WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sutton Group Financial Services Ltd. v. GeorgeGeorge.com o/a George Georgopoulos
Case No. D2004-0335
1. The Parties
The Complainant is Sutton Group Financial Services Ltd., C/O Scott Shaw, Vancouver, British Columbia, Canada, represented by Gowling Lafleur Henderson, LLP, Canada.
The Respondent is GeorgeGeorge.com o/a George Georgopoulos, North London, Ontario, Canada.
2. The Domain Names and Registrar
The disputed domain names are <suttonagent.com>, <suttonalberta.com>, <suttonamerica.com>, <suttonbc.com>, <suttonburnaby.com>, <suttoncanada.com>, <suttonedmonton.com>, <suttonlondon.com>, <suttonmississauga.com>, <suttonmontreal.com>, <suttonnovascotia.com>, <suttonontario.com>, <suttonottawa.com>, <suttonpreferred.com>, <suttonrealtors.com>, <suttonto.com>, <suttontoronto.com>, <suttonusa.com>, <suttonvancouver.com> and <suttonvictoria.com> (herein “the domain names in dispute”). All 20 are registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 6, 2004. On May 7, 2004, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain names at issue. On May 7, 2004, Tucows 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 administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 the Respondent of the Complaint, and the proceedings commenced on May 11, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was May 31, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2004.
The Center appointed J. Nelson Landry as the Sole Panelist in this matter on June 9, 2004. 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
For the reasons set out below, the Complainant submits that the Respondent’s registration of the domain names in dispute fall squarely within the scope of the Policy, and accordingly, the transfer of the domain names in dispute to the Complainant is warranted.
The Complainant has since 1983 been in operation, offering real estate agency and brokerage services through a franchise network it established and operates through its wholly owned subsidiary, Sutton Group Realty Services Ltd. Since that time, the Complainant, with a national real estate network of over 7,600 sales associates, has generated over ten billion ($10,000,000,000) dollars annually in real estate transactions, and represented over 100,000 clients and their families and its mortgage funding exceeded CDN$500 million dollars in 2003.
The Complainant has generated significant franchising revenue. For the year ended June 30, 2003, franchise revenue for the Complainant totaled CDN$5,730,303, while franchise revenue for 2002 was CDN$5,464,340 and according to a Vancouver Sun article, “Business BC 100 Fastest Growing Companies,” the Complainant is one of the top 100 publicly traded companies in British Columbia.
The Complainant is the registered owner of forty-eight (48) trademark registrations in Canada, containing, or comprised of the element SUTTON, including design or script forms in at least 16 sub-groups wherein the word “Sutton” is represented in different forms or scripts such as: SUTTON, sutton, SUTTON.COM, WWW.SUTTON.COM, SUTTON & DESIGN, SUTTON AND WWW.SUTTON.COM DESIGNS, sutton group, SUTTON GROUP, GROUPE SUTTON, groupe sutton, SUTTON HOMEBASE, SUTTON COMMUNITY, SUTTON CITY, SUTTON MORTGAGE CORPORATION, SUTTON MORTGAGE, SUTTON GROUP & Design ( herein collectively, the “Trademarks”).
The Complainant has established a significant Internet presence. The Complainant is the owner of at least twenty-two (22) domain names incorporating the word SUTTON, including, without limitation, the following domain names:
<sutton.com>; <joinsutton.com>; <suttonnewlicensees.com>; <suttoncity.com>; <suttonadmin.com>; <suttonwestcoastnorthvancouver.com>; <suttonwestcoastwestvancouver.com>; <suttonwestcoastwhiterock.com>; <suttonwestcoastlangley.com; <suttonwestcoastbumaby.com>; <suttonwestcoastnanaimo.com>; <suttonvancouverwestside.com>; <suttonnorthvancouver.com>; <suttonwestcoastwhistler.com>; <suttonwestvancouver.com>; <suttonwhiterock.com>; <suttonlangley.com>; <suttoncentral.com>; <suttonnanaimo.com>; <suttonwhistler.com>; <suttonparksville.com>; <suttonproperties.ca>.
