together, these two examples make for a
convincing showing by Complainant that Respondent has no rights or legitimate
interests in the disputed domain name. See Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000)
(finding no rights in a domain name where Respondent offered the infringing
domain name registration for sale and the evidence suggests that anyone
approaching this domain name through the world wide web would be
"misleadingly" diverted to other sites).
Respondent also is not commonly known by
the name WWWCOLDWELLBANKER or <wwwcoldwellbanker.com>.
Furthermore, Complainant has not given Respondent permission or consent to use
its COLDWELL BANKER mark, and Respondent’s registration of the disputed domain
name occurred years after Complainant initially registered its mark and began
using it in commerce. Thus, Complainant has established that Respondent has no
rights or legitimate interests in the domain name pursuant to Policy ¶¶
4(c)(i-iii). See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or
legitimate interests where (1) Respondent is not a licensee of Complainant; (2)
Complainant’s prior rights in the domain name precede Respondent’s
registration; and (3) Respondent is not commonly known by the domain name in
question).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the domain name
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Respondent registered and used the
disputed domain name in bad faith. Policy
¶ 4(b)(iv) states that in circumstances indicating that the disputed domain
name was registered to “intentionally attempt to attract, for commercial gain,
Internet users…by creating a likelihood of confusion as to the source,
sponsorship, affiliation, or endorsement of your website or location” bad faith
use and registration is evidenced. See
State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12,
2000) (finding bad faith where Respondent registered the domain name
<bigtex.net> to infringe on Complainant’s goodwill and attract Internet
users to Respondent’s website); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum
Aug. 21, 2000) (finding bad faith where Respondent directed Internet users
seeking Complainant’s site to its own website for commercial gain). Respondent
is using the disputed domain name to redirect Internet users to websites
offering services in competition with Complainant. Internet users attempting to
reach Complainant’s <coldwellbanker.com> domain name could be confused as
to the sponsorship or affiliation of Respondent’s site with Complainant’s
business.
The practice of “typosquatting” has also
been recognized as a bad faith use of a domain name under the Policy.
See e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26,
2000) (awarding <wwwalavista.com>, among other misspellings of
altavista.com, to Complainant); Dow Jones
& Co. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding
domain names <wwwdowjones.com>, <wwwwsj.com>,
<wwwbarrons.com> and <wwwbarronsmag.com> to Complainants). Respondent’s
registration of <wwwcoldwellbanker.com> is an example of this type
of activity, as Respondent simply added a “www” before Complainant’s registered
mark. This “typosquatting” is further evidence of bad faith use by Respondent.
Respondent submitted no Response to the
Complaint. The Panel concludes from the
facts presented by Complainant that Respondent registered a confusingly similar
domain name in order to gain revenue from diverting Internet users to websites
in competition with Complaint’s business. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000)
(finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true).
Accordingly, the Panel finds that
Respondent both registered and used the disputed domain name in bad faith, and
Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwcoldwellbanker.com> domain name
be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 15, 2002
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