Complainant is National Association of REALTORS® ("NAR") of Chicago, Illinois, United States of America ("United States") represented internally.
Respondent is Clark Siegelin, DomainP of Las Vegas, Nevada, United States, represented by The Trademark Company, PLLC, United States. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 23, 2015. On November 24, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 24, 2015, the Registrar transmitted by email to the Center its verification response confirming that the 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 27, 2015. In accordance with the Rules, paragraph 5, the due date for Response was December 17, 2015. The Response was filed with the Center on December 17, 2015.
On December 22, 2015, Complainant submitted its supplemental filing, of which the Center acknowledged receipt.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 28, 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. 4. Factual Background
Complainant is a national trade association of real estate agents that was founded in 1908, and today represents over one million real estate professionals, 54 territorial associations and more than 1,200 local associations as the largest trade association in the United States.
Complainant adopted the REALTOR and REALTORS marks in 1916 to identify its real estate professional members. It first registered these marks as collective membership marks on September 13, 1949, and January 10, 1950, respectively (Reg. Nos. 515200 and 519789). Complainant has since registered numerous other marks incorporating the REALTOR and REALTORS marks (collectively, the "REALTOR Marks").
The disputed domain names were registered as follows: on August 4, 2002, on March 14, 2008, on September 17, 2009, and on November 28, 2010. 5. Parties' Contentions A. Complainant
Complainant states that the REALTOR Marks have become famous and represent an enormous amount of goodwill for Complainant through the skill and care of its members and the supervision and control exercised by Complainant over the nature and quality of the use of the REALTOR Marks. Complainant asserts that the disputed domain names are confusingly similar because they incorporate the entirety of Complainant's registered marks with only the addition of the descriptive terms "247", "24", "get", and ".com".
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names because Respondent is not a member of Complainant and is therefore not authorized to use the REALTOR Marks in any manner. Complainant further contends that Respondent's use of the disputed domain names, namely to post pay-per-click links related to the business of Complainant and for passive holding, are not bona fide use and therefore fails to confer such rights or legitimate interests.
Regarding bad faith registration, Complainant states that Respondent registered the disputed domain names intentionally to attract Internet users for commercial gain by creating a likelihood of confusion between the disputed domain names and Complainant's REALTOR Marks. Regarding bad faith use, Complainant asserts that Respondent likely earns click-through fees for each link selected, which evidences bad faith. Complainant alleges that Respondent was aware of Complainant's rights in the REALTOR Marks when it registered the disputed domain names because they incorporate the REALTOR Marks in their entirety, utilize website content related to the real estate industry, and the websites link to third-party websites also related to the real estate industry.
In its supplemental submission, Complainant notes that Respondent's assertion that it has reserved the disputed domain names for legitimate business purposes within the last three years is unsupported by the facts, as the disputed domain names were registered from 2002 to 2010, all at least five years ago. Complainant also asserts that Respondent has not shown that it is making demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. B. Respondent
Respondent contends that he intends to use the disputed domain names in connection with his future business. He states that the additional terms "247", "24", and "get" give a completely different commercial impression than the REALTOR Marks and therefore distinguish the disputed domain names.
Regarding Respondent's rights or legitimate interests, Respondent contends that Complainant has failed to make out its prima facie case due to a lack of evidence. Respondent further states, "within the last three years Respondent reserved the disputed domain names for legitimate business purposes namely, for Real Estate Agents (aka Realtors) to advertise/list their business and property listings".
Regarding bad faith, Respondent states that because he has rights and interests in the disputed domain names, the issue of bad faith is moot. Respondent states that there is no evidence that he registered or has used the disputed domain names in bad faith. Respondent alleges that he did not register the disputed domain names in order to profit off of Complainant's purported goodwill or to prevent Complainant from registering the disputed domain names. Respondent contends that he was unaware of Complainant's business at the time he registered the disputed domain names. Regarding bad faith use, Respondent alleges that there is no evidence that he has attempted to create a likelihood of confusion with Complainant's REALTOR Marks for commercial gain, that he has not registered the disputed domain names for the purpose of conveying them to Complainant or a competitor, and intends to use them for legitimate business purposes. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the REALTOR Marks in view of its trademark registrations. The Panel further finds that the disputed domain names are confusingly similar to the REALTOR Marks because each one incorporates either the REALTOR or REALTORS mark in its entirety. The addition of the terms "247", "24" and "get" does not differentiate the disputed domain names from Complainant's REALTOR Marks. See, e.g., Am. Online, Inc. v. Yeteck Commc'n, Inc.,WIPO Case No. D2001-0055; National Association of realtors v. John Fothergill,WIPO Case No. D2010-1284.
The Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Panel finds on the basis of Complainant's unchallenged assertion that Respondent is not a member of Complainant National Association of Realtors and is not authorized to use the REALTOR Marks. The Panel futher finds that Respondent is currently using the , , and domain names for click-through advertising that exploits the trademark value of the REALTOR marks. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.6 ("WIPO Overview 2.0") (Consensus view on whether pay-per-click usage can be a bona fide use). Complainant's evidence shows that links on Respondent's pages lead to real estate agent location services that include agents who are not members of the National Association of Realtors, in effect using the trademark value of the REALTOR mark to promote the services of non-members. And Respondent admits that intends to use the disputed domain name in the same way. This is not a bona fide use.
Respondent's answer is not sufficient to rebut the prima facie case. Respondent says:
Moreover, Pursuant to paragraph 4(c)(iii) of the Policy, within the last three years Respondent reserved the disputed domain names for legitimate business purposes namely for Real Estate Agent (aka Realtors) to advertise/list their business and property listings. Since the beginning Respondent planned to point and direct the disputed domain names to "www." where the listings would be.
Respondent's fundamental mistake is his erroneous assumption that he may use the trademark REALTORS as if it were a generic synonym ("a/k/a") for "Real Estate Agents" and that doing so is a legitimate purpose. It is not. Jacob Zimmerman v. National Association of Realtors, 2004 TTAB Lexis 180, Cancellation Nos. 9203236 and 92040141 (2004) ("Realtor" is not generic for "real estate agent"; cancellation action in United States TTAB by petitioner who sought to clarify his rights to use "realtor" in domain names sold to real estate agents denied). Given that REALTOR is protected as a mark and is not generic, Respondent's use of the term to identify agents who are not NAR members is not a bona fide use. Given this, it is no defense that Respondent has "within the last three years reserved the disputed domain names" for this purpose.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Regarding bad faith registration, Complainant's REALTOR Marks have been registered for over 66 years. Respondent has not denied Complainant's allegations and evidence that it is well known among real estate professionals, including evidence that "NAR is the United States' largest trade association, representing over one million real estate professionals, 54 territorial associations, and more than 1,200 local associations."
In view of this and the fact that "since the beginning" the Respondent has directed its websites at the real estate industry where there is high awareness of Complainant's rights, the Panel rejects as not credible Respondent's assertion that he was not aware of Complainant's REALTOR Marks at the time he registered the disputed domain names. Instead, the Panel finds that Respondent registered the disputed domain names in bad faith.
Regarding bad faith use, pay-per-click links featured on the website of a disputed domain name may be evidence of bad faith, particularly when those links resolve to competitors of complainant, as the registrant is using the disputed domain names to attract Internet users for commercial gain. See, e.g., Donald J. Trump v. Mediaking LLC d/b/a Mediaking Corporation and Aaftek Domain Corp.,WIPO Case No. D2010-1404. As explained above, Respondent uses the REALTOR mark to attract internet users and route them to links that lead to a wide array of real estate agents many of whom are not members of the National Association of Realtors, thereby confusing internet users. This is currently true for the , , and domain names. While the webpage associated with the domain name is currently linking to mortgage banking webpages, Respondent asserts in his Response that he intends to use the domain name in the same way as his other "realtor" domain names: "Since the beginning Respondent planned to point and direct the disputed domain names to the website "www." where the listings would be."
This is a pattern of bad faith use. See, e.g., Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications,WIPO Case No. D2003-0602 (finding that respondent's registration of three related domain names properly constituted a pattern when the registrations were likely intentionally obstructive).
The Panel finds that this pattern of "intentionally attempt[ing] to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location" constitutes bad faith use. Paragraph 4(b)(iv) of the Policy.
The Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(iii) of the Policy. 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 names, , , and be transferred to Complainant.
Lawrence K. Nodine
Sole Panelist
Date: January 11, 2016
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