WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

F.M. Tarbell Co. dba Tarbell, Realtors v. Mark W. Lichtenberger aka Mark L

Case No. D2007-0843

 

1. The Parties

The Complainant is F.M. Tarbell Co. dba Tarbell, Realtors, United States of America, represented by Thelen Reid Brown Raysman & Steiner LLP, United States of America.

The Respondent is Mark W. Lichtenberger aka Mark L, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <octarbell.com>, <tarbellcontest.com>, <tarbellcorona.com>, <tarbellhb.com>, <tarbellirvine.com>, <tarbell-murrieta.com>, <tarbelloc.com>, <tarbellrealestates.com>, <tarbellre.com> and <tarbelltemecula.com> are registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2007. On June 12, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain names at issue. On June 12, 2007, Go Daddy Software 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”), 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 June 19, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was July 9, 2007. The Respondent did not submit any response. Accordingly, the Center issued a notification of the Respondent’s default on July 12, 2007.

The Center appointed Dennis A. Foster as the sole panelist in this matter on August 2, 2007. 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 has operated in the field of real estate and related activities for the better part of a century in the Southern California region of the United States of America. Beginning in 1964, those operations have been conducted under service marks which emphasize the name “Tarbell.” (e.g., TARBELL, REALTORS and TARBELL FINANCIAL SERVICE, INC.). The company and those marks are widely known in Southern California.

The Respondent, a former employee of the Complainant, registered the disputed domain names during the period between March 3, 2005 and July 6, 2005. He uses the names to guide Internet users to his website where they are presented with an opportunity to access his real estate services.

 

5. Parties’ Contentions

A. Complainant

- The Complainant was founded in 1926 and has provided real estate and associated services in the Southern California area of the United States of America since then.

- In conjunction with its business, the Complainant has used TARBELL, REALTORS as a service mark since at least 1964. In 2006, the Complainant obtained a United States of America service mark for TARBELL INSURANCE SERVICE, INC. (Registration No. 3156610, October 17, 2006). It also has an application pending for a similar registration of the mark TARBELL, REALTORS.

- To assist in the provision of its services, the Complainant registered the domain name <tarbell.com>.

- Through its long-time efforts, the Complainant has created substantial goodwill with respect to its services and service marks. Without doubt, the Complainant has developed common law rights in those marks.

- The disputed domain names are confusingly similar to the marks in which the Complainant has rights. All the names include “tarbell” which is the distinctive and dominant part of the Complainant’s marks. Moreover, the Respondent uses the disputed domain names to market real estate services in direct competition with the Complainant.

- The Respondent has no rights or legitimate interests in the disputed domain names. In addition to appropriating the Complainant mark, TARBELL, several of the names refer to cities or counties in which the Complainant does business. On the websites located at the names, the real estate services of the Respondent are offered, sometimes accompanied by a picture of the Respondent.

- Since the Respondent’s name is Mark Lichtenberger (or Mark L.), he is not commonly known as any of the disputed domain names.

- One of the disputed domain names <tarbellcontest.com> provides the Respondent with revenue through a pay-per-click search engine. Data is collected and furnished to various companies including through supplying services in direct competition with the Complainant.

- As a former employee of the Complainant who subsequently had his real estate license suspended, the Respondent was eminently aware of the Complainant and its marks, so the disputed domain names were clearly registered and are being used in bad faith. The names were registered shortly before or after the Respondent’s employment with the Complainant. The Complainant never consented to the Respondent’s use of the disputed domain names during or after his employment with the Complainant.

- The Respondent registered and is using the disputed domain names to create confusion in the minds of Internet users as to the source, sponsorship, affiliation or endorsement of the products and services offered at the websites found at those names. The Respondent is clearly using the names to market his own real estate services.

- In a recent UDRP ruling, the Respondent was stripped of six similar domain names in favor of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

Under paragraphs 4(a)(i-iii) of the Policy, the Complainant may prevail in this administrative proceeding and gain possession of the disputed domain names <octarbell.com> <tarbellcontest.com> <tarbellcorona.com> <tarbellhb.com> <tarbellirvine.com> <tarbell-murrieta.com> <tarbelloc.com> <tarbellrealestates.com> <tarbellre.com> and <tarbelltemecula.com> if the Complainant can prove the following:

- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

- The disputed domain name was registered and is being used by the Respondent in bad faith.

In this proceeding, the Panel notes that the Respondent filed no response to the Complainant’s contentions. It is thus reasonable for the Panel to proceed as though the Complainant’s contentions are true, unless contrary to the evidence presented or facts known by the Panel within the scope of its own experience. See Hyatt Corporation v. Sinichi Akiyama; NAF Case No. FA839408 (December 26, 2006); and Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).

A. Identical or Confusingly Similar

The Complainant offers as evidence with respect to its service mark rights the USPTO service mark registration of TARBELL INSURANCE SERVICE, INC. The Panel might find such a registration by itself sufficient to establish the Complainant’s rights in the primary and distinctive word in that mark, TARBELL. However, the Complainant has also supplied the Panel with much evidence, not contradicted by the Respondent, of the secondary meaning attached to its other mark, TARBELL, REALTORS, in the Southern California area in which the Respondent resides. That secondary meaning, developed over decades of substantial use in the field of real estate services, also yields the Complainant common law service mark rights sufficient to satisfy that threshold requirement of Policy paragraph 4(a)(i). In reaching such a conclusion, the Panel finds itself in concert with the learned panel that decided the case, F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger, WIPO Case No. D2007-0189 (May 2, 2007). See also Pilgrim Films and Television Inc v. Brandon Bator, NAF Case No. FA909831 (March 15, 2007) (finding that the complainant had established common law rights in its trademark “through continuous and extensive use of the mark in connection with its business”); and General Growth Properties, Inc. v. Baker Ballantine, WIPO Case No. D2005-0919 (November 14, 2005).

