Complainant is National Association of Realtors of Chicago, Illinois, United States of America, represented internally.
Respondent is Philip B. Peacock / Peacock Technologies, Inc. of San Antonio, Texas, United States of America. 2. The Domain Name and Registrar
The disputed domain name (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 February 4, 2015. On February 4, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 5, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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").
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 11, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 3, 2015. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on March 4, 2015.
The Center appointed Douglas M. Isenberg as the sole panelist in this matter on March 12, 2015. 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.
The Center received an email communication from Respondent on March 25, 2015 stating that he would be "responding sometime tomorrow", but nothing further was heard from Respondent by the date of decision. 4. Factual Background
Complainant states that it was established as the National Association of Real Estate Exchanges in 1908 and that it is the largest trade association in the United States, "representing one million real estate professionals, 54 territorial associations, and more than 1,400 local associations."
Complainant further states, and provides evidence to support, that it began using the mark REALTORS (the REALTORS Trademark) in 1916 and that it has obtained "numerous" registrations worldwide for this mark, including U.S. Reg. Nos. 515,200 (registered September 13, 1949) and 519,789 (registered January 10, 1950).
Complainant further states that it "grants its members a limited license to use the REALTOR® Marks only in connection with their name or the legal name of their real estate firm for the limited purpose of identifying themselves as members"; that "[t]his limited license (embodied in [Complainant's] Constitution and Bylaws) is subject to the members' compliance with NAR's rules governing proper use of the REALTOR® Marks"; that "[m]embers are made aware of this obligation upon obtaining membership in the organization"; and that Complainant "expressly prohibits the use of descriptive words or phrases, including geographic locations, with the REALTOR® Marks."
The Registrar states that the Disputed Domain Name was created on September 13, 1997.
According to Complainant, Respondent has been a member of Complainant since 1980. As further stated by Complainant, and as supported by relevant evidence, Respondent is using the Disputed Domain Name in connection with a monetized parking page that contains links to "third-party websites also related to the real estate industry." 5. Parties' Contentions A. Complainant
Complainant contends, in relevant part, as follows:
- The Disputed Domain Name is confusingly similar to the REALTORS Mark because it "incorporates [the] trademark in its entirety and merely appends descriptive wording thereto."
- Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent's registration and use of the domain name violates the scope of his limited license, which permits him to use the REALTOR® Marks in connection with his name or firm name for the limited purpose of identifying himself as a member of [Complainant]"; Respondent does not qualify as a seller of services under the test set forth in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903, because (1) Respondent does not use the Disputed Domain Name in connection with his real estate business, (2) Respondent uses the Disputed Domain Name to redirect users to websites advertising non-member real estate agents, and (3) the website using the Disputed Domain Name does not disclose the relationship between Respondent and Complainant; the WhoIs record does not indicate that Respondent is commonly known by the Disputed Domain Name and, in any event, Respondent's use of the Disputed Domain Name violates the terms of his license with Complainant; and Respondent is using the Disputed Domain Name in connection with a monetized parking page that contains links for services that compete with Complainant.
- The Disputed Domain Name has been registered and is being used in bad faith because, inter alia, "Respondent registered and is using the [Disputed] Domain [Name] to attract for commercial gain Internet users by creating a likelihood of confusion with [the REALTORS Trademark] as to the source, sponsorship, affiliation or endorsement of the accessible website"; Respondent is using the Disputed Domain Name in connection with a monetized parking page that contains links for services that compete with Complainant; Respondent was "clearly aware" of Complainant's rights in the REALTORS Trademark when he registered the Disputed Domain Name; and Respondent's registration and use of the Disputed Domain Name "stands in contravention to a written agreement between the parties."
Finally, Complainant contends that, despite the long passage of time between the date on which the Disputed Domain Name was created and the date on which the Complaint was filed, "the Policy does not provide for a laches defense" because "[t]he remedies available under the Policy are injunctive rather than compensatory in nature, and the concern is to avoid ongoing or future confusion as to the source of communications, goods, or services." B. Respondent
Respondent did not reply to the Complainant's contentions. However, on March 25, 2015 – 22 days after the date on which the Response was due and one day before the projected due date for this decision – Respondent sent an email to the Center stating, in full, "I'm trying to respond to the Case as noted above but am having trouble attaching my documents. Therefore, I will be responding sometime tomorrow after getting these problems resolved." As of the following date, that is, March 26, 2015, this Panel had not received or been informed of a response. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith. Policy, paragraph 4(a). A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, it is apparent that Complainant has rights in and to the REALTORS Trademark.
