The Complainant is The RMR Group LLC, United States of America (“United States” or “U.S.”), represented by Ropes & Gray LLP, United States.
The Respondent is Registration Private, Domains By Proxy, LLC, United States / Rakesh Singh, India. 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 June 14, 2019. On June 14, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 the Complainant on June 21, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on June 26, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 1, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 21, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 22, 2019.
The Center appointed Luca Barbero as the sole panelist in this matter on August 1, 2019. 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 Complainant, The RMR Group LLC, is a majority-owned subsidiary of the holding company The RMR Group Inc. and an alternative asset management company with over thirty years of experience investing in real estate and managing real estate-related businesses. The Complainant provides management services to five publicly owned real estate investment trusts and three real estate-related operating companies, with approximately USD 30 billion of total assets under management and 50,000 employees.
The Complainant has used the name Reit Management & Research (abbreviated as RMR) since 1998, and THE RMR GROUP since 2015.
Since 2015, the Complainant has used its THE RMR GROUP marks in U.S. commerce in connection with its financial and other services.
In addition, the Complainant owns two U.S. service mark registrations consisting of or including the term THE RMR GROUP.
- United States trademark registration No. 5067200, THE RMR GROUP word mark, filed on October 22, 2015 and registered on October 25, 2016 in class 36;
- United States trademark registration No. 5067201, THE RMR GROUP figurative mark, filed on October 22, 2015 and registered on October 25, 2016 in class 36;
The Complainant is also the owner of the domain name , which was registered on December 22, 2011 and is used by the Complainant to promote its services under the trademark THE RMR GROUP.
The disputed domain name was registered on May 8, 2019. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the trademark THE RMR GROUP in which the Complainant has rights as it reproduces the trademark in its entirety with the mere removal of the definite article “the” and the addition of the Top-Level Domain (“TLD”) “online”.
The Complainant asserts that the disputed domain name is so “obviously indicative” of Complainant’s services that Respondent’s use of the disputed domain name would “inevitably lead to confusion of some sort”. The Complainant also submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name because of the following reasons:
- The Respondent registered the disputed domain name on May 8, 2019, roughly two and a half years after the Complainant registered and began using its trademark THE RMR GROUP and eight years after the Complainant registered its domain name ;
- There is no relationship or affiliation between the Complainant and the Respondent giving rise to any license, permission, or other right by which the Respondent could own or use any domain name incorporating the Complainant’s marks;
- Both prior to and subsequent to the date of registration, to the Complainant’s knowledge, the Respondent has not used or prepared to use the disputed domain name with any bona fide offering of goods or services.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the Respondent registered the disputed domain name without the Complainant’s authorization.
The Complainant emphasizes that the Respondent’s registration of the disputed domain name that is confusingly similar to the Complainant’s famous trademark and domain name without any relationship to the Complainant, is itself sufficient evidence of bad faith.
The Complainant also underlines that the disputed domain name is identical to the Complainant’s domain name except for the TLD “.online” and that it resolves to a dummy website that consists of what seem to be stock photos and generic (and in some cases incoherent) phrases like “WELCOME TO RMRGROUP”, “We Provide Best Service To Our Associates According To Their Ability”, “The Mission of The Company Is To Provide Comprehensive Range Of Products Services”, “The Aim Of The Company Is To Make Available Unique Quality Products!”, and “Our Company Has A Strong Vision In Future And Are Committed To Give Quality Products!”.
Furthermore, the Complainant highlights the fact that the Respondent’s website also uses a fake logo for “RMR Group”, which is further evidence of the Respondent’s bad faith.
Accordingly, the Complainant concludes that all of the available evidence supports the assumption that the Respondent has registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights over the trademark THE RMR GROUP based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annexes to the Complaint.
As highlighted in section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the first element functions primarily as a standing requirement, and the threshold test for confusing similarity typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.
In the case at hand, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark THE RMR GROUP as it reproduces the trademark almost entirely with the mere removal of the definite article “the” and the addition of the TLD “.online”, which can be disregarded when comparing the similarities between a domain name and a trademark (see i.a. Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck,WIPO Case No. D2014-0206; and Zions Bancorporation v. Mohammed Akik Miah,WIPO Case No. D2014-0269).
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you 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 (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 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.”
It is well-established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy.
Moreover, it has been repeatedly stated that when a respondent does not avail itself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269).
The Panel finds that the Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.
In view of the above and in the absence of a Response, the Panel finds the Complainant has thus proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith.
In the case at hand, the Panel finds that the Respondent acted in opportunistic bad faith at the time of registration, since the disputed domain name is so obviously connected with the Complainant that its selection by the Respondent, which has no connection with the Complainant, on balance suggests the disputed domain name was registered with a deliberate intent to create an impression of an association with the Complainant.
Moreover, the Respondent registered the disputed domain name well after the Complainant first registered and began using its trademark THE RMR GROUP and years after the Complainant registered its domain name , using the exact trademark used by the Complainant for its own website and changing only the TLD to “online” instead of “.com”.
In this respect, the Panel finds paragraph 4(b)(iv) of the Policy to be applicable, since the Respondent has attempted (and probably succeeded) to attract Internet users to a website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services. The Respondent’s use of a fake logo for “RMR Group”, on the website, further infers that the Respondent’s underlying intent, was that of disrupting the Complainant’s business in some way. This is not conduct consistent with registration and use in good faith.
In the case at hand, the Respondent has used a proxy service for the registration of the disputed domain name. As stated in section 3.6 of WIPO Overview 3.0, “Where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. Panels additionally view the provision of false contact information (or an additional privacy or proxy service) underlying a privacy or proxy service as an indication of bad faith. In some cases, particularly where the respondent does not avail itself of the opportunity to respond to claims based on the timing of the registration of the disputed domain name (such as a materially relevant change in underlying registrant), panels have been prepared to infer that the use of a privacy or proxy service may seek to mask the timing of the respondent’s acquisition of the domain name. Panels have also viewed a respondent’s use of a privacy or proxy service which is known to block or intentionally delay disclosure of the identity of the actual underlying registrant as an indication of bad faith”.
As an additional circumstance suggesting bad faith, the Panel notes that there has been no Response filed by the Respondent.
In view of the above, the Panel finds that the disputed domain name was registered and is being used 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 the Complainant.
Luca Barbero
Sole Panelist
Date: August 15, 2019
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