Complainant is Realty Mark, LLC of Southampton, Pennsylvania, United States of America, represented by Caesar, Rivise, Bernstein, Cohen, & Pokotilow, Ltd., United States of America.
Respondent is Scott Rosenbaum (a/k/a “Scott Rose” and “Scott Rosen”) / RealtyM of Southampton, Pennsylvania, United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2013 in relation to and . On September 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with these initially disputed domain names. On October 1, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant for and disclosing registrant and contact information for which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 7, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 7, 2013, dropping from the Complaint.
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 October 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 30, 2013. Respondent sent email communications to the Center on October 24, October 29, and October 31, 2013 which contained substantive arguments in response to the Complaint as well as request for a four-week extension to file a Response. By email to the Center, dated October 28, 2013, Complainant objected to the grant of an extension to Respondent for filing a Response. On November 1, 2013, taking into account the stated reason by Respondent for the request and the objection of Complainant, the Center granted an extension of time until November 4, 2013. On November 1, 2013, Respondent sent another email communication to request more time to file a Response.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on November 11, 2013. 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.
By its Administrative Panel Procedural Order No.1, dated November 11, 2013, the Panel advised the parties in relevant part:
The Panel has undertaken a preliminary review of the case file in this matter, including the request by Respondent for an extension for the filing of a formal response, and the objection by counsel for Complainant to that extension.
In view of the change of counsel representing Respondent, the Panel determines that it is appropriate to grant Respondent’s request for an extension. Respondent indicated that an initial meeting with substitute counsel was scheduled for November 6, 2013. The deadline for filing a response is reset to the 20-day period ordinarily allowed for the filing of a response, commencing on November 6, 2013. Respondent has until November 26, 2013 to file a response in this matter.
By email dated November 26, 2013, Respondent filed an “informal” Response (i.e. not using the Center template format), including an attachment.
By email dated December 2, 2013, Complainant filed a motion for leave to file, and “Reply in Support of its Amended Complaint”, including attachments.
By its Administrative Panel Procedural Order No. 2 dated December 5, 2013, the Panel advised the parties in relevant part:
The Panel has received and reviewed Complainant’s motion for leave to file a reply to Respondent’s November 26, 2013 Response and the accompanying proposed supplemental submission. Complainant has suggested that it could not have reasonably anticipated the information contained in the Response. The Panel is not wholly persuaded of that, but in the interests of providing each side with a fair opportunity to present its position will accept the supplemental submission.
At the same time, and as is customary in such circumstances, the Panel accepts Respondent’s request for leave to file documents responsive to the information in the supplemental submission from Complainant. Respondent has a period of five calendar days from the date of this order to file a supplemental submission.
By email dated December 10, 2013, Respondent filed an informal supplemental submission, including attachments.
The parties were notified by the Center on December 11, 2013, that the due date for the Panel’s decision was extended to December 17, 2013. 4. Factual Background
Complainant is the owner of registration of the word service mark REALTY MARK on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4331199, registration dated May 7, 2013, application filing date August 13, 2012, in international class (IC) 36, covering “real estate brokerage”, asserting a date of first use and first use in commerce of November 30, 2010. Such service mark ownership was received by way of assignment from World’s Realty LLC, a Pennsylvania LLC, by instrument dated September 9, 2013, executed by Ramon Gaber, Member, World’s Realty LLC.1
Complainant is also the owner of registration of the design and word service mark REALTY MARK on the Principal Register of the USPTO, registration number 4331197, registration dated May 7, 2013 in IC 36, covering “real estate brokerage”, application filing date August 13, 2012, asserting a date of first use and first use in commerce of November 30, 2010.2 Such service mark ownership was likewise received by way of assignment from World’s Realty LLC, a Pennsylvania LLC, by instrument dated September 9, 2013, executed by Ramon Gaber, Member.3
Complainant asserts that it has used the service mark REALTY MARK in commerce since November 2010 in connection with real estate brokerage services and in the advertising, marketing and sale of the same. Complainant’s supporting evidence of such use is in the form of an Affidavit of Ramon Gaber dated September 27, 2013, sworn before a notary public, as Chief Executive Officer and Managing Member of Realty Mark, LLC, Complainant. Certain documents representing the organizational structure of Realty Mark, LLC are appended to the Complaint, but these do not show actual use of the mark in commerce. In its Complaint, Complainant refers to the resignation of Respondent and another member, Michael Chester, from Realty Mark, LLC on October 24, 2010, though this date is likely an inadvertent error.4 Complainant’s supporting documents (Exhibit D to Gaber Affidavit) show a date of October 24, 2011 on which the transfer was recorded at the relevant Pennsylvania state office, and Respondent has submitted documents dated September 19, 2011, establishing the contractual undertaking to transfer. These organizational documents further indicate that Respondent and Michael Chester would continue to hold minority ownership in Realty Mark, LLC.