As to whether the Disputed Domain Name is identical or confusingly similar to the REALTORS Trademark, the relevant comparison to be made is with the second-level portion of the domain name only (i.e., "austinrealtors"), as it is well-established that the Top-Level Domain suffix (i.e., ".com") should typically be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 1.2 ("The applicable top-level suffix in the domain name (e.g., '.com') would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.").
This Panel finds that the addition of the city name "Austin" (a city in Texas not far from where Respondent is apparently located, in San Antonio, Texas) to the Disputed Domain Name does nothing to alleviate any confusing similarity, as numerous panels have repeatedly held. See, e.g., Blanco GmbH + Co KG v. Traffic-D, Roy Lee,WIPO Case No. D2012-1799 ("[t]he addition of a geographic term…does not affect a finding that the disputed domain name is identical or confusingly similar to a complainant's trademark"); and Swarovski Aktiengesellschaft v. kay kom,WIPO Case No. D2014-0149 ("the addition of a geographical name or indicator to a trademark…does not serve to differentiate the domain name from the Complainant").
Accordingly, the Panel finds that Complainant has proven the first element of the Policy. B. Rights or Legitimate Interests
Complainant has argued that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, inter alia, "Respondent's registration and use of the domain name violates the scope of his limited license, which permits him to use the REALTOR® Marks in connection with his name or firm name for the limited purpose of identifying himself as a member of [Complainant]"; Respondent does not qualify as a seller of services under the test set forth in Oki Data Americas, Inc. v. ASD, Inc., supra, because (1) Respondent does not use the Disputed Domain Name in connection with his real estate business, (2) Respondent uses the Disputed Domain Name to redirect users to websites advertising non-member real estate agents, and (3) the website using the Disputed Domain Name does not disclose the relationship between Respondent and Complainant; the WhoIs record does not indicate that Respondent is commonly known by the Disputed Domain Name and, in any event, Respondent's use of the Disputed Domain Name violates the terms of his license with Complainant; and Respondent is using the Disputed Domain Name in connection with a monetized parking page that contains links for services that compete with Complainant.
Under the Policy, "a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP." WIPO Overview 2.0, paragraph 2.1.
Accordingly, as a result of Complainant's allegations and without any evidence from Respondent to the contrary, the Panel is satisfied that Complainant has proven the second element of the Policy. C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant has 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 the registrant's documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant's website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location. Policy, paragraph 4(b).
Here, Complainant appears to argue that bad faith exists pursuant to paragraph 4(b)(iv) of the Policy because Respondent is using the Disputed Domain Name in connection with a monetized parking page that contains links for services that compete with Complainant. Numerous panels repeatedly have agreed with this argument. See, e.g., Wal-Mart Stores, Inc. v. Whois Privacy, Inc.,WIPO Case No. D2005-0850; Columbia Pictures Industries, Inc. v. North West Enterprise, Inc.,WIPO Case No. D2006-0951; and Dr. Martens International Trading GmbH, Dr. Maertens Marketing GmbH v. Private Whois Service,WIPO Case No. D2011-1753.
In addition, this Panel agrees with a decision cited by Complainant finding bad faith where the disputed domain name was registered "in contravention of an undisputed agreement between the parties." Herbalife International of America, Inc. v. ,WIPO Case No. D2002-0101.
Accordingly, the Panel finds that Complainant has proven the third element of the Policy. D. Laches
This Panel agrees that the Complaint is not barred by laches. See WIPO Overview 2.0, paragraph 4.10: "Panels have recognized that the doctrine or defense of laches as such does not generally apply under the UDRP, and that delay (by reference to the time of the relevant registration of the disputed domain name) in bringing a complaint does not of itself prevent a complainant from filing under the UDRP, or from being able to succeed under the UDRP, where a complainant can establish a case on the merits under the requisite three elements." 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.
Douglas M. Isenberg
Sole Panelist
Date: March 26, 2015
Full & Egal Universal Law Academy