Complainant is Intero Franchise Services, Inc. of Cupertino, California, the United States of America, represented internally.
Respondent is Dharminder Dewan of Fremont, California, the United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 22, 2011. On June 23, 2011, the Center transmitted by e-mail to GoD, Inc. a request for registrar verification in connection with the Domain Name. On June 24, 2011, GoD, Inc. transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name. The Center verified that Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2011. The Response was filed with the Center on July 26, 2011.
The Center appointed Robert A. Badgley as the sole panelist in this matter on August 2, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The following information is taken from the Complaint, and is supported by evidence of record and is otherwise found to be plausible. Complainant holds registered trademark INTERO REAL ESTATE SERVICES and similar marks. The term “Real Estate Services” is disclaimed within Complainant’s various marks because “Real Estate Services” is non-essential and is not independently protectable. Complainant is in the business of licensing the right to use the marks INTERO and INTERO REAL ESTATE SERVICES as well as all other systems and trademarks associated with Intero Real Estate Services, Inc. to duly licensed franchisees.
Intero Real Estate Services, Inc., an affiliate of Complainant, is a residential real estate brokerage headquartered in northern California. Complainant presently has more than 50 duly licensed franchisees using this name throughout the United States of America and in select parts of Asia and Europe.
The mark INTERO was first used in commerce by Complainant and its affiliates on September 1, 2002. Complainant’s marks were registered by the United States Patent and Trademark Office (“USPTO”) on May 30, 2006.
Complainant alleges that its INTERO-formative marks are famous, however there is no evidence in the record of such fame.
Complainant alleges that Respondent is a legal relation to Mr. Hitender D. (herein “Hitender”). Complainant states its belief that the two are either brothers or first cousins. Hitender first contacted Complainant around March 2008 and shared an interest in purchasing the right to establish an Intero Real Estate Services franchise in or around Mumbai, India.
Complainant asserts that, unless it gives its prior consent in writing, no franchisee of Complainant is ever authorized to hold any domain name that makes use of the INTERO trademark. According to Complainant, this restriction is stated in each of its franchise agreements with franchisees and this restriction is introduced to every potential franchisee upon introduction. If a franchisee shows an interest in a certain domain name that makes use of the INTERO trademark, Complainant registers the domain name and then will normally grant the franchisee a license to use the domain name as part of the franchisee’s license to maintain a franchise. Complainant alleges that this standard practice was explained to Hitender upon first introduction in 2008.
According to the Complaint, Respondent, after learning of Hitender’s interest in expanding Intero Real Estate Services to the Republic of India, registered the Domain Name on April 1, 2008. Complainant alleges that Respondent did this because he anticipated that the Domain Name might become more valuable to Complainant in the event that Complainant struck a franchise deal with Hitender. It is undisputed that Respondent never sought the consent of Complainant before registering the Domain Name and Respondent did not inform Complainant of his intention to register the Domain Name.
Complainant and Hitender engaged in numerous discussions through 2008 and 2009 regarding a possible franchisor-franchisee relationship. In or around July 2009, these discussions materialized into a business plan and a serious proposal by Hitender to purchase a franchise in Mumbai, India. At this time, Complainant’s officers arranged for face-to-face negotiations and presentations in the normal course of business. Around this time, Complainant first learned that Respondent had registered the Domain Name.
Complainant first contacted Respondent about the Domain Name on July 22, 2009, and requested that Respondent return the Domain Name. Complainant also inquired as to whether Respondent had any legitimate use for the Domain Name. Respondent replied via e-mail on July 22, 2009, stating: “Are you trying to purchase these domains from me...i am not [decided] what i intent [sic] to do with these domains so am not keen on transferring these domains to anyone...”
Negotiations with Hitender continued until around June 20, 2010. Throughout the negotiations, Complainant repeatedly asked Respondent to transfer to Complainant the Domain Name for out-of-pocket costs.
On February 2, 2010, an employee of Complainant stated that Respondent must deliver back the Domain Name because it infringed on Complainant’s mark. Respondent replied: “i do not understand why you say ‘back’ since this was not given to me by your company or anyone associated with your company. I had reserved it myself. I guess you meant ‘buy’ or something like that.”