Respondent has submitted documentation from the United States Bankruptcy Court for the Eastern District of Pennsylvania, In re Ramon S. Gaber, Case No. 11-10727, Chapter 7, including the official schedules of assets and liabilities of Ramon Gaber declared under penalty of perjury on February 1, 2011, and entered in the court files on that date. Such schedules do not include reference to Complainant as an asset or liability, nor do they make reference to the disputed domain name as an asset of Complainant or Ramon Gaber.
According to the Registrar’s verification, Respondent is registrant of the disputed domain name. The disputed domain name was registered by Respondent under the name “Scott Rose” on or about October 22, 2010, as confirmed by WhoIs records furnished by Complainant. The parties differ as to whether Respondent registered the disputed domain name for himself or on behalf of Realty Mark, LLC. The name of registrant was subsequently modified to appear as “Scott Rosenbaum”, and the named registration organization as “REALTYMARK.COM”. The parties are in disagreement as to how the name of the registrant organization came to appear on the record of registration as of May 31, 2012. Respondent asserts that this was as a consequence of unauthorized access by Complainant to his account with the Registrar. Complainant denies this activity. However, there is no business entity “REALTYMARK.COM” involved in this proceeding, and Respondent Scott Rosenbaum remains the named registrant of the disputed domain name.
Complainant through the affidavit of Donna Kelly has submitted a statement of expenses dated November 4, 2010 showing on a listing of bills. Among other expenses, there is an entry relating to “realtym” in the amount of USD 300 that should be equally divided between “Ray”, “Michael” and “Scott. There is a separate listing for “realtymark domains” in the amount of USD 36, with that amount also shown to be equally divided among the same three individuals. These amounts were apparently reimbursed in a USD 3,191 check paid to Scott Rosenbaum, dated November 4, 2010, from the checking account of Ilene R. Gaber.
An affidavit of Michael Chester submitted by Respondent states, in part:
The domain RealtyMark belongs to Scott Rosenbaum. Nowhere in our operating agreement or contract that Ramon Gaber signed does it state that Ramon Gaber would receive the domain RealtyMark. Scott Rosenbaum paid and continued to pay for the domain RealtyMark as it was agreed upon by Ramon Gaber, Scott Rosenbaum and myself and this was part of Scott Rosenbaum’s insurance so that he would be protected as an owner and shareholder of RealtyMark which was also stated by Ramon Gaber on numerous occasions.
Complainant makes a number of assertions regarding improper conduct by Respondent in respect to use of the disputed domain name. However, for purposes of rendering a decision the Panel does not consider it necessary to recount these assertions. 5. Parties’ Contentions A. Complainant
Complainant alleges that it owns rights in the service mark REALTY MARK, as evidenced by registration at the USPTO, and that Complainant’s use of the service mark commenced from November 2010.
Complainant contends that the disputed domain name is identical to its service mark.
