WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
The National Association of REALTORS® v. Jeffrey Schermerhorn/ National Network LLC/ Tara Schermerhorn
Case No. D2013-2116
1. The Parties
Complainant is the National Association of REALTORS® (“Complainant”) of Chicago, Illinois, United States of America, represented internally.
Respondents are Jeffrey Schermerhorn/ National Network LLC/ Tara Schermerhorn (“Respondents”) of Sarasota, Florida, United States of America, self-represented.
2. The Domain Names and Registrar
The disputed domain names, <realtoreview.info>, <realtoreview.net>, <realtoreview.org>, <realtorpreview.com>, <realtorpreview.info>, <realtorpreview.net>, <realtorranking.net>, <realtorreportcard.net>, <realtorreport.info>, <realtorreport.mobi>, <realtorreport.org>, <realtorreview.mobi>, <realtorreview.org>, <realtorverify.info>, <realtorverify.mobi> and <realtorverify.net> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On December 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On December 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that Respondents are listed as the registrants 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 Respondents of the Complaint, and the proceedings commenced on December 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 2, 2014. The Response was filed with the Center on January 2, 2014.
The Center appointed Robert Badgley as the sole panelist in this matter on January 14, 2014. 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 is a trade association whose members are real estate professionals. Founded more than a century ago, Complainant adopted the term REALTOR in 1916 to identify those real estate professionals who belong to the Complainant association and who adhere to Complainant’s Code of Ethics. Complainant is one of the largest trade associations in the United States, with more than one million members.
The marks REALTORS and REALTOR were registered with the United Stated Patent and Trademark Office (“USPTO”) in 1949 and 1950, respectively, to identify and distinguish Complainant’s members and services. Complainant also operates a website accessible at “www.realtor.org”.
Complainant grants its members a limited license to use the REALTOR mark only in conjunction with the member’s name or the legal name of the member’s real estate firm.
Respondents, who are not members of Complainant’s trade association, registered the Domain Name <realtorreview.org> in 2009, and registered the other Domain Names at issue at various times between October 16, 2012 and January 31, 2013. All of the Domain Names redirect to <realtorreview.org>.
Respondents operate a website at the Domain Names entitled REALTOR REVIEW®, the home page of which states in part as follows:
Realtor Review® is the Official Review, verification and complete resource site for Consumers and Licensed Real Estate Professionals. This service was designed to help consumer [sic] learn more about whom they are really dealing with, and how their Real Estate Professional has been with past customers, such as yourself. The Real Estate market has been under public scrutiny for years, even more now since the onset of the largest housing bubble ever.
One of the most important things to know is that all Real Estate Agents or Brokers MUST be LICENSED. … With Realtor Review® you can search license statuses.
The website also invites “Real Estate Professionals” to create an account to demonstrate their experience and reliability, invites “Homebuyers” to find qualified and trustworthy real estate professionals, and offers additional resources such as housing news and “helpful tools.”
On February 1, 2013, Respondents filed an application with the USPTO to register as a mark “Realtor Review”. Complainant filed a letter of protest with the USPTO. On May 22, 2013, the USPTO issued a non-final letter refusing to register “Realtor Review”, citing likelihood of confusion with Complainant’s REALTOR mark as the basis for its refusal. The USPTO examiner also observed that “the applicant’s [Respondent’s] services and the registrant’s [Complainant’s] services are related in that they all pertain to services offered by real estate professionals. The applicant’s website and the registrant’s website both allow users to obtain information about, and to locate, real estate professionals.”
On November 22, 2013, Respondents filed a response to the USPTO’s initial refusal, but the record does not contain this response.
Complainant sent Respondents two cease-and-desist letters to Respondent in May 2013, but Respondents made no response thereto.
5. Parties’ Contentions
Complainant argues that each of Respondents’ Domain Names at issue here is confusingly similar to one or more of Complainant’s marks, that Respondents have no rights or legitimate interests in connection with the Domain Names, and that Respondents’ registration and use of the Domain Names are in bad faith within the meaning of the Policy. Complainant also notes that, despite the lack of USPTO registration (and, indeed, the USPTO’s refusal decision), Respondent continues to mislead consumers by affixing the symbol ® after its references to “Realtor Review” on its website. Complainant seeks a transfer of all 16 of the Domain Names at issue.
Respondents assert that they own trademark rights in “Realtor Review” until such time as all appeals of the adverse USPTO initial decision have been exhausted. Respondents also claim that the term “realtor” has become generic and, as such, Complainant will soon be losing any trademark rights in the term “realtor”. According to Respondents, Complainant is merely seeking to bully Respondents through use of the Policy.
Respondents also make a number of disparaging comments about Complainant which, in the Panel’s view, has no relevance to the matter at hand and is not worth recounting here.