The Complainant’s SUTTON websites generate significant traffic. For example, in 2003 the Complainant’s website located at “www.suttom.com” generated 16 to 17 million hits, and approximately 130,000 unique visitors per month. In 2003, the Complainant’s “www.sutton.com” website generated a staggering 200 million hits. (no evidence)
The Respondent is a real estate salesperson, working with a franchisee of the Complainant, namely, Sutton Group Select Realty Inc, and has been involved in the field of real estate for over twenty (20) years. He has his own website page within the regional Sutton franchisee website where he describes himself as a “Domain Names Collector” under “Personal Interest” under Sutton group for London, Ontario agent.
On the same day, December 9, 2002, the Respondent registered the 20 domain names in dispute. Since this registration date, the domain names in dispute have remained inactive, a period of approximately sixteen (16) months, resolving to websites displaying the headline “Welcome to” followed by the name of the relevant domain (e.g. “Welcome to ‘www.suttonbc.com’”) and the illustrated mention of a road block “This site is currently ... Under Construction ... Please visit us again soon.”
The Complainant has had contacts or attempts thereof with the Respondent. The Complainant, through its legal counsel, issued correspondence dated November 5, 2003, to the Respondent, advising same of the Complainant’s rights in the numerous SUTTON Trademarks, and requiring that the domain names in dispute be transferred to it.
The Respondent contacted the Complainant’s legal counsel by way of telephone on November 7, 2003, wherein he confirmed that he was a SUTTON salesperson and indicated that the Complainant’s legal counsel having previously acted on his behalf, and as such, the Complainant’s legal counsel was precluded from acting against him to which the Complainant indicated to the Respondent that to its knowledge no conflict existed. The Respondent indicated that he would obtain the name of the lawyer and provide it to the Complainant’s legal counsel. The Respondent never contacted the Complainant with this information despite legal counsel’s multiple telephone reminders.
Subsequent to this telephone discussion with the Respondent, legal counsel for the Complainant conducted a second search and determined that no conflict existed and by way of correspondence dated January 14, 2004, the Respondent was advised that no conflict existed, and the request that the domain names in dispute be transferred to the Complainant was reiterated. The Respondent did not respond to the Complainant.
The Complainant telephoned the Respondent on February 9, 2004, leaving a message requesting that the Respondent contact the Complainant at his earliest convenience. Once again, the Respondent did not respond.
The Respondent is not licensed, or otherwise authorized, to register any of the Trademarks as a domain name.
5. Parties’ Contentions
The Complainant submits that the domain names in dispute incorporate the whole of the Complainant’s well-known Trademarks, or in some cases, the whole of the distinctive element of the Trademarks, namely SUTTON. The fact that the domain names in dispute are followed by geographical, descriptive terms or dot com does not obviate the likelihood of confusion, since such suffixes are inconsequential to the confusion analysis. According to Complainant, the domain names in dispute are identical or confusingly similar to the Complainant’s SUTTON Trademarks in which the Complainant has rights.
The Complainant alleges that it has established a longstanding and widespread presence in the real estate field and that the Trademarks have become synonymous with the highest level of real estate and brokerage services across Canada. The Complainant, commonly known as SUTTON by consumers, has established itself as one of Canada’s premier real estate companies and a result of extensive use and promotion in Canada, and the Trademarks have achieved vast and unparalleled public recognition and awareness and an exceptional reputation in Canada.
The Complainant claims it has established a significant Internet presence, and regards the Internet as an important part of its business. The Complainant is the owner of numerous domain names listed hereinabove.
The Complainant is the registered owner of the numerous SUTTON Trademarks and by virtue of its use and these registrations it has rights in the said Trademarks.
The Complainant submits that having established a longstanding and widespread presence and use in the real estate field the Trademarks have become synonymous with the highest level of real estate and brokerage services across Canada and have achieved vast and unparalleled public recognition and awareness, and an exceptional reputation in Canada.