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name because: (1) while not initially named as a member of Realty Mark, LLC, when it was formed in October 2010, Ramon Gaber was considered part of the business as agreed from June 2010 because of his expertise; (2) Respondent engages in bulk registration and selling of domain names in bad faith, and was primarily responsible for maintaining Complainant’s websites; (3) Respondent obtained registration of the disputed domain name on or about October 21, 2010 on behalf of and for Complainant, which is later listed as the owner and registrant; (4) “[a]pproximately a year after forming Complainant”, Michael Chester and Respondent resigned as members of Complainant, and assigned all of their rights, title and interest in and to Complainant to Ramon Gaber; (5) by maintaining control over the account in which the disputed domain name is held, Respondent has acted to subvert the business interests of Complainant for his own benefit; (6) Respondent has misappropriated other domain names of Complainant; (7) as of August 20, 2012, Respondent redirected the disputed domain name to pay per click parking pages; (8) Respondent is not and has never been known by the name “Realty Mark”; (9) Respondent has not engaged in any bona fide offering of goods or services under the disputed domain name; and (10) Respondent is tortuously interfering with Complainant’s business.
Complainant alleges that Respondent registered and is using the disputed domain name in bad faith because: (1) even though Respondent may not have “registered” the disputed domain name in bad faith, “registration and use in bad faith” should be understood as a unitary concept, and Respondent’s conduct after its interest in Complainant ceased in October 2011 should be sufficient to establish bad faith; (2) assuming that the Panel does not accept the unitary concept argument, at the time Respondent renewed the disputed domain name in October 2012, such renewal should be considered a “new registration”, and Respondent’s registration and use from that time evidences bad faith as, at that time, Respondent’s conduct amounted to “prototypical cybersquatting”.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant. B. Respondent
Respondent contends that he purchased the disputed domain name on October 22, 2010. He alleges that it was understood between him, Michael Chester and Ramon Gaber that he would own and control the disputed domain name as a means of protecting his interest in their business.
Respondent alleges that when the partnership arrangement deteriorated, he directed the disputed domain name to default parking pages, and that any advertisements or offers for sale are a consequence of default activity by the Registrar.
Respondent contends that he has registered, bought and sold generic domain names as a business, and that he has never been subject to any action under the UDRP.
Respondent states that he and Michael Chester entered into a contractual arrangement dated September 19, 2011 with Ramon Gaber pursuant to which they retain minority interests (Scott Rosenbaum 17%, Michael Chester 12%) in Complainant, and that the agreement further provides that Respondent and Michael Chester will share in the income of the business. Respondent further states that nothing in any of the agreements between him and Ramon Gaber or Complainant refers to the disputed domain name or any obligation to assign that to Complainant or Ramon Gaber.
Respondent contends that, if Ramon Gaber had an interest in Complainant and/or the disputed domain name as of the date of filing for bankruptcy, such interest should have been disclosed to the bankruptcy court, but was not.
Respondent states that the business relationship between him, Michael Chester and Ramon Gaber are the subject of an ongoing lawsuit, and he has submitted an affidavit of Michael Chester in support of this contention. Respondent contends that the appropriate ownership of the disputed domain name is a matter that should be decided in a United States court.
Respondent requests the Panel to reject the Complaint. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
The Center formally notified the Complaint to Respondent, and Respondent filed a Response. The Panel is satisfied that Respondent was afforded a reasonable opportunity to respond to the Complaint in this proceeding.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief.
These elements are that:
(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.
Each of the aforesaid three elements must be proved by a complainant to warrant relief. A. Identical or Confusingly Similar
Complainant is the owner of registration of the word service mark REALTY MARK on the Principal Register of the USPTO.5 Pursuant to the U.S. Lanham Act, ownership of registration establishes a presumption of rights in the service mark.
Respondent has not specifically challenged Complainant’s current ownership of rights in the REALTY MARK service mark. The Panel determines that Complainant has rights in the REALTY MARK service mark in the United States.
For purposes of the Policy, the disputed domain name is identical to Complainant’s service mark.
