WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Reece & Nichols Realtors, Inc. v. Texas International Property Associates
Case No. D2008-0494
1. The Parties
The Complainant is Reece & Nichols Realtors, Inc., Leawood, Kansas, United States of America, represented by Polsinelli Shalton Flanigan Suelthaus PC, United States of America.
The Respondent is Texas International Property Associates, Dallas, Texas, United States of America, represented by Law Office of Gary Wayne Tucker, United States of America.
2. The Domain Names and Registrars
Ten Domain Names are disputed:
Each of the Domain Names is registered with Compana, LLC d/b/a BudgetNames.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 31, 2008. On April 1, 2008, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 3, 2008, the Registrar 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 April 17, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was May 7, 2008. The Response was filed with the Center on May 7, 2008.
The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 14, 2008. 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 Reece & Nichols Realtors, Inc. is a Kansas corporation with its principal place of business in Leawood, Kansas. The Complainant provides real estate brokerage, agency, and consulting services; relocation services; rental of residential and commercial properties; rental property management services; online real estate property searching services; mortgage services; title services; and related insurance services. Its market is chiefly the Kansas City, Missouri metropolitan area and adjacent parts of the states of Kansas and Missouri. Its website at “www.reeceandnichols.com” (the “Complainant’s website”) characterizes the Complainant as “The Kansas City Area’s #1 Real Estate Company”, and it receives more than one million visits per month. Evidence in the record indicates that the Complainant is involved in approximately 50% of all home sales in the Kansas City, Missouri metropolitan area, realizing revenues of more than US $100 million in 2007.
The Complainant was formed in December 2001 by the merger of J.D. Reece Realtors and J.C. Nichols Residential Real Estate. The Complainant owns the following registered service marks in the United States of America:
U.S. Reg. No.
First Use in Commerce
REECE & NICHOLS (design plus letters)
Mar. 28, 2006
Jan. 1, 2002
REECE & NICHOLS (standard character mark)
Apr. 11, 2006
Jan. 1, 2002
REECE & NICHOLS (colored design plus letters)
Aug. 22, 2006
Jan. 1, 2002
In addition, the Complainant claims common-law trademark rights in REECE NICHOLS and REECE AND NICHOLS since January 1, 2002.
In preparation for the merger, the Complainant’s predecessors registered the domain names <reeceandnichols.com> and <reecenichols.com> on May 15, 2001. The former currently resolves to the Complainant’s website, while the latter appears to be inoperative. Between October 27, 2004 and March 15, 2005, the Complainant registered additional domain names with variations of its name, including <reece-and-nichols.org>, <reece-and-nichols.net>, <eeceandnichols.com>, <reeeandnichols.com>, <reeceandnichol.net>, and <reeceadnichols.com>, as a precaution against other parties registering domain names similar to the Complainant’s marks. None of these currently redirects to the Complainant’s website or otherwise resolves to an active website.
The Respondent Texas International Property Associates lists an address in Dallas, Texas in the Response and in the Registrar’s WHOIS database. The Response provides no other information about the Respondent as an entity, and the online database operated by the Texas Comptroller of Public Accounts does not list a firm by this name in its franchise tax database.
The Response describes the Respondent’s business as follows:
“Respondent is the registrant of thousands of domain names, which consist of electronically registered generic words, such as <coolwritings.com>, <topairguns.com>, <indianloves.com>, <dailychampion.com>, <mastermasonstore.com>, and <juicymiami.com> in English, or <aeropuertosdelmundo.com>, <espanol2.com>, and <puertoricorecetas.com> in Spanish, typos of such generic terms as <bankratae.com>, <violns.com>, <topdownlod.com> and <georgeousredhead.com> as well as proper names such as <georgeiscool.com>, <adriansucks.com>, <nataliesucks.com>, and <joe4real.com>.”
Several of the Respondent’s thousands of domain names have provoked UDRP complaints or trademark lawsuits, as discussed further below.
The Respondent registered the Domain Names at issue in this proceeding on various dates between April 9, 2005 and December 31, 2005. The Domain Names resolve to essentially identical landing pages with third-party advertising and pop-up advertising. Each landing page is headed with the words, “Welcome to” preceding the Domain Name. Underneath the welcome, in the case of all but one of the Domain Names, is the phrase, “For resources and information on Kansas City Homes and Real estate”.
The landing pages display “Related Searches” links. Most of the listed topics are related to Kansas City and real estate, such as “Kansas City Homes”, “Real Estate”, “Kansas City mortgage”, “Relocation”, and “Realtor”. Some of the topics, such as “Hamburger Goulash Recipes”, have no apparent connection to Kansas City real estate. A website visitor choosing any of these topical links is presented with a page of “Sponsored Results”. These are links to third-party websites featuring advertising or information concerning various goods, services, and business opportunities, including websites operated by real estate brokers and agents who evidently compete with the Complainant in the Kansas City area (such as Kansas and Missouri agents of Coldwell Banker and Century 21), as well as broader real estate websites such as “www.realtor.com” that carry listings on behalf of numerous brokers and agents. The pop-up advertisements represent a wide range of unrelated products and services such as computer screensavers and vocational training.
The Domain Name <reecesandnichols.com> resolves to a similar landing page, but with the caption “For resources and information on Reece and Nichols”. It displays much more varied topical links and resulting “Sponsored Results” pages, but these also include websites of real estate agents, as well as portals for local business searches including links to competing real estate agents and brokers.
The landing pages to which the Domain Names resolve do not identify the website operator in any way, and the Respondent’s name does not appear on any of the landing pages. There are no “about us” or “legal terms” pages, nor is there a copyright or trademark notice.
The Respondent states that the Domain Names are used “to provide a web portal which provides users with a search function as well as ads provided through the Google Adsense program”. The Respondent asserts that “the links in question are provided pursuant to Google’s terms and are triggered by search requests entered by computer users. Furthermore, Respondent has no control over what terms advertisers bid on at Google and what terms appear on its website”.
The Complainant reports, without contradiction, that the Complainant sent the Respondent a cease-and-desist letter on December 28, 2007 and, at the Respondent’s request, provided further information about its trademark claims on January 28, 2008. The Respondent replied on January 30, 2008 that it had forwarded this information to its legal counsel. Despite additional communications from the Complainant, the Respondent did not reply substantively until filing the Response in this proceeding.
5. Parties’ Contentions
The Complainant asserts that the Domain Names are all confusingly similar to its registered REESE & NICHOLS marks and similar common-law marks. The Complainant argues that the Respondent is not making legitimate use of the Domain Names in connection with a bona fide commercial offering, but instead has intentionally targeted the Complainant’s marks to divert Internet users for commercial gain.
The Complainant contends that this conduct is also evidence of bad faith, and cites as further support the Respondent’s “pattern of cybersquatting and typosquatting” and its registration of multiple variations of the Complainant’s marks.
The Respondent does not dispute the confusing similarity between the Domain Names and the Complainant’s marks. It argues that it is not responsible for the advertisements automatically displayed by Google and that anyone has the right to use “a generic domain name to provide information about the genus” and derive advertising revenues from such activity.
The Respondent denies prior knowledge of the Complainant and its marks and rejects the argument that it had constructive notice of the Complainant’s registered marks. The Respondent contends that bad faith cannot be established in the absence of evidence that the Respondent targeted the marks, both in registering and using the Domain Names.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to divest a Respondent of a disputed domain name, a Complainant must demonstrate each of the following:
(i) the 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Under paragraph 15(