WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association of Realtors v. John Fothergill
Case No. D2010-1284
1. The Parties
Complainant is National Association of Realtors (“NAR”) of Chicago, Illinois, United States of America, represented by Partridge IP Law, P.C. of Chicago, Illinois, United States of America.
Respondent is John Fothergill of Naples and Fort Myers, Florida, United States of America.
2. The Domain Names and Registrar
The disputed domain names <listonrealtor.com> and <listitonrealtor.com> (the “Domain Names”) are registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2010, naming the privacy protection service Domains by Proxy, Inc. as Respondent. On August 2, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Names. On August 3, 2010, GoDaddy.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint (which, as noted above, referred only to the name of the privacy service). The Center sent an email communication to Complainant on August 4, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 4, 2010, changing the identity of Respondent to John Fothergill.
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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. The Response was filed with the Center on August 26, 2010.
Complainant and Respondent each submitted Supplemental Filings on September 3, 2010. In its discretion, the Panel has decided to consider these submissions because they addressed new factual assertions that could not have been anticipated in the Complaint.
The Center appointed David H. Bernstein as the sole panelist in this matter on September 6, 2010. 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
Complainant, the largest trade association in the United States, is comprised of over one million commercial and residential real estate professionals. Complainant adopted the term REALTOR in 1916 to identify real estate professionals who are members of the association and subscribe to the association’s Code of Ethics. Complainant owns several United States trademarks in connection with the operations of its association: REALTOR (Reg. No. 519,789; registered January 10, 1950), REALTORS (Reg. No. 515,200; registered September 13, 1949), the block “R” symbol (Reg. No. 1,137,081; registered June 17, 1980), REALTOR ASSOCIATE (Reg. No. 1,323,913; registered March 5, 1985), and REALTOR (trademark for electronically operated lock boxes) (Reg. No. 2,983,269; registered August 9, 2005). Complainant registered the domain name <realtor.com> on September 14, 1995.
Respondent is a real estate broker and member of NAR. Respondent registered the domain name <listitonrealtor.com> on or about January 15, 2009 and the domain name <listonrealtor.com> on July 22, 2009, approximately fourteen years after Complainant registered its website <realtor.com> and several decades after Complainant’s first use of the mark REALTOR. Respondent is using the Domain Names as a website to sell a $99 “For Sale By Owner” package allowing consumers to list their homes for sale directly on several websites, including <realtor.com>, without the use of a realtor and without the payment of a commission.
5. Parties’ Contentions
Complainant claims to have continuously used its registered trademark REALTOR since 1916 to refer to real estate professionals who are members of its association. Complainant also claims that it began operating a website at <realtor.com> in 1995.
Complainant alleges that the Domain Names are confusingly similar to its mark. Complainant asserts that the Domain Names incorporate Complainant’s trademark REALTOR in its entirety and have merely added the non-distinctive terms “list on” and “list it on,” which do nothing to distinguish the Domain Names from Complainant and its REALTOR mark.
Complainant also contends that Respondent lacks trademark or intellectual property rights or any other legitimate interests in the Domain Names. Complainant argues that Respondent, as a member of NAR, is contractually obligated to comply with NAR’s by-laws, which allow members a limited license to use the REALTOR mark in a domain name only if it is used in connection with a member’s name or the complete legal name of a member’s real estate firm. The member or firm name must appear in the domain name in full before the mark REALTOR (e.g., <johndoerealtor.com>). Complainant asserts that, at the time Complainant first notified Respondent of the dispute by letter in February 2009, neither “List On” nor “List It On” was the legal name of Respondent’s real estate firm. Rather, the legal name of Respondent’s firm was N Properties, Inc. Complainant alleges that Respondent’s registration of the Domain Names was therefore in violation of the limited license granted to him.
Finally, Complainant alleges that Respondent registered and used the Domain Names in bad faith for two reasons. First, Complainant contends that Respondent acted in bad faith because Respondent’s registration and use of the Domain Names is in violation of the NAR by-laws regarding trademark usage. Second, Complainant alleges that Respondent is acting in bad faith by using the Domain Names primarily for the purpose of misleading consumers to believe that they may directly advertise their homes on <realtor.com> without hiring a member of NAR, contrary to NAR’s policies. Specifically, Complainant alleges that by using the REALTOR marks, including the block “R” symbol, on the website, Respondent further misleads consumers to believe that NAR sponsors or approves such activity.
