Complainant is Northwest Multiple Listing Service of Kirkland, Washington, United States of America, represented by Foster Pepper LLP.
Respondent is Jansma Design, LLC of Bellingham, Washington, United States of America. 2. The Domain Names and Registrar
The disputed domain names and
(the “Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 7, 2012. On February 7, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name . On February 8, 2012, the Registrar 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 . In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amendment to the Complaint on February 10, 2012, adding the domain name
. On February 17, 2012, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the disputed domain name
. On February 18, 2012, the Registrar transmitted by email 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 the Complaint together with the amended 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 February 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was March 11, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 12, 2012.
The Center appointed Robert A. Badgley as the sole panelist in this matter on March 21, 2012. 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 alleged by Complainant, and is in most instances supported by evidence annexed to the Complaint. None of the allegations set forth in this section has been rebutted by Respondent, and the Panel finds the allegations set forth herein as plausible.
Complainant is a not-for-profit corporation in the State of Washington which provides a listing service and database for use by real estate professionals. Complainant’s service provides information about properties, real estate taxes, and other related information. Since 1996, Complainant has used NORTHWEST MLS and NWMLS as service marks. These marks have been registered on the Principal Register of the United States Patent & Trademark Office since July 20, 2004. Complainant has also owned and used the domain name since 1996.
Respondent, which was incorporated in 2007 in the State of Washington, is a firm specializing in real estate photography. Respondent provides marketable photos of homes that are listed for sale on Complainant’s NWMLS database.
Respondent registered the Domain Name on April 28, 2011, and the Domain Name
on January 4, 2012. The Domain Names resolve to a website offering Respondent’s photography services. Specifically, the website advertises “Northwest MLS Photos by Jansma Design.”
Complainant repeatedly asked Respondent to cease and desist from using Complainant’s marks, but these demands were not answered. 5. Parties’ Contentions A. Complainant
The salient factual contentions are set forth above. Complainant asserts that it has fulfilled the three elements required for a transfer of the Domain Names under the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Names:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
Complainant has rights in the mark NWMLS through registration and use. The Domain Name incorporates Complainant’s mark in its entirety and adds the generic word “photos.” The Panel finds that the addition of the word “photos” to the mark NWMLS does not sufficiently reduce the confusing similarity between the mark and this Domain Name. The word “photos” merely suggests to the Internet user that photos associated with the services offered under the NWMLS mark may be offered at the corresponding website.
With respect to the second Domain Name,
, it is a closer call. The additional letter “p” at the front of the Domain Name may have the effect of reducing the confusing similarity between the mark and the Domain Name, but the Panel concludes that the effect is slight. This is due in part to the fact that “pnw” is sometimes used to refer to the Pacific Northwest, and the State of Washington is probably the quintessential state in the Pacific Northwest. The Panel finds that there is, in any event, confusing similarity between Complainant’s mark and the Domain Name.
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 each 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions. Nor did Respondent reply to Complainant’s cease-and-desist communications, which suggests that Respondent had no legitimate response to offer.
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 Names, or has made substantial preparations to use the Domain Names in connection with a bona fide offering of goods or services. Rather, Respondent’s website advertises “Northwest MLS Photos by Jansma Design.” This clearly appears to be an illegitimate attempt to trade on the renown of Complainant’s mark for commercial gain.
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 of each 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 is in “bad faith” under paragraph 4(b)(iv) of the Policy. As noted above, Respondent is offering, for commercial gain, photos of homes listed through Complainant’s database and under Complainant’s mark. The Panel finds that Respondent is therefore piggybacking on Complainant’s mark to attract Internet customers. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Domain Names.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names and
be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Dated: March 29, 2012
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