Negotiations about the prospective franchise relationship with Hitender broke down on or around June 20, 2010. Complainant has continuously requested that the Respondent deliver the Complainant the Domain Name. On June 6, 2011, Complainant contacted Respondent one final time and stated, “your refusal to transfer the domain is slowing our expansion in India. As noted previously, your ownership of this domain name is confusingly similar to the preexisting Intero trademark and you have not indicated any legitimate interest in the domain name. Additionally, you have no corresponding trademark. It is our belief given your current or prior relationship with the Intero® franchisee in Fremont that your only reason for obtaining this domain name was to trade on the Intern real estate goodwill.” Respondent did not respond to this statement.
In his Response, Respondent does not deny that he and Hitender are related. (Indeed, there is in the record one e-mail from Respondent in which Respondent cc’d Hitender.) Nor does Respondent deny that Complainant explained to Hitender in 2008 that no prospective franchisee was entitled to register an INTERO-formative domain name without Complainant’s prior written consent.
Respondent denies having registered the Domain Name in connection with “any business related to [Complainant].” Rather, Respondent asserts that he intended to use the Domain Name in connection with “opening a non-profit in India.” He also asserts that he chose the Domain Name because he wanted to convey the meaning “entire India.” The word “Intero” is Italian for “entire.” Nowhere in the record is there any explanation of why Respondent would choose an Italian word to depict the concept of “entire” in an Indian-specific website.
The record contains no evidence of any preparations by Respondent to pursue the alleged “non-profit” undertaking or to establish a website connected with the alleged undertaking. The Domain Name resolves to a parking page maintained by the registrar. 5. Parties’ Contentions A. Complainant
The salient contentions of Complainant are reflected in the Factual Background section above, or will be raised below in the specific context of one of the three elements under the Policy. B. Respondent
The salient contentions of Respondent are reflected in the Factual Background section above, or will be raised below in the specific context of one of the three elements under the Policy. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the mark INTERO, which is the dominant word in several of Complainant’s marks, with the other words being disclaimed. The Domain Name contains the word INTERO and adds the geographical indicator “India.” In the Panel’s view, on the record in this case, the addition of that geographic indicator to the dominant word of Complainant’s mark renders the Domain Name confusingly similar to a trademark in which Complainant has rights.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Given the considerable exchange of correspondence between Complainant and Respondent concerning the Domain Name, it should have been easy for Respondent to explain to Complainant that he intended to use the Domain Name in conjunction with a “non-profit” undertaking. Respondent did not offer this explanation until filing his Response in this proceeding. This period of silence undermines Respondent’s credibility. Further, Respondent does not explain why he chose an Italian word to convey the concept of “entire” on a website presumably to be devoted to an Indian audience.
In this record, there is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith” :
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel finds that Respondent has registered and used the Domain Name in bad faith under paragraph 4(b)(i) of the Policy. It should first be reiterated that Respondent never came forward with an explanation of his reasons for registering the Domain Name. It should also be noted that, in the Panel’s view, Respondent had Complainant’s mark in mind when registering the Domain Name. The timing of the initial communications between Hitender and Complainant (March 2008) and the registration of the Domain Name (April 1, 2008) cannot reasonably be dismissed as a coincidence.
The record does not contain clear evidence of a blatant, undeniable attempt by Respondent to sell the Domain Name for valuable consideration in excess of his out-of-pocket costs. Nonetheless, the Panel finds that the record contains just enough evidence of such an attempt to draw the inference that this was Respondent’s motivation. Respondent and Hitender are somehow related – it was alleged and not denied by Respondent. Holding the Domain Name would be of obvious value to Respondent and/or Hitender in connection with the latter’s franchise negotiations. Further, Respondent made at least one suggestion that Complainant might be seeking to “buy” the Domain Name. In view of Complainant’s prior offer to reimburse Respondent’s out-of-pocket costs, the “buy” suggestion can be reasonably understood to mean that Respondent sought consideration greater than his out-of-pocket costs.
This is a close call under the circumstances, but the Panel concludes on a balance of probabilities that Respondent, who demonstrated no legitimate interest in the Domain Name, was seeking improperly to profit from it within the meaning of paragraph 4(b)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: August 12, 2011
Full & Egal Universal Law Academy