Respondent does not dispute that Complainant has rights in the mark REALTOR or that the Domain Names are identical or confusingly similar to Complainant’s mark. Rather, Respondent contends that he has rights or legitimate interests with respect to the Domain Names. Respondent agrees with Complainant that the NAR by-laws allow members to use the REALTOR mark in a domain name only if it is used in connection with a member’s name or the complete legal name of a member’s real estate firm. However, Respondent alleges that he is in compliance with this requirement, as the name of his Florida licensed real estate brokerage corporation is List On, Inc. and the State of Florida has issued him a real estate brokerage corporation as a d/b/a (doing business as), List It On. Therefore, Respondent asserts that he has a legitimate interest in the Domain Names.
6. Discussion and Findings
At the outset, the Panel notes that this is an atypical UDRP case. Unlike many cases that concern traditional allegations of cybersquatting, this case instead concerns a business dispute between two parties regarding breach of a license agreement. It is not within this Panel’s purview to determine whether Respondent is liable for breach of the license agreement as that question is more appropriately reserved for the courts. This does not mean, however, that the Panel should abdicate its responsibility to determine the more narrow question of whether Respondent has committed cybersquatting under the Policy, and to the extent the allegations of breach affect that determination, the Panel has no choice but to consider the parties’ allegations and the evidence they have presented.
Furthermore, as is the norm in such business disputes, the facts are hotly contested, which creates a challenge for the Panel given the expedited nature of the proceedings, the absence of any discovery or live testimony, and the limited record presented. In particular, the question of whether, at the time Respondent was first notified of the dispute by Complainant, the legal name of Respondent’s real estate firm was “List On” or “List It On” is a particularly close issue involving heavily disputed facts. However, just because the record is complex does not mean that the Panel should decline to review it. Rather, the Panel’s obligation when faced with such disputed facts is to make the best findings it can, by a preponderance of the evidence, based on the record submitted, with full knowledge that the parties have the right to take their dispute to court if they wish a full, judicial resolution. Bootie Brewing Company v. Deanna D. Ward and Grabebootie Inc., WIPO Case No. D2003-0185; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.
With these principles in mind, the Panel turns to the merits of this dispute. Pursuant to paragraph 4(a) of the Policy, to obtain transfer of the Domain Names, Complainant must prove by a preponderance of the evidence that:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights,
(ii) Respondent has no rights or legitimate interests with respect to the Domain Names, and
(iii) the Domain Names have been registered and are being used in bad faith.
For the reasons discussed below, although it is a close issue, the Panel concludes that Complainant has satisfied its burden of proving all three of these factors by a preponderance of the evidence. See The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
The first factor contains two elements: first, does Complainant have rights in a relevant mark and second, are the Domain Names identical or confusingly similar to that mark. The Panel concludes that Complainant has satisfied its burden on both parts of this factor.
Complainant has proven ownership of trademark rights in the REALTOR mark, and claims first use as of 1916. Complainant’s REALTOR mark is registered with the United States Patent and Trademark Office, which constitutes prima facie evidence of the validity of the mark. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147.
The Domain Names <listitonrealtor.com> and <listonrealtor.com> include Complainant’s trademark, REALTOR, in its entirety. That alone is sufficient to establish that the Domain Names are identical or confusingly similar to Complainant’s registered trademark. Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc., WIPO Case No. D2010-1141; F. Hoffmann-La Roche AG v. MEDISOURCE LTD, WIPO Case No. D2009-0990; Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277. The mere addition of the dictionary words “list,” “it” and “on” does not change the overall impression of the mark and does not render the Domain Names sufficiently different to avoid a finding that the Domain Names are confusingly similar to Complainant’s trademark. Orbital Sciences Corporation. v. Finseth International, WIPO Case No. D2007-1482; Microgaming Software Systems Limited v. Hosting Hosting, WIPO Case No. D2009-1423.
