WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Marty Rodriguez Real Estate, Inc. v. Lancaster Industries

Case No. D2000-1468

 

1. The Parties

Complainant is Marty Rodriguez Real Estate, Inc. ("Complainant" or "Rodriguez Real Estate"), a California corporation having a principal place of business at 1030 East Alcosta Avenue, Glendora, California 91740 USA.

Respondent is Michael Lancaster d/b/a Lancaster Industries ("Respondent" or "Lancaster") located at 1340 East Alcosta Avenue #200, Glendora, California 91740 USA..

 

2. The Domain Name and Registrar

The domain name at issue is "martyrodriguez.com" (the "Domain Name"). The registrar is Register.com (the "Registrar") located at 575 8th Avenue - 11TH Floor, New York, New York 10018 USA.

 

3. Procedural History

On October 27, 2000, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint via hardcopy. On November 2, 2000, the Center received an electronic copy of the Complaint via email and sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On November 7, 2000 after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent's name.

The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On November 8, 2000, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On November 20, 2000, the Center received a communication via post mail from Respondent.

On December 1, 2000, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On December 6, 2000, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-adminstration panel consisting of the Sole Panelist.

 

4. Factual Background

Complainant, Marty Rodriguez Real Estate, Inc. provides real estate brokerage services. Its principal, Mrs. Marty Rodriguez, is regarded as one of the worldís top real estate agents. Mrs. Rodriguez is Century 21 Real Estate Corp.ís (Century 21) top all-time agent, having generated over $700 million in residential real estate sales, and earning more than $17 million in commissions over her illustrious career. In addition to being one of the founding members of the Century 21 Hall of Fame, Mrs. Rodriguez was honored as Century 21's top real estate broker worldwide in the years 1991, 1992, 1994 and 1997.

Century 21 is currently the worldís largest residential real estate sales organization, making Mrs. Rodriguez famous in the business in real estate. Mrs. Rodriguez has been widely featured in various newspapers, real estate and business publications as one of the top real estate agents in the USA and the world. With over 22 years of experience selling residential real estate in Southern California, Mrs. Rodriguez asserts that she is an icon in the real estate community.

In May of 2000, Mrs. Rodriguez initiated her plan to expand the advertising of her company, Rodriguez Real Estate, by reaching out to her clients via the Internet. While implementing this plan, Complainant discovered that Respondent Lancaster Industries had acquired the domain name "martyrodriguez.com" in March, 2000. Lancaster Industries is controlled by Michael Lancaster, who is a former Rodriguez Real Estate employee. Stacey Lancaster, Michael Lancasterís wife and former Rodriguez Real Estate employee, is currently one of Complainantís competitors in the real estate industry.

Rodriguez Real Estate asserts that it has common law trademark and service mark rights in MARTY RODRIGUEZ in association with its business of providing real estate services. Complainant alleges that it has pending trademark applications for MARTY RODRIGUEZ (Word Mark) and MARTY RODRIGUEZ (Stylized). These applications have not yet matured into trademark registrations.

Complainant alleges that the MARTY RODRIGUEZ marks have been used in association with real estate services since 1979. At all times, the MARTY RODRIGUEZ marks have been owned and used exclusively by Complainantís principal Mrs. Rodriguez from 1979 to 1995, and by Complainant from 1995 through to the present.

Complainant has identified over eighty (80) published articles reporting the success of Marty Rodriguez and Complainantís real estate services conducted in association with the MARTY RODRIGUEZ marks. Mrs. Rodriguez and Complainant have advertised the MARTY RODRIGUEZ marks in association with real estate services since 1979. Since 1988, Mrs. Rodriguez and Complainant have spent in excess of $125,000 annually in advertising the MARTY RODRIGUEZ marks in association with real estate services. Complainant offers further evidence of the strength of the MARTY RODRIGUEZ marks with listings from various Internet search engines linking the MARTY RODRIGUEZ marks to Complainantís real estate services over the Internet.

Complainant further alleges that it has never given permission to Respondent to use Complainantís common law marks.