According to Complainant, the Respondent may not avoid confusion by appropriating another’s entire mark in a domain name and the addition of descriptive or non-distinctive terms. See RRI Financial, Inc. v. Ray Chen, WIPO Case No. D2001-1242, attached as Exhibit 28; Miller Brewing Company v. Virtual Agents, WIPO Case No. D2001-0652; see also Quixtar Investments, Inc. v. Dennis Hoffman, W1PO, Case No. D2000-0253, in respect of - <quixtarmortgage.com> - held to be legally identical to the trademark QUIXTAR with the generic terms “mortgage” and “.com” which has little, if any, affect on a determination of legal identity between the domain name and the mark.
A similar holding is made by the Panel in SWATCH AG v. Stefano Manfroi, WIPO Case No. D2003-0802, holding that the inclusion of the distinctive element of the complainant’s mark in the disputed domain name was sufficient for a finding of confusion, irrespective of the addition of other non-distinctive words such as “news,” “discovery” and “research,” following earlier WIPO decisions, inter alia, PepsiCo, Inc. v. Diabetes Home Care, Inc., WIPO Case No. D2001-0174 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184 to the effect that the addition of common nouns to a famous trademark does not change the overall impression of association with complainant.
Complainant submits that the addition of geographical indicator is inconsequential to confusion analysis and relies on eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633, wherein the respondent had attached a country name to the trademark EBAY to attract Internet users to respondent’s website for respondent’s commercial gain.
Complainant also alleges that the presence of a design element is of no practical significance and relies on SWATCH AG v. Stefano Manfroi, supra; Park Place Entertainment Corporation v. Mike Gorman, and similarly contends that the addition of “.com” is equally inconsequential and relies on J.P. Morgan & Co. v. Resource Marketing, WIPO Case No. D2000-0035, and Top Driver, Inc. v. Benefits Benefits, WIPO Case No. D2002-0972.
Secondly the Complainant contends that the Respondent has no rights or legitimate interests in the domain names in dispute, in that there is no evidence to suggest that the Respondent has ever used or demonstrated preparations to use the domain names in dispute, or a name corresponding to the domain names in dispute in connection with a bona fide offering of goods and services. Further, there is no evidence to suggest that the Respondent has been commonly known by the domain names in dispute. There is also no evidence that the Respondent is making or intends to make a legitimate non-commercial or fair use of the domain names in dispute. Finally, the Respondent is not licensed or otherwise authorized to register the Trademarks as domain names.
The Complainant contends that the status of Respondent as SUTTON salesperson does not confer rights.
The Complainant submits the well-established principle that while Respondent may have a right to sell Complainant’s goods or services, it does not give the Respondent the right to register a Trademark as part of a domain name without the consent of the holder of the Trademark, and that such a registration goes beyond what is required to advertise and sell the services or goods of the Complainant and relies on AVENTIS Pharma S.A. and Merrell Pharmaceuticals Inc. v. Rx USA, WIPO Case No. D2002-0290, and The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co. Inc., WIPO Case No. D2000-0113, wherein the panel held that even if the respondent was a retail seller of the complainant’s products, it did not confer proprietary rights in the complainant’s marks, nor could it use the complainant’s mark as a domain name. See also Nokia Corporation v. Nokia Ringtones & Logos Hotline, WIPO Case No. D2001-1101, wherein in holding that the respondent did not have a legitimate interest in the domain name <worldnokia.com>, the panel concluded that, absent the complainant’s consent, the selling of the complainant’s products was not sufficient to grant the Respondent the right to register a domain name containing the complainant’s mark.
Similar holdings are made by the panel in, inter alia, Motorola Inc. v. NewGate Internet Inc., WIPO Case No. D2000-0079; Stanley Works and Stanley Logistics Inc. v. Camp Creek Co., WIPO Case No. D2000-0113; R.T. Quaife Engineering, Ltd v. Bill Luton, WIPO Case No. D2000-1201.
In Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079, the panel confirmed this principle: the right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product. The use of a mark as a domain name clearly goes further than what is required merely to resell products. See also Société Civile Agricole Chateau Margaux v. Goldman Williams Ltd., WIPO Case No. D2001-1147.