6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names in order to secure their transfer:
(i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) Respondents have no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel concludes that Complainant has rights, through longstanding registration and use, in the mark REALTOR. Respondent asserts that the mark has become generic and hence Complainant’s rights in the REALTOR mark will not exist in the near future, but it is not for this Panel to help Respondent realize this prediction. Rather, at present, there is no basis in this record to gainsay the existing registrations of Complainant’s marks, as recognized to this day by the USPTO.
As respects the question whether the Domain Names are confusingly similar to the REALTOR mark, the Panel finds that each of the 16 Domain Names is confusingly similar to the REALTOR mark. Thirteen of the Domain Names fully incorporate the mark REALTOR as the dominant element of the Domain Name, while adding descriptive words such as “review,” “preview,” “ranking,” “report,” “report card,” and “verify.”
The Panel finds that the addition of the foregoing descriptive words to the dominant word REALTOR does not significantly mitigate the confusing similarity between the REALTOR mark and these 13 Domain Names.
With respect to the remaining three Domain Names, <realtoreview.info>, <realtoreview.net>, and <realtoreview.org>, Respondents argue that the word REALTOR is not included in those Domain Names at all. Rather, Respondents assert, the second-level domains should be understood as “real to review.” As such, Respondents argue, these Domain Names cannot be considered as confusingly similar to the REALTOR mark.
The Panel disagrees with Respondents on this score. First, although there is no such word as “eview,” the string “realtoreview” appears to be a fairly likely misspelling of, or typographical error for “realtor review”. This is especially likely given the fact that the last letter of “realotr” and the first letter of “review” are the same letter – r. Further, there is a clear aural similarity between the string “realtoreview” and the term “realtor review”.
Moreover, while Respondents assert that the second-level domain should be understood as “real to review,” Respondents do not actually assert that this was their intended meaning. Indeed, given the other Domain Names registered by Respondents, and given the name of Respondents’ website – “Realtor Review” – it seems highly implausible to assert that these Domain Names should be understood as “real to review.” This argument, when coupled with other conduct such as the misleading use of the symbol ® at their website, undermines Respondents’ credibility on this and other topics.
The Panel concludes that Policy paragraph 4(a)(i) is satisfied with respect to each of the 16 Domain Names.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in a domain name, among other ways, by showing any of the following circumstances:
(i) before any notice to you [the respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [the respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [the respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
It is undisputed that Respondents are not members of Complainant’s trade association and have not been licensed by Complainant to register or use the Domain Names. Respondents are using the Domain Names to attract Internet users to their website, where the visitor is given the false impression that Respondents hold a registered trademark for “Realtor Review”. According to the USPTO, the services offered by Respondent are “related [to those offered by Complainant under the REALTOR mark] in that they all pertain to services offered by real estate professionals.” Under these circumstances, the Panel cannot conclude that Respondents have a right or legitimate interest in respect of these Domain Names. There is no intrinsic problem with Respondents offering as a service information about real estate professionals, but Respondents overstep legitimacy by creating the misleading impression that they are somehow affiliated with, or sponsored or endorsed by, Complainant. Respondents’ use of the longstanding mark REALTOR in their name “Realtor Review” – especially with the false symbol ® on their website – to identify and distinguish services which, in the USPTO’s view, are similar to those offered by Complainant, is not, in the Panel’s view, legitimate in the circumstances.
The Panel concludes that Policy paragraph 4(a)(ii) is satisfied with respect to each of the 16 Domain Names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of a domain name in “bad faith” :
(i) circumstances indicating that the respondent has registered or has 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 its documented out of pocket costs directly related to the Domain Name; or
(ii) that respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s 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 the Respondent’s website or location or of a product or service on the respondent’s website or location.
There is little reason to suppose that Respondents were unaware of Complainant and its marks when they registered the Domain Names, given the subject matter of Respondents’ website. Respondents do not deny, and could not plausibly deny, that they were unaware of Complainant’s REALTOR mark at the time they registered the Domain Names. Nor do Respondents’ deny Complainant’s allegation that they are using the Domain Names “for commercial gain.”
For many of the same reasons why the Panel found that Respondents lack a legitimate interest in respect of the Domain Names, the Panel also finds Respondent to be in bad faith within the meaning of Policy paragraph 4(b)(iv). Respondents’ misleading use of the symbol ® on their website, coupled with the similarity of the services offered by Complainant and Respondents, compels the conclusion on this record that Respondents have intentionally attempted to attract, for commercial gain, Internet users to their website by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with Complainant and its REALTOR mark.
The Panel concludes that Policy paragraph 4(a)(iii) is satisfied with respect to each of the 16 Domain Names.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <realtoreview.info>, <realtoreview.net>, <realtoreview.org>, <realtorpreview.com>, <realtorpreview.info>, <realtorpreview.net>, <realtorranking.net>, <realtorreportcard.net>, <realtorreport.info>, <realtorreport.mobi>, <realtorreport.org>, <realtorreview.mobi>, <realtorreview.org>, <realtorverify.info>, <realtorverify.mobi> and <realtorverify.net> be transferred to Complainant.
Robert A. Badgley
Date: January 26, 2014