Complainant is National Association of REALTORS® of Chicago, Illinois, United States of America (“US”), represented internally.
Respondent is Domain Privacy Service FBO Registrant of Provo, Utah, US / thomas charles, NAAS-USA of Minden, Nevada, US. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 22, 2014. On August 25, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 26, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 3, 2014, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on September 4, 2014.
The Center verified that the Complaint together with the amendment to the 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”).
The Center received an informal email communication from Respondent on September 4, 2014. The Center acknowledged its receipt on September 5, 2014.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on September 8, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 28, 2014. On September 8, 2014, the Center received another informal email communication from Respondent. Respondent did not however submit any formal response. Accordingly, the Center notified the parties about the commencement of panel appointment process on September 29, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 14, 2014. 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
Complainant owns a number of trademark registrations and applications for the service marks REALTOR and REALTORS, both in the US and abroad, including but not limited to:
REALTORS, US trademark number 0515200, registered on September 13, 1949
REALTOR, US trademark number 0519789, registered on January 10, 1950
In addition, Complainant has registered the following domain names:
registered on March 16, 1996
registered on August 3, 1995
Respondent registered the disputed domain name on May 22, 2013. 5. Parties’ Contentions A. Complainant
Complainant is the United States’ largest trade association, representing over one million real estate professional, 54 territorial associations, and more than 1,400 local associations. Complainant coined the terms “realtor” and “realtors” in 1916 to identify real estate professionals who are members of Complainant. Complainant has several registered trademarks for REALTOR and REALTORS (“Complainant’s Marks”) and has used such marks in connection with membership and other products and services. Complainant licenses its Marks for its members each of who agree to abide by the rules governing the use of Complainant’s Marks. In addition, Complainant has vigorously defended the use of its Marks in prior UDRP actions. See National Association of Realtors v. Simo Elbaz, WIPO Case D2005-1019; National Association of Realtors v. John Fothergill, WIPO Case D2010-1284; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case D2012-0075.
Complainant states that it has contacted Respondent on several occasions requesting that Respondent cease use of the disputed domain name and Respondent has failed to cooperate. B. Respondent
Respondent did not formally reply to Complainant’s contentions.
By email communication dated September 4, 2014, Respondent indicated that he had not received the Complaint. By email communication dated September 8, 2014, Respondent indicated that he had received the “mail” from the Center and stated that it would “be processed shortly.” Nevertheless, no Response was filed by Respondent by the due date 20 days later. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s Marks for REALTOR and REALTORS. The disputed domain name uses Complainant’s well-known trademark in its entirety and in combination with the geographical term “Nevada” and is therefore likely to cause customer confusion with Complainant’s trademark. B. Rights or Legitimate Interests
Complainant has presented evidence of its rights in the trademarks REALTOR and REALTORS, referencing both formal registration in the United States as well as pre-existing usage sufficient to warrant common law trademark protection.
Complainant alleges, and Respondent has not disputed, that Respondent is not and has never been a member of Complainant and therefore is not and has never been licensed to use Complaint’s Marks.
Complainant alleges, and Respondent has not disputed, that Respondent is not commonly known by the disputed domain name or made use of it either as connected with a bona fide offer for services or goods or as a legitimate noncommercial or fair use site. Rather, Respondent has used the disputed domain name for links to third-party websites related to the real estate industry which does not therefore qualify as a bona fide offering of goods or services. See Paris Hilton v. Deepak Kumar, WIPO Case D2010-1364. The Panel notes that the website at the disputed domain name claims to be free speech but the Panel finds this to be a pretext given the use of the site to provide links to a range of competitors of Complainant.
The Panel finds that Respondent does not have a right to use of Complainant’s trademark either as fair use or otherwise. Respondent has never been authorized or licensed to use Complainant’s trademark, has not used the website in connection with a bona fide offer for services or goods, and has not used the website for any legitimate noncommercial use.
Therefore, the Panel finds that Respondent has no right or legitimate interest in the use of Complainant’s Marks. C. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain name to attract commercial gain from Internet customers and intentionally gain from the confusion with Complainant’s Marks. The use of Complainant’s Mark in its entirety intentionally misleads customers regarding the affiliation or association of Complainant with the disputed domain name. In addition, Complainant presents evidence that it contacted Respondent prior to the commencement of this action to request that Respondent cease use of the disputed domain name. The Panel finds that Respondent cannot have been unaware of Complainant’s Marks and registered the disputed domain name with the intention to capitalize on the good will generated by Complainant. Complainant rightly points out that such conduct constitutes bad faith. Volvo Trademark Holding AB v. Unasi, Inc.,WIPO Case No. D2005-0556.
Pursuant to paragraph 4(c)(iv) of the Policy bad faith may be found if:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 website or location or of a product on your website or location.”
Respondent’s use of the disputed domain name to post links to third-party websites related to the real estate industry indicates that Respondent’s conduct was knowingly in bad faith. Respondent intentionally capitalized on the goodwill associated with Complainant’s Marks to attract Internet users to the disputed domain name for Respondent’s commercial gain.
Therefore, the Panel finds that Respondent has registered and used the disputed domain name in bad faith. 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 disputed domain name be transferred to Complainant.
Maxim H. Waldbaum
Sole Panelist
Date: October 23, 2014
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