World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

John L. Scott, Inc. v. Burak Ergin

Case No. D2012-0059

1. The Parties

The Complainant is John L. Scott, Inc. of Issaquah, Washington, United States of America, represented by Graham & Dunn, PC, United States of America.

The Respondent is Burak Ergin, of Manavgat, Antalya, Turkey.

2. The Domain Name and Registrar

The disputed domain name <johnlscott.org> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 14, 2012. On January 16, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 16, 2012, GoDaddy.com, LLC 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” 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 the Respondent of the Complaint, and the proceedings commenced on January 18, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2012.

The Center appointed Stéphane Lemarchand as the sole panelist in this matter on February 14, 2012. 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 is a real estate brokerage company doing business in the United States.

The Complainant owns several U.S. trademark registrations for marks consisting of JOHN L. SCOTT or the name "John L. Scott" with other terms, such as "portfolio" for a variety of real estate services. The mark JOHN L. SCOTT was first registered in 1992; another registration, issued in 2003, claims a date of first use in 1931 and a date of first use in commerce in 1948.

The Complainant operates a website at "www.johnlscott.com" through which it offers real estate listing information and access to third party real estate services.

The Respondent registered the disputed domain name <johnlscott.org> on November 19, 2011.

The disputed domain name resolves to a website featuring sponsored listings and advertising links related to real estate.

Before instituting this proceeding, the Complainant sent a demand letter to the Respondent seeking the transfer of the disputed domain name. The Respondent requested USD 1,500 for the sale of the disputed domain name and claimed that filing a complaint with the Center could take "months to finalize" and amount to a cost of USD 4,000.

5. Parties’ Contentions

A. Complainant

The Complainant contends to be the owner of several US trademark registrations for the word “John L. Scott” for real estate-related services. According to the Complainant, its first use of the word “John L. Scott” is dated September 7, 1931 and its first use in commerce, January 1, 1948. The Complainant contends that it has been operated a website at “www.johnlscott.com” since 1996.

The Complainant claims that the disputed domain name is identical and confusingly similar to its trademark JOHN L. SCOTT because it contains the mark in its entirety, with the only difference being the addition of top-level domain ".org".

The Complainant also states that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent is not commonly known as “John L. Scott”, nor is licensed by the Complainant to register or use the JOHN L. SCOTT trademark or the disputed domain name.

Finally, the Complainant contends that the disputed domain name has been registered and is being used in bad faith. The Complainant states that at the time of the registration, the Respondent had knowledge of the Complainant's service sold in association with the trademark JOHN L. SCOTT since there is no reason to register the disputed domain name without knowing that the Complainant and its services exist. The Complainant believes that the Respondent acquired the disputed 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 (…), for valuable consideration in excess of [registrant’s] documented out-of-pocket costs directly related to the domain name" as in response to the Complainant’s letter of December 9, 2011, the Respondent requested USD 1,500 for the sale of the disputed domain name and claimed that filing a complaint with the Center could take "months to finalize" and amount to a cost of USD 4,000.

The Complainant requests the transfer of the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

i. The disputed domain name 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 disputed domain name; and

iii. The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel considers that the Complainant has provided sufficient evidence that it is the owner of several JOHN L. SCOTT registered trademarks in the United States.

The Panel finds that the disputed domain name is confusingly similar to the trademark under which the Complainant sells its services since it incorporates the entirety of the JOHN L. SCOTT trademark. The only difference between the Complainant's trademark and the disputed domain name is the addition of the top-level domain ".org"; however, as it is well established, the addition of such kind of suffix is an irrelevant distinction which does not change the likelihood for confusion and must be excluded from consideration as being a generic or functional component of a domain name (Belo Corp. v. George Latimer, WIPO Case No. D2002-0329).

Consequently, pursuant to paragraph 4(a)(i) of the Policy, the Panel considers that the Complainant has proven that the disputed domain name is confusingly similar to its registered trademark.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name and, as stated above, the Respondent did not provide any information to the Panel asserting any rights or legitimate interests it may have in the disputed domain name.

It results from the Complaint that there is no connection between the Respondent and the Complainant or its business.

Paragraph 4(c) of the Policy lists a number of circumstances which can be taken into consideration to demonstrate a respondent's rights or legitimate interests in a domain name. However, there is no evidence before the Panel that any of the situations described in paragraph 4(c) of the Policy apply to the present case.

Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

Accordingly, the Complainant has proven the second element required by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the fact that “John L. Scott” are not words and that the Respondent is not known under such name, combined with the fact that the Complainant has been using its trademark in relation to real estate for over fifty years and operating a website under the said name for more than fifteen years, in this Panel’s view, it is unlikely that the Respondent was not aware of the Complainant's trademark when registering the disputed domain name.

In addition, given the particular circumstances of this case that are:

- the disputed domain name resolves to a website featuring sponsored listings and advertising links related to real estate while the Complainant operates a real estate brokerage service;

- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name;

- the Respondent has offered to sell the disputed domain name to the Complainant before the proceedings for USD 1,500;

- the Respondent tried to discourage the Complainant to initiate an administrative proceedings before the Center, under the argument that it would take months and amount to a cost of USD 4,000; and

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

it appears that the Respondent acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the Complainant, who is the owner of the trademark, or to a competitor of the Complainant, for valuable consideration. In any event, in the alternative, in this Panel’s view, the Respondent intended to capture and profit from click-through revenues based on traffic of web searchers intending to use the Complainant's website and as such registered the disputed domain name to derive commercial value from the Complainant’s trademarks by way of attracting Internet traffic to the Respondent’s website.

In light of the above, the Panel finds that the disputed domain name was registered and is being used in bad faith.

Accordingly, the Complainant has proven the third element required by paragraph 4(a)(iii) of the Policy.

7. Decision

For 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, <johnlscott.org>, be transferred to the Complainant.

Stéphane Lemarchand
Sole Panelist
Dated: February 28, 2012

 

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