The Complainant submits to the Panel that a bona fide use does not exist when the intended use is a deliberate infringement of another’s rights. Use which intentionally trades on the fame of another cannot constitute a bona fide offering of goods or service and to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy. See Chanel, Inc. v. Cologne Zone, WIPO Case No. D2000-1809 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna. Com,” WIPO Case No. D2000-0847.
The Respondent has not acquired any trademark rights by virtue of being a SUTTON salesperson, is not licensed or otherwise authorized to register the SUTTON Trademarks as domain names and the Complainant has not provided its consent to the Respondent to register the domain names in dispute.
The Respondent’s online profile indicates that he is a “Domain Names Collector.” The online profile also indicates that the Respondent has been involved in the field of real estate for over twenty (20) years. (See Complaint, Exhibit 5).
Although there is no evidence to suggest any rights or legitimate interest on the part of the Respondent, the Complainant submits that a number of factors reinforce the absence of rights, such as the prior relationship where knowledge of Complainant’s rights is assumed and such prior knowledge of rights can undermine a claim of legitimacy, particularly where the Respondent has had a relationship with the Complainant. See National Council of Young Men’s Christian Associations of the United States of America v. Duerr Business Solutions, NAF, Case No. FA0008000095417; Top Driver, Inc. v. Benefits Benefits, supra; Express Messenger Systems, Inc. v. Golden State Overnight, supra; and Geniebooks.com Corporation v. William E. Merritt, WIPO Case No. D2000-0266.
Thirdly, relying upon subparagraphs 4(b)(i), 4(b)(ii) and 4(b)(iv) of the Policy, the Complainant submits that the domain names in dispute were registered and are being used in bad faith by the Respondent who has engaged in a pattern of registering domain names that contain Trademarks to which he is not entitled.
The ownership of multiple domain names which correspond to third party trademarks constitutes prima facie evidence of conduct falling within subparagraph 4(b)(ii) of the Policy. See Inter-IKEA Systems B.V. v. Technology Education Center, WIPO Case No. D2000-0522. In some cases, as few as two (2) or three (3) domain name registrations have been sufficient to establish that a Registrant has engaged in a pattern of registering domain names that incorporate the trademarks of third parties. See New York Life Insurance Company v. Arunesh C. Puthiyoth, WIPO Case No. D2000-0812; Volvo Trademark Holding AB v. Cup International Limited, WIPO Case No. D2000-0338; CDI Corporation & Ors v. Deepak Rasiklal Rajani & Ors, WIPO Case No. D2000-0898; Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056, and Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro, WIPO Case No. D2001-0575.
Similarly it has been held that multiple domain names incorporating the trademark of a single trademark owner constitute a pattern of intentionally obstructive registrations. See Time Warner Entertainment, L.P. v. HarperStephens, WIPO Case No. D2000-1254, and Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602. The panel in Telstra Corporation Limited v. Ozurls, WIPO Case No. D2001-0046, held that the fifteen (15) domain names which were the subject of the dispute, and which contained generic and geographical words constituted a “pattern” even if the registrations were directed to a single Complainant.
Although the Complainant submits that the Respondent’s activities fall squarely within subparagraph 4(b)(ii) in light of his multiple domain name registrations containing the Trademarks, the Complainant nevertheless submits surrounding circumstances, such as inactivity, failure to respond to Complainant’s requests, knowledge of Complainants rights, domain name collector status, same day registration and pattern of registration which all further support a finding of bad faith.
In support thereof Complainant relies of numerous panel decisions: inactivity may mean bad faith as held in Telstra Corp. v. Nuclear Marshmallows, supra; Yahoo! Inc. v. CPIC NET and Syed Hussain, WIPO Case No. D2001-0195, and in Metabolife International v. Robert Williams, WIPO Case No. D2000-0630; failure to respond to the Complainant’s transfer requests, is discussed in Seiko Epson Corporation et al. v. JIT Consulting, NAF, Case No. FA0008000095476; Mackie Industrial, Inc. v. Vanilla Limited, NAF, Case No. FA4000094668; Euromarket Designs, Inc. v. Domain For Sale VMI, WIPO Case No. D2000-1195; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460, and eBay Inc. v. Sunho Hong, supra; knowledge of the Complainant’s rights and prior relationship is considered in Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137, and Document Technologies v. International Electronic Communications, Inc., WIPO Case No. D2000-0270, while for same day registrations representing a pattern, see Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, supra; Football Club des Girondins de Bordeaux v. Annie Arr, WIPO Case No. D2000-0149; ISL Marketing AG, and The Federation Internationale de Football Association v. JY Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034, and Fairmont Hotel Management, L.P. and Fairmont Hotels & Resorts (U. S.) Inc., v. 613181 BCLtd., WIPO Case No. D2001-1050.