 

5. Partiesí Contentions

A. Complainant contends that it has a common law trademark and/or service mark in MARTY RODRIGUEZ. Complainant further contends that the Domain Name is identical with and confusingly similar to the MARTY RODRIGUEZ marks pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent failed to contest Complainantís assertion that it has a common law trademark or service mark in MARTY RODRIGUEZ or that the Domain Name is identical with and confusingly similar to Complainantís marks.

Respondent failed to contest Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Name.

Respondent failed to contest Complainantís assertion that Respondent registered and used the Domain Name in bad faith.

 

6. Discussion and Findings

Even though Respondent has failed to file a Response or to contest Complainantís assertions, the Sole Panelist will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

Identity or Confusing Similarity.

Complainant contends that it has a common law trademark and/or service mark in MARTY RODRIGUEZ.

An individual may be entitled to a common law trademark or service mark without registering the mark with the appropriate authority. See, Steven Rattner v. BuyThis Domain Name, (WIPO D2000-0402); Jeanette Winterson v. Mark Hogarth, (WIPO D2000-0235); Julia Fiona Roberts v. Russell Boyd, (WIPO D2000-0210). The individual must show that his or her name has achieved sufficient secondary meaning or association.

This result is consistent with United States trademark law in which personal names are protectable as trademarks or service marks upon a showing that the name has become distinctive through the acquisition of secondary meaning. See Adray v. Adray-Aart, Inc., 68 F.3d 362 (9th Cir. 1995), amended on other grounds, 76 F.3d 984 (9th Cir. 1996) (personal names are capable of becoming strong trademarks upon a showing of secondary meaning). See also, McCarthy on Trademarks and Unfair Competition '13:2 (4th ed. 2000). Secondary meaning is the consumerís association of the mark with a particular source or sponsor and is established out of long association of the name with the business, whereby the name and the business have become synonymous in the mind of the public, submerging the primary meaning of the name in favor of its meaning as a word identifying that business. See, Visser v. Macrese et al., 214 Cal. App. 2d 249, 253, 29 Cal. Rptr. 367, 369 (Cal. Dist. Ct. App. 4th 1963); see also, Levis Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th Cir. 1991) (en banc). In assessing secondary meaning, one must consider a variety of factors, including, but not limited to, (1) advertising expenditures, (2) consumer ... linking [of] the mark to the source, (3) unsolicited media coverage of the product, (4) sales success, ... and [(5)] length and exclusivity of the markís use. Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F.Supp.2d 305, 313 (S.D.N.Y. 2000) (quoting Centaur Communications, Ltd. v. A/S/M Communications, Inc., 830 F.2d 1217, 1222 (2d. Cir. 1987).

Complainant alleges that the MARTY RODRIGUEZ marks have been used in association with real estate services since 1979. Complainant has identified over eighty (80) published articles reporting the success of Marty Rodriguez and Complainantís real estate services conducted in association with the MARTY RODRIGUEZ marks. Mrs. Rodriguez and Complainant have advertised the MARTY RODRIGUEZ marks in association with real estate services since 1979. Since 1988, Mrs. Rodriguez and Complainant have spent in excess of $125,000 annually in advertising the MARTY RODRIGUEZ marks in association with real estate services. Complainant offers further evidence of the strength of the MARTY RODRIGUEZ marks with listings from various Internet search engines linking the MARTY RODRIGUEZ marks to Complainantís real estate services over the Internet.

Respondent has not contested the assertions by Rodriguez Real Estate that it has a common law trademark and service mark in MARTY RODRIGUEZ. Therefore, the Sole Panelist finds that Rodriguez Real Estate has shown secondary meaning and association sufficient to establish valid common law marks in MARTY RODRIGUEZ.

Complainant further contends that the Domain Name is identical with and confusingly similar to the MARTY RODRIGUEZ marks pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Rodriguez Real Estate that the Domain Name is identical with and confusingly similar to the MARTY RODRIGUEZ marks.

The second level domain name "martyrodriguez.com" is identical to Mrs. Rodriguezís name and Complainantís marks. The deletion of a "space" within the Domain Name is not a material distinction.