Accordingly, the Panel determines that Complainant owns rights in the REALTY MARK service mark, and that the disputed domain name is identical to that service mark. B. Rights or Legitimate Interests
The Panel bases its determination in this proceeding on Complainant’s failure to prove that Respondent registered and is using the disputed domain name in bad faith. The Panel as a matter of administrative efficiency does not address the issue of rights or legitimate interests, without prejudice to the position of either party. C. Registered and Used in Bad Faith
In order to be found to have engaged in abusive domain name registration and use, Respondent must have registered and use the disputed domain name to take unfair advantage of Complainant’s rights in its service mark. Respondent’s bad faith intention could be evidenced in a number of ways as illustrated in paragraph 4(b) of the Policy, which provides a non-exhaustive list for evidence of bad faith conduct.6
A finding that Respondent registered and uses the disputed domain name in bad faith generally presupposes that Complainant had service mark rights that could be unfairly exploited at the time of the domain name registration. See, e.g., Mariposa Ltd. v. Stonecutter, Don Sawtelle, WIPO Case No. D2010-0200; Super-Krete International, Inc. v. Concrete Solutions, Inc.,WIPO Case No. D2008-1333; Foundation Source Philanthropic Services, Inc. v. Arlene B Gibson/Foundations That Make a Difference/Domain Discreet,WIPO Case No. D2007-0875; Symbility Solutions, Inc. v. Darren Ritchie / Symbility,WIPO Case No. D2007-0471; John Ode d/ba ODE and ODE - Optimum Digital Enterprises v. Intership Limited,WIPO Case No. D2001-0074,7 and paragraph 3.1, Consensus view, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). The Panel rejects the view, referred to by Complainant, of a small number of panelists that consider that bad faith use may suffice absent bad faith registration. The Panel considers that this view inappropriately disregards the significance of the conjunctive text of paragraphs 4(a)(iii) and 4(b) of the Policy (i.e. registered and used in bad faith).
As Complainant acknowledges, Respondent registered the disputed domain name on or about October 22, 2010. The evidence presented by Complainant does not support that it owned rights in the REALTY MARK service mark as of that date. Complainant’s own legal arguments attempt to take account of that fact. That is, Complainant argues that Respondent need not have registered the disputed domain name in bad faith if he thereafter used the disputed domain name in bad faith.
Complainant also argues that Respondent did not undertake the initial registration on October 22, 2010 on behalf of himself, but rather on behalf of Complainant as it existed at that time. There is material disagreement between Complainant, on one side, and Scott Rosenbaum (Respondent) and Michael Chester (partner and/or former partner), on the other, regarding the circumstances under which the disputed domain name was registered, and the understanding regarding ownership of registration of the disputed domain name. There is circumstantial evidence in the form of a list of expenses and a reimbursement check to suggest that Scott Rosenbaum was reimbursed for the registration of the disputed domain name, though there is not a direct evidentiary link between the disputed domain name and the reimbursement. But, even if the panel were to assume that Scott Rosenbaum was reimbursed for the registration by a check from the account of Ilene Gaber, this does not establish what understanding there was, if any, among the business associates regarding ownership and control of the registration. This is disputed. At the relevant time, October 22, 2010 Ramon Gaber was not a member of Realty Mark, LLC. He became a member one year later, in October 2011. From a legal standpoint, it is not clear why Ilene Gaber reimbursed Scott Rosenbaum as neither she nor Ramon Gaber were members of Realty Mark, LLC, nor does the reimbursement establish how this might have resulted in ownership by the LLC of the disputed domain name.
To the extent that Complainant is arguing that Respondent acted to register the disputed domain name in bad faith because he was obligated to do so on behalf of Realty Mark, LLC, and instead he appropriated it to himself, the evidence is not sufficient to establish that.
Complainant further asserts that when Ramon Gaber acquired full ownership of REALTY MARK, LLC on October 24, 2011, Respondent agreed to assign any interest of the disputed domain name to Complainant. But, the documents dated September 19, 2011 regarding the conditions of the transfer do not make any specific reference to the disputed domain name or other intellectual property.
Complainant has not established facts sufficient to persuade the Panel that Complainant owned registration of the disputed domain name as of October 22, 2010, or that Respondent transferred the disputed domain name to Complainant thereafter.
