The Complainant is Century 21 Real Estate LLC, United States of America (“United States”), represented by Fidus Law Chambers, India.
The Respondent is Century 21 Realty (Pvt.) Ltd., Bangladesh, represented internally.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2021. On July 21, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2021, 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 for the disputed domain name.
The Center verified that the Complaint 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 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 12, 2021. On July 31, 2021, the Respondent requested an extension of the due date for Response. Following receipt of the Complainant’s observation on the request, the Center extended the due date for Response to September 11, 2021. On September 11, 2021, the Respondent requested that the proceeding be suspended to enable the parties to negotiate a settlement. In response to the Center’s email to the Parties on September 13, 2021, the Complainant sent an email on September 14, 2021, indicating that it did not agree to the Respondent’s request to suspend the proceeding. No further communication was received from the Respondent.
The Center appointed Andrew F. Christie as the sole panelist in this matter on September 20, 2021. 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 BackgroundThe Complainant, a wholly owned subsidiary of Realogy Group LLC, is a prominent and globally renowned franchisor in the field of real estate. It was formed in 1971, and has been engaged in the business of real estate services since then. It offers training and marketing support for the worldwide franchised real estate system provided under the CENTURY 21 trademark. It is among the largest franchisors in this field worldwide, with over 8000 independently owned and operated franchised broker offices in approximately 70 countries and territories worldwide, with over 120,000 affiliated real estate sales professionals.
The Complainant is the owner of numerous trademark registrations throughout the world, including United States Trademark Registration No. 1063488 (registered on April 12, 1977) and India Trademark Registration No. 2855768 (registered on December 4, 2014) for the word trademark CENTURY 21.
The Complainant registered the domain name
In May 2001, the Managing Director and CEO of the Respondent, A.I.M. Mahabubul Mujib, contacted the Complainant expressing interest in acquiring a franchise for Bangladesh, and informing that he had initiated the process of registering a company to be called “Century 21 Realty (Pvt.) Ltd” (which is the name of the Respondent). The Complainant replied, stating that it did not give permission for use of its CENTURY 21 trademark, and requesting withdrawal of the application to register the company.
The disputed domain name was registered on May 12, 2003. The Complainant has provided undated screenshots of the website resolving from the disputed domain name showing that it has been used to advertise various real estate properties in Bangladesh. Several pages of the website contain the words “Century 21 Realty” in a stylized form that closely resembles the Complainant’s logo.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name incorporates the Complainant’s trademark CENTURY 21 in its entirety, and adds as a suffix the letters “bd”, which is the globally accepted abbreviation denoting “Bangladesh”; (ii) under the disputed domain name the Respondent is offering services identical to the services offered by the Complainant and therefore consumer confusion is highly likely; (iii) it is well established in decisions under the Policy that a minor variation to a trademark, such as the addition of a country name or well-known regional identifier, is usually insufficient to confer sufficient distinctiveness to that name to avoid user confusion; (iv) because the Complainant’s business model involves the appointment of country-specific franchisees who are given the right to register and use a domain name consisting, at the second level, of the Complainant’s CENTURY 21 trademark and a two-letter abbreviation of the country name, the disputed domain name gives the impression that it is the Complainant’s domain name for Bangladesh; and (v) the Complainant has used the CENTURY 21 trademark since well before the Respondent registered the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name has been used in connection with an unauthorized offering of goods and services identical to those offered by the Complainant under the CENTURY 21 trademark, thereby misleading consumers into believing that it is in some manner affiliated with the Complainant; (ii) the Respondent has adopted a logo which is a nearly identical variation of the Complainant’s stylized logo, and is using it on the website resolving from the disputed domain name; (iii) the content appearing on the website resolving from the disputed domain name demonstrates the Respondent’s intention of commercial use of the website for unlawful gain by free-riding on the Complainant’s CENTURY 21 trademark; (iv) the admission by the Managing Director and CEO of the Respondent that he had previously worked at one of the Complainant’s franchisees clearly establishes the Respondent’s awareness of the CENTURY 21 trademark, and demonstrates the Respondent’s attempt to indicate to consumers the existence of a current association with the Complainant; (v) the Complainant has not authorized, licensed, or permitted the Respondent to register or use the disputed domain name or the CENTURY 21 trademark; (vi) the Complainant has prior rights in the CENTURY 21 trademark which predate the registration of the disputed domain name by the Respondent; and (vii) the Respondent does not own the CENTURY 21 trademark in Bangladesh, and has not acquired any reputation and/or goodwill in the trademark in any country.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the admission by the Managing Director and CEO of the Respondent that he was affiliated with one of the Complainant’s franchisees demonstrates that the Respondent had knowledge of the Complainant’s CENTURY 21 trademark and real estate business well prior to the registration of the disputed domain name, which was therefore done in bad faith; (ii) despite having been informed by the Complainant that it could not register its company as “Century 21 Realty (Pvt.) Ltd.”, the Respondent did so and also registered the disputed domain name, which is in the format used by many of the Complainant’s legitimate franchisees, and created a website to conduct a real estate business that used the CENTURY 21 trademark and a logo confusingly similar to one owned by the Complainant; (iii) the Respondent has registered the disputed domain name for the purpose of misleading consumers into believing it is affiliated with the Complainant, and to improperly trade off of the Complainant’s goodwill built up in its CENTURY 21 trademark for its own commercial gain; and (iv) there is a great likelihood that actual or potential visitors to the website resolving from the disputed domain name will be induced to believe either that the Complainant has licensed its CENTURY 21 trademark to the Respondent and has authorized the Respondent to register the disputed domain name, or that the Respondent has some connection with the Complainant in terms of a direct nexus or affiliation.
B. RespondentThe Respondent did not submit a formal response.
6. Discussion and Findings A. Identical or Confusingly SimilarOnce the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark CENTURY 21 followed by the letters “bd”. The Complainant’s trademark CENTURY 21 is clearly recognizable within the disputed domain name. The addition of the letters “bd”, which may be read by many Internet users as a two-letter reference to Bangladesh, does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its CENTURY 21 trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used to resolve to a website at which was displayed various real estate properties in Bangladesh, and which contained the words “Century 21 Realty” in a very similar style to the Complainant’s “Century 21” logo. Given the confusing similarity of the disputed domain name to the Complainant’s trademark, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithThe disputed domain name was registered many years after the Complainant first registered its CENTURY 21 word trademark. It is beyond doubt that the Respondent registered the disputed domain name with knowledge of the existence of the Complainant’s trademark, given that the Complainant’s trademark has been heavily used, the disputed domain name consists of the Complainant’s trademark with merely the addition of the letters “bd”, the Respondent’s website operates in the same field of business as that of the Complainant, and the Managing Director and CEO of the Respondent previously worked for a franchisee of the Complainant and applied (unsuccessfully) to become a franchisee of the Complainant. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name to attract, for commercial gain, Internet users to a website by creating confusion in the minds of the public as to an association between the website and the Complainant. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
7. DecisionFor 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,
Andrew F. Christie
Sole Panelist
Date: October 4, 2021