Therefore, the Sole Panelist finds that the Domain Name is identical with the MARTY RODRIGUEZ marks pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with or permission from Complainant for the use of the MARTY RODRIGUEZ marks.

The Policy paragraph 4(c) allows three nonexclusive methods for Respondent to demonstrate that it has rights or a legitimate interest in the Domain Name:

(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.

Complainant alleges that Respondent has not used the Domain Name "martyrodriguez. com", or a name corresponding to this Domain Name, in connection with a bona fide offering of goods and services. Ziegenfelder Co. v. VMH Enterprises, Inc., (WIPO D2000-0039) (Failure to use the domain name to provide a product or service demonstrates Respondent has no rights or legitimate interest in the Domain Name).

Complainant further alleges that has Respondent is not commonly known by the Domain Name, nor has Respondent engaged in noncommercial or fair use.

Respondent has offered no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product.

Michael Lancaster, one of the controlling forces behind Respondent, is a former employee of Complainant, and was employed as a realtor by Complainant for over two and one-half years. Stacey Lancaster, Michael Lancasterís wife and current sales associate for Complainantís rival, Century 21 Citrus Realty, is also a former employee of Complainant and was employed as a relator by Complainant for approximately three years. In fact, Stacey Lancaster, formerly Stacey Cimino, was one of Mrs. Rodriguez's top-producing sales associates. As such, Respondent was fully aware that Complainant had established rights in the MARTY RODRIGUEZ marks at the time it registered the Domain Name. As a former employee of Complainant, and understanding the strength of the MARTY RODRIGUEZ marks, Respondent was fully aware that Complainant would have an interest in the Domain Name "martyrodriguez.com".

Respondent has also engaged in a pattern of registering domain names of its competitors in the real estate industry. For example, Respondent registered the domain name "greenvalleyrealators.com". The GREENVALLEYREALTOR mark is used in association with the Green Valley Association of Realtors (Green Valley Association) in Green Valley, Arizona. The association is a local trade association that provides various services to realtors in the Green Valley area. One of the Green Valley Associationís members is a competing Century 21 realtor, Century 21 Dick Smith Realty.

In addition, Respondent has registered the domain name "dentonproperties.com" wherein the DENTON PROPERTIES mark is owned by a competing realtor, Denton Properties in La Canada Flintridge, California. The owner of Denton Properties contacted Complainant in response to its discovery that Michael Lancaster registered the DENTONPROPERTIES mark. The "www.dentonproperties.com" website links to a real estate referral service, "www.HomeChampion.com". Complainant alleges that Home Champion is controlled by the Michael Lancaster. Moreover, various websites linked to Stacey Lancaster, including "viaverdehomes.com", "newportridgerealtors.com" and "glendorahouses.com" are redirected to the Home Championís webpage.

Further, Respondent and other companies controlled by Michael and Stacey Lancaster have registered over 100 domain names in which it has no legitimate rights or use, including the federally registered marks "uclamedicalcenter.com" and "SWOOSH.org". The UCLA MEDICAL CENTER trademark is well-known worldwide in association with the UCLA Medical Centerís innovative research and medical services. The SWOOSH trademark is associated with the world-renowned Nike, Inc. logo and sports apparel.

The Sole Panelist finds that Respondentís actions prevent Complainant from using the Domain Name and further demonstrate a pattern of such conduct. The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraphs 4(b)(ii).

The Sole Panelist further finds that Respondentís actions were primarily for the purpose of disrupting the business of a competitor. The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iii).

The Sole Panelist further finds that Respondent has intentionally attempted to attract Internet traffic to Respondentís websites by creating a likelihood of confusion with Complainantís marks. The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(iv).

Therefore, based upon each of the foregoing grounds, the Sole Panelist finds that the Domain Name was registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Name "martyrodriguez.com" is identical with and confusingly similar to Complainantís common law trademark and service mark in MARTY RODRIGUEZ, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist requires that the Domain Name be transferred to Marty Rodriguez Real Estate, Inc.

 


 

Richard W. Page
Sole Panelist

Dated: December 24, 2000