Having found that the Complainant has rights in service marks centering on the word “Tarbell”, it is fairly simple for the Panel to determine the confusing similarity between those marks and the disputed domain names. Each name has as its dominant and distinctive component the word “tarbell”. Some of the domain names at issue add geographical terms or abbreviations (i.e., “oc”, “corona”, “hb”, “irvine”, “murrieta” and “temecula”), others simple generic terms (i.e., “contest”, “realestates” and “re”). Moreover, the geographical references all relate to Southern California locations, and the generic terms to real estate (except the term, “contest”, which could cause confusion when combined with virtually any trademark), which only increases the amount of confusion with the Complainant’s marks. Numerous prior UDRP panels have found confusing similarity in cases involving such geographical or related additions to valid trademarks or service marks. See, for example, Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795 (November 29, 2004) (where the panel transferred the domain name <bridgestonegolf.com> after finding it confusingly similar to the trademark, BRIDGESTONE); and Honda Motor Company Limited v. LOKITA Enterprises, WIPO Case No. D2003-0507 (August 8, 2003) (in holding the domain name <hondaindia.com> to be confusingly similar to the trademark, HONDA, the panel said, “The addition of a geographical suffix, therefore, does not sufficiently alter the underlying mark to which it is added”).

Therefore, the Panel rules that the Complainant has proven that the disputed domain names are confusingly similar to a service mark in which it has rights.

B. Rights or Legitimate Interests

Though the Respondent was a former employee of the Complainant, it denies having given the Respondent any consent to use its trademarks. This denial, along with the Complainant having established its rights in those marks, is sufficient under the circumstances to set forth a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. It is therefore the Respondent’s burden to go forward to present evidence in rebuttal to this contention. See Aetna Inc. v. Peter Carrington a/k/a Party Night, Inc., NAF Case. No. 154527 (May 20, 2003) (where the panel opined, “When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy 4(a)(ii)”); and G.D. Searle v. Martin Mktg., NAF Case No. FA118277 (October 1, 2002) (where the panel stated, “Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent”).

Though the Respondent has chosen not to respond to the Complaint, the Panel will proceed on its own to examine whether his situation could possibly fall within the three criteria listed in paragraph 4(c) of the Policy for establishing rights or legitimate interests in disputed domain names. As to subparagraph 4(c)(ii), the Respondent fails because his name and/or business do not appear in the least similar to any of the disputed domain names and thus he could not fairly claim to be commonly known by any one of them. Furthermore, the Respondent’s use of the names to advertise his own or other competing real estate services, does not comport with the requirements of either subparagraphs 4(c)(i) or (iii). Such use is neither a “bona fide offering of goods or services” nor a “legitimate noncommercial or fair use” of the domain names. See Reed Elsevier Properties Inc. and Reed Elsevier Inc. v. Weekly Publishers, NAF Case No. FA151536 (May 5, 2003) (where the panel wrote, “Respondent’s use of the domain name for a competing website does not constitute a bona fide offering of goods or services pursuant to Policy 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy 4(c)(iii)”); and MBS Computers Ltd. v. Richard Workman aka Portable World Computers, NAF Case No. FA96632 (March 16, 2001).

In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant has asserted, without contradiction, that the Respondent was a former real estate agent employed with the Complainant. Thus, it is obvious to the Panel that the Respondent was well aware of the Complainant and its well-established service marks in the relevant Southern California region. The Respondent then proceeded to register domain names which incorporated the most distinctive element of the Complainant’s marks for websites designed to steer consumers either to the Respondent’s real estate services or to services of other advertisers who compete directly with the Complainant. The Panel can think of few clearer examples of bad faith registration and use of disputed domain names. The Respondent’s actions constitute an attempt both to disrupt the Complainant’s business by drawing off potential customers (evidence of bad faith per subparagraph 4(b)(iii) of the Policy) and to attract Internet users for commercial gain to the Respondent’s website through the likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the same (evidence of bad faith per subparagraph 4(b)(iv) of the Policy). See Tarbell, supra; Homer TLC, Inc. v. Web Master, NAF Case No. FA904244 (March 13, 2007) (finding that a website that offers links to the complainant’s competitors is likely to disrupt its business and constitutes bad faith pursuant to Policy paragraph 4(b)(iii)); and Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313 (June 21, 2005) (finding that trading on the value established by the complainant in its marks to attract Internet users to sell the complainant’s and competing products was bad faith registration and use as defined in Policy paragraph 4(b)(iv)).

Thus, as explained above, the Panel finds that the Complainant has demonstrated that the Respondent registered and is using the disputed domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <octarbell.com>, <tarbellcontest.com>, <tarbellcorona.com>, <tarbellhb.com>, <tarbellirvine.com>, <tarbell-murrieta.com>, <tarbelloc.com>, <tarbellrealestates.com>, <tarbellre.com>, and <tarbelltemecula.com>, be transferred to the Complainant.


Dennis A. Foster
Sole Panelist

Dated: August 16, 2007