B. Rights or Legitimate Interests
It is a complainant’s burden to prove that a respondent lacks rights or legitimate interests in a disputed domain name. National Construction Rentals, Inc. v. Toilets.com, Inc., WIPO Case No. D2009-0147. Because it is difficult for a complainant to produce evidence in support of a negative assertion, the threshold for a complainant to prove a lack of rights or legitimate interests is low. A complainant need only make a prima facie showing on this element, at which point the burden shifts to the respondent to present evidence that it has some rights or legitimate interests in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1.1 The overall burden of proof, however, remains with the complainant. Id.
This case raises the difficult question of whether Respondent, a member of NAR, can legitimately use the REALTOR mark in his Domain Names. This question turns on (1) whether Respondent’s use of the Domain Names is legitimate under the terms of the license granted by Complainant and (2) if Respondent’s use is outside of the terms of the license, whether, relying on the factors set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, Respondent is using the Domain Names in connection with “a bona fide offering of goods or services” (see Policy, paragraph 4(c)(i)). While the facts present a close case, the Panel concludes that Complainant has demonstrated by a preponderance of the evidence that Respondent’s use of the Domain Names is outside of the terms of the license and does not otherwise satisfy the Oki Data standards for a “bona fide” resale of Complainant’s services.
There is no dispute among the parties that, under NAR’s by-laws, members of NAR, including Respondent, are granted a limited license to use the REALTOR mark in a domain name if the mark is used in connection with a member’s name or the complete legal name of a member’s real estate firm. The dispute between the parties arises as to whether, at the time the Complaint was filed, the complete legal name of Respondent’s real estate firm was “List On” and “List It On” such that the Domain Names were legitimate exercises of the limited contractual license granted to Respondent as a member of NAR.
After examining the evidence put forth by both parties on this issue, the Panel concludes that the preponderance of the evidence demonstrates that, at the time Respondent first received notice of the dispute, the legal name of Respondent’s real estate firm was N Properties, Inc. and as such, the Domain Names were not in compliance with the obligations of the NAR license. At the time Respondent was notified of the dispute, Respondent’s profile on the NAR website listed “N Properties Inc.” as his company name. See Exhibits to Response. Respondent did not change his company name on the NAR site to “List It On” until well after the Complaint was filed. See Exhibits to Respondent’s Reply. Further, Respondent did not file an Amendment to the Articles of Incorporation with the Florida Secretary of State, changing his company’s name from N Properties, Inc. to List On, Inc., until August 12, 2010, after Respondent received the Complaint. Finally, a printout of the website to which the Domain Names resolve at the time the Complaint was filed states several times that the service sold thereon is being offered by N Properties, Inc. and lists N Properties as the owner of the site. See exhibit G to Complaint. Respondent points to only one piece of evidence, a printout from “www.myfloridalicense.com” showing that in connection with a real estate corporation license granted May 3, 2004, the primary name used was N Properties Inc. and the DBA name used was Listitonrealtor.com. This evidence alone is insufficient to demonstrate that the full legal name of Respondent’s firm was “List It On” or “List On” at the time the Complaint was filed.
Even if Respondent had demonstrated by a preponderance of the evidence that it had changed its name to “List It On” prior to the instigation of this dispute, the Panel would still be inclined, on the evidence presented, to find that the name is not a legitimate interest for purposes of the Policy. Respondent’s conduct smacks of a bad faith intention to use the literal words of the NAR license to undermine the actual intent of the parties. Complainant’s license is designed to allow real estate professionals to publish websites that use their distinctive names along with the REALTOR designation, such as <johndoerealtor.com>. It does not appear to have been designed to allow NAR members to cleverly call their company by a descriptive name (such as “I’m The Top” ) and then use that name, in conjunction with the REALTOR mark, to create an attractive domain name (e.g., <imthetoprealtor.com>). The Panel divines this intent from NAR’s Membership Marks Manual, available online at ”www.realtor.org/letterlw.nsf/pages/mmmPartTwo”, which addresses improper uses of the REALTOR mark and states: “Never use descriptive words or phrases to modify the MARKS. This is explicitly prohibited by Article V, Section 7 of the Bylaws of the National Association.” The Manual goes on to apply these principals in the context of domain names: “The term REALTOR® may not be used with descriptive words or phrases. For example, Number1realtor.com, numberone-realtor.com, chicagorealtors.org or realtorproperties.com are all incorrect.” In light of these rules that govern Respondent’s license to use the REALTOR mark, the Panel concludes that the uses at issue in this proceeding are not legitimate uses sanctioned by the license.