The Complainant submits that in light of the registration of the domain names in dispute, as well as the surrounding circumstances, the Respondent registered and is using the domain names in dispute in bad faith.
Complainant further contends that in cases where an express offer to sell is not made, examination must be had to the surrounding circumstances which suggest that the domain names in dispute were purchased to sell to the Complainant for a profit. Such circumstances are that the Respondent had knowledge of the Complainant’s rights at the time of the registrations, a self-confessed “Domain Names Collector,” the inactivity of the domain names in dispute since their registration on December 9, 2002, a period of approximately sixteen (16) months and that all were registered on the same day.
The Complainant relies on earlier decisions of panels where it was held that the bad faith requirement is met by a domain name that, if ever put to use, would ultimately result in consumer confusion. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, WIPO Case No. D2000-0397; Garrison Keillor, Minnesota PublicRadio, Inc. v. Paul Stanton, NAF, Case No. FA0107000098422; SSL International PLC v. Mark Freeman, WIPO Case No. D2000-1080; Hewlett-Packard Company v. Marcel Wieland, NAF, Case No. FA0010000095852; Bloomberg L.P. v. Indidom, NAF, Case No. FA0101000096479 and Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Global Productions - Domain For Sale, WIPO Case No. D2000-1332.
Under these circumstances, the Complainant submits that the Respondent registered the domain names in dispute to intentionally attempt to attract, for commercial gain, Internet users to his sites by creating a likelihood of confusion with the Complainant’s SUTTON Trademarks as to source, sponsorship, affiliation, or endorsement.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements in order for a domain name to be cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Comments on the evidence:
Prior to engaging into the discussion, the Panel considers appropriate to comment on the high quality and substantial, clear and well presented evidence along with detailed support and reliance on earlier UDRP panel decisions which were of great assistance to this Panel.
A. Identical or Confusingly Similar
Complainant has provided ample evidence of the extensive use and promotion of an impressive family of Trademarks and some at least twenty-two related domain names incorporating the distinctive element “SUTTON.” By reason of the more than twenty (20) years of extensive use, high volume of revenues, thousands of sales person associates and visits to its websites, this Panel finds that the Trademarks have achieved a very high distinctive character in Canada where both the Complainant and the Respondent are located and that their use and promotion have generated substantial goodwill associated thereto. The Panel concludes that the Complainant has rights in the family of Trademarks.
There is no doubt that all the domain names in dispute are confusingly similar to the Trademarks of the Complainant in that each domain name incorporates the distinctive element “SUTTON” of the said Trademarks.
As the Complainant has well demonstrated to the satisfaction of this Panel with proper reliance on earlier UDRP decisions, the addition of descriptive, geographical terms or “.com” to the distinctive element SUTTON into the domain names in dispute does not take away the likelihood of confusion; to the contrary when one considers the diversity of such terms in the family Trademarks, a person would normally consider, as this Panel considers, that the domain names in dispute are part of the family of Trademarks and domain names of the Complainant.
The Panel finds that the domain names in dispute are confusingly similar to the Trademarks of the Complainant, in particular of the distinctive element SUTTON therein.
The criteria of Paragraph 4(a)(ii) has therefore been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks right or legitimate interest in the domain names in dispute by stating that the Respondent has never been known by the name “SUTTON” or the domain names in dispute and is not making any legitimate non-commercial or fair use of the domain names in dispute.