As noted in WIPO Overview 2.0, paragraph 3.1, there are a limited number of circumstances in which UDRP panels have determined that registration in bad faith may be found prior to the establishment of rights in a trademark, such as shortly before or after a publicized merger and the arising of trademark rights in a newly combined entity, or when a former employee or business partner seeks to take advantage of rights that may arise from the complainant’s enterprises. The sequence of events as described above in this proceeding do not establish for the Panel that Respondent registered the disputed domain name to intentionally take advantage of prospective service mark rights of Complainant. The business understanding pursuant to which Respondent registered the disputed domain name is the subject of dispute among Respondent, Michael Chester, Ramon Gaber and Complainant. It appears that only one year following registration of the disputed domain name did ownership of Complainant come to include Ramon Gaber. It appears that up to that point ownership of Complainant was in the hands of two parties (Respondent and Michael Chester) who assert an understanding that Respondent would be the owner of the disputed domain name. There remains dispute among the parties as to the allocation of interests in the reorganized Complainant entity. Moreover, as discussed below, there is a complicating factor in that World’s Realty LLC, with application signed by Ramon Gaber, applied for registration of the REALTY MARK service mark on August 13, 2012. Even at that late date, there seemed to be some confusion among the parties involved in this dispute regarding what entity or person, if any, owned or would come to own a REALTY MARK service mark. The factual hurdles are too great for the Panel to reach a conclusion that Respondent somehow acted in October 2010 with intention to take unfair advantage of Complainant’s future trademark rights.
Complainant further argues that renewal of registration by Respondent of the disputed domain name in October 2012 should constitute a “new registration”. Complainant argues that in October 2012 it had established rights in the REALTY MARK service mark, and that renewal at that time by Respondent constituted registration in bad faith.
The Panel rejects Complainant’s argument that renewal of domain name registration by the same person constitutes a “new registration” for purposes of assessing registration in bad faith in these circumstances (see paragraph 3.7, WIPO Overview 2.0). This alone is sufficient basis for the Panel to conclude that renewal of registration of the disputed domain name by Respondent did not constitute bad faith registration.
Nonetheless, it is worth noting that on August 13, 2012, World’s Realty LLC applied for registration of the service mark REALTY MARK at the USPTO. Ramon Gaber signed the application on behalf of World’s Realty LLC. It is not clear why World’s Realty LLC applied for this service mark registration. Complainant Realty Mark, LLC has alleged that service mark rights in REALTY MARK were owned by it at that time. World’s Realty LLC was successful in securing service mark registration for REALTY MARK. That service mark registration was not assigned from World’s Realty LLC to Realty Mark, LLC until September 9, 2013. If another legal entity owned the REALTY MARK service mark through late 2013, the Panel does not understand how Respondent could have acted in bad faith in relation to Complainant, i.e. Realty Mark, LLC, in October 2010 or in October 2012.
This Administrative Panel proceeding involves a significant number of disputed facts. Much of the evidence that has been presented to the Panel is in the form of affidavits or statements from parties with a financial interest in the outcome. The Panel is not in a position to make a complete factual assessment of the legal relationship between the parties, nor of how and why each of the steps in their relationship unfolded. Nonetheless, the basic facts needed to render a decision are sufficiently clear. Complainant bears the burden of proving that Respondent registered and is using the disputed domain in bad faith. It has not carried that burden.
The Panel concludes that Complainant has failed to establish that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Frederick M. Abbott
Sole Panelist
Date: December 11, 2013
1 The certificates of registration at the USPTO provided by Complainant show the assignment. The Panel confirmed this, and the relevant dates, by visit to the USPTO Trademark Status and Document Retrieval (TSDR) online database on December 11, 2013. (For the Panel’s power to conduct such research, see paragraph 4.5 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”)).
2 The aforesaid USPTO registration describes the service mark as follows:
The mark consists of the design of a globe with stylized continents and meridians and parallels appearing thereon. Superimposed over the globe are the words "REALTY MARK" with a compass design inside the letter "A" of the word "REALTY" and an orbital ring separating the two words.
3 See note 1, supra.
4 Complainant also refers to the transfer occurring one year after registration of the disputed domain name by Respondent, confirming that the date of October 24, 2011 is intended.
5 It is not necessary for the Panel to address the legal significance of the word and design service mark in relation to these proceedings.
6 Paragraph 4(b) of the Policy establishes the required demonstration of bad faith, providing:
“b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
7 There are certain limited situations in which an exception to this general principle may be found, see, e.g. Intelligen LLC v. Converg Media LLC,WIPO Case No. D2010-0246, but those are not in evidence here.
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