Although the parties did not expressly address the separate issue of whether Respondent is using the Domain Names in connection with “a bona fide offering of goods or services,” based on the preponderance of the evidence submitted by the parties, Respondent’s conduct does not meet the Oki Data requirements for demonstrating that its resale of services is “bona fide.” In particular, under Oki Data, in order to be a “bona fide” offering, “[t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. Respondent’s website does not make clear his relationship with NAR and its website <realtor.com>. By offering a $99 “For Sale By Owner” package, which purports to allow consumers to list their homes for sale directly on <realtor.com> and several other websites, Respondent gives consumers the impression that it is appropriate to get their homes listed on <realtor.com> in this way. In fact, this scheme is directly contrary to NAR’s policies which permit only members of the association to post listings on its website, thereby requiring a homeowner to retain a member for a commission in order for its home to be listed on <realtor.com>. By using the REALTOR mark, the block “R” symbol, and the domain name <realtor.com> several times on its website, Respondent misrepresents his relationship to Complainant and wrongly suggests to consumers that Complainant endorses or approves the service he is offering.
In light of this evidence, the Panel finds that Complainant has demonstrated by a preponderance of the evidence that Respondent is not engaged in the bona fide sale of goods or services, nor does Respondent otherwise have rights or a legitimate interest in the Domain Names.
C. Registered and Used in Bad Faith
Complainant alleges that Respondent “uses the Infringing Domain Name[s] to attract, for commercial gain, Internet users to its website based on a likelihood of confusion with Complainant’s marks” by “misleading individuals to believe that they may directly advertise their homes on <realtor.com> without hiring a member of NAR.” See Policy, paragraph 4(b)(iv).
For the same reasons as discussed above, the Panel is persuaded by a preponderance of the evidence that Respondent had a bad faith intent in registering and using the Domain Names. The evidence discussed above supports the inference that Respondent registered the Domain Names to take advantage of the goodwill of the REALTOR mark and to confuse consumers into believing that the Domain Names and the services sold on Respondent’s website, which include direct listing on “www.realtor.com” in violation of Complainant’s policies, have some connection or affiliation with Complainant.
Complainant further alleges that Respondent acted in bad faith because he registered and used the Domain Names in contravention of the written license granted by Complainant. As discussed above, this Panel finds that, because “List It On” and “List On” were not the legal names of Respondent’s real estate firm at the time the Complaint was filed, and because Respondent’s scheme smacks of a bad faith intent to undermine the intention of the parties with an overly-literal application of the words of the license that disregards the restrictions contained in NAR’s Membership Marks Manual, Respondent acted in contravention of the NAR Manual and trademark license. Even though this is not one of the non-exhaustive enumerated bad faith grounds under the Policy at paragraph 4(b)(i-iv), paragraph 15(a) of the Rules gives the Panel the discretion to find additional grounds for bad faith registration and use. The Panel believes Respondent’s conduct in this instance warrants a bad faith finding. Dreamworks L.L.C. v. Carol Maleti, WIPO Case No. D2003-0548; see also Herbalife International of America, Inc. v. myherbalife.com, WIPO Case No. D2002-0101 (finding bad faith where registration was “contrary to [r]espondent’s obligations as an independent distributor of [c]omplainant’s products” and “in contravention of an undisputed agreement between the parties”).
For these reasons, the Panel holds that Complainant has proven, by a close preponderance of the evidence, that Respondent registered and is using the Domain Names in bad faith.
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 <listonrealtor.com> and <listitonrealtor.com> be transferred to Complainant.
David H. Bernstein
Dated: September 20, 2010
1 Although the WIPO Overview of WIPO Panel Views on Selected UDRP Questions is not binding precedent, it embodies a consensus of positions set forth in the opinions of several WIPO UDRP panelists during the first five years of the administration of the UDRP. Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277. As such, it is prudent for panelists to follow such a consensus (or the majority view) in order to promote consistency among UDRP decisions. Grundfos A/S v. Ian Puddick / Leakbusters LTD, WIPO Case No. D2009-0150.