Furthermore, the Complainant has never given a license to nor in any way authorized the Respondent to make use of the Complainant’s Trademarks. There is no evidence that the Respondent has ever engaged is any legitimate business under the Complainant’s Trademarks other than as a salesperson. the Complainant has relied upon earlier panel decisions, which this Panel adopts, which held that in such capacity the Respondent has not acquired any rights, including the right to incorporate any of the Trademarks in registering the domain names in dispute.
While there is no evidence that The Respondent is operating websites under the domain names in dispute, it conveys a negative impression about the business and image of the Complainant to those Internet users who may try to visit these inoperative websites thinking quite naturally that they are part of or associated with those of the Complainant. It is certainly fair to conclude that the holding of the domain names in dispute may reduce the goodwill associated with the Complainant’s Trademarks.
The Panel concludes that the Respondent has not made any use of the domain names in dispute in connection with a bona fide offering of goods or services.
Accordingly, there is no evidence that the Respondent has any rights or legitimate interests in the domain names in dispute and the conditions for the second criteria have been fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(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 the 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 website 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 website or location or of a product or service on your website or location.”
It should be noted that the circumstances of bad faith are not limited to the above.
The Complainant contends that the domain names in dispute were registered and used in bad faith.
The Complainant contends that the Respondent has registered and used the domain names in dispute in bad faith. In the present instance, in view of the elaborate and well supported evidence and representations of the Complainant, the Panel does not have difficulty to conclude that the domain names in dispute were registered and used in bad faith as it appears from the few comments herein and the representations of the Complainant which the Panel finds convincing and adopts.
It is well established that the ownership of multiple domain names, whether it is as few as two or three or many more, which correspond to or incorporate only one trademark of a complainant, even more so in the present case where there are so many domain names in dispute which incorporate the distinctive element of at least 48 registered trademarks of the Complainant, constitute prima facie evidence of conduct falling within sub-paragraph 4(b) and paragraph 2(b) of the Policy and constitute a pattern of intentionally obstructive registrations.
Furthermore, as the Complainant has submitted with the support of numerous UDRP panel decisions, there are surrounding circumstances that justify such a conclusion. By way of illustration of such circumstances, there are the inactivity of the domain names and websites associated thereto, the knowledge in the present instance of the Respondent being a salesperson working within a franchisee of the Complainant who cannot be unaware of the Complainant’s Trademark rights, and finally the pattern of registering so many domain names that could be confusing and considered as part of the family of Trademarks and domain names of the Complainant and the registration of all during the same day which represent an objectionable pattern.
The Panel finds further support in the numerous UDRP decisions cited by the Complainant and which are identified under the Complainant’s contention summarized herein.
Therefore, the Panel finds that the domain names in dispute were registered and are being used in bad faith. Accordingly, the conditions for the third criteria have been met.
The Panel concludes that:
(a) the domain names <suttonagent.com>, <suttonalberta.com>, <suttonamerica.com>, <suttonbc.com>, <suttonburnaby.com>, <suttoncanada.com>, <suttonedmonton.com>, <suttonlondon.com>, <suttonmississauga.com>, <suttonmontreal.com>, <suttonnovascotia.com>, <suttonontario.com>, <suttonottawa.com>, <suttonpreferred.com>, <suttonrealtors.com>, <suttonto.com>, <suttontoronto.com>, <suttonusa.com>, <suttonvancouver.com> and <suttonvictoria.com> are confusingly similar to the Complainant’s Trademarks;
(b) the Respondent has no rights or legitimate interests in the domain names in dispute;
(c) the domain names in dispute have been registered and are being used in bad faith.
For all the foregoing reasons, in accordance with Paragraph 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <suttonagent.com>, <suttonalberta.com>, <suttonamerica.com>, <suttonbc.com>, <suttonburnaby.com>, <suttoncanada.com>, <suttonedmonton.com>, <suttonlondon.com>, <suttonmississauga.com>, <suttonmontreal.com>, <suttonnovascotia.com>, <suttonontario.com>, <suttonottawa.com>, <suttonpreferred.com>, <suttonrealtors.com>, <suttonto.com>, <suttontoronto.com>, <suttonusa.com>, <suttonvancouver.com> and <suttonvictoria.com> be transferred to the Complainant.
J. Nelson Landry
Dated: June 23, 2004