WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Intero Franchise Services, Inc. v. Domains By Proxy, LLC
Case No. D2012-1890
1. The Parties
Complainant is Intero Franchise Services, Inc. of Cupertino, California, United States of America, represented internally.
Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, United States of America.
2. The Domain Name and Registrar
The disputed domain name <interorelocation.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 21, 2012. On September 24, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 25, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint1. The Center sent an email communication to Complainant on September 26, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on September 26, 2012.
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 October 2, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was October 22, 2012. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 31, 2012.
The Center appointed Sandra A. Sellers as the sole panelist in this matter on November 9, 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
Intero Real Estate Services, Inc. is an affiliate of Complainant Intero Franchise Services, Inc. (collectively “Intero”). Intero is a residential real estate brokerage business, with more than fifty licensed franchisees using “Intero” throughout the US and parts of Asia and Europe. Complainant owns various U.S. registered service marks for INTERO REAL ESTATE SERVICES, in both word and design form. The marks reflect first use in commerce of September 1, 2002. Complainant owns and operates a website at the domain name <interorealestate.com> for real estate services, including relocation services (“www.interorealestate.com/corporate_relocation”).
The disputed domain name was registered on January 30, 2012. Respondent is a private registration service, such that the true identity of the owner was shielded. The webpage indicates that the “webpage is parked for free, courtesy of GoDaddy”, the Registrar. The webpage contains links to real estate services that compete with Complainant. It also offers the domain name for sale for USD 6000.00.
5. Parties’ Contentions
Complainant asserts that it has rights in the INTERO mark. It contends that the disputed domain name is confusingly similar to Complainant’s mark because it consists of Complainant’s INTERO mark in its entirety, and that the only difference between Complainant’s mark and the disputed domain name is the addition of the common word “relocation”. Complainant further alleges that Respondent has no rights or legitimate interests in the disputed domain name, and that it registered and uses the disputed domain name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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
Complainant has provided real estate services since 2002. Complainant owns various U.S. trademark registrations containing the INTERO mark. Complainant has proven that it has rights in the INTERO mark.
The disputed domain name is confusingly similar to Complainant’s INTERO mark. It contains Complainant’s INTERO mark in its entirety. The only difference between Complainant’s mark and the disputed domain name is the addition of the common word “relocation”. Numerous previous UDRP decisions have found that the addition of a common word does not distinguish a disputed domain name from Complainant’s mark or preclude a finding of confusing similarity. See, e.g., Walmart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662.
Accordingly, the Panel finds that Complainant has rights in the INTERO mark and that the disputed domain name is confusingly similar to Complainant’s mark. Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
Because it is generally difficult for a complainant to prove the fact that a respondent does not have any rights or legitimate interests in a disputed domain name, previous UDRP panels have found it sufficient for a complainant to make a prima facie showing of its assertion where there has been no response.
Complainant has not authorized Respondent or anyone else to register and use the disputed domain name <interorelocation.com>. Respondent is not affiliated with or related to Complainant, nor is Respondent licensed or authorized to use the INTERO mark. The true owner of the disputed domain name has hidden its identity behind Respondent. On the evidence before the Panel, Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name.
The Panel is satisfied that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in the disputed domain name.
Respondent is in default, and has not provided any evidence in its own favor.
The Panel finds that the evidence in the record is sufficient to establish that Respondent has no rights or legitimate interests in the disputed domain name, and thus Complainant meets the second criterion of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that:
“for the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a 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 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 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 web site or location or of a product or service on your web site or location.”
This Panel infers that Respondent most likely knew of Complainant’s INTERO mark when Respondent registered the disputed domain name, since Complainant’s website contains the INTERO mark in its entirety and provides links to real estate services in direct competition with Complainant. Additionally, under 15 U.S.C. §1072, registration of the mark INTERO constitutes constructive notice of the mark. Therefore this Panel concludes that Respondent had legal, if not actual, notice of Complainant’s mark prior to registering the disputed domain name. The Panel finds that Respondent therefore registered the disputed domain name in bad faith.
The Panel finds that Respondent has engaged in bad faith behavior that implicates Paragraphs 4(b)(i), 4(b)(iii) and 4(b)(iv) of the Policy.
Additionally, the Panel finds that Respondent is offering the disputed domain name for sale for USD 6000.00, in violation of Paragraph 4(b)(i).
From the beginning of the Policy, many previous decisions have held that Respondent’s inactivity with respect to the domain name weighs in favor of finding bad faith, particularly where Respondent has no bona fide use for the disputed domain name and simply is precluding Complainant from using a domain name that corresponds to Complainant’s mark. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This case follows that line. Here, the Panel finds that the disputed domain name is being used in bad faith under Paragraph 4(b)(iii).
The Panel finds that Respondent also has used the disputed domain name in bad faith under the paragraph 4(b)(iv) of the Policy. Respondent’s website intentionally attracts Internet users for commercial gain by linking to other websites through which Complainant’s competitors sell similar goods and services. It has long been held that this type of click through revenue may violate the Policy. See, e.g., Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Further, “typosquatting” has consistently been found to constitute bad faith. See, e.g., Neuberger Berman Inc. v. Alfred Jacobsen, WIPO Case No. D2000-0323.
This Panel finds that Respondent has registered and used the disputed domain name in bad faith and that Complainant meets the third criterion of Paragraph 4(a) of the Policy.
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 <interorelocation.com> be transferred to the Complainant.
Sandra A. Sellers
Dated: November 11, 2012
1 The Registrar revealed the underlying Registrant of the disputed domain name, masked by Domains By Proxy, LLC to be Jim Matzen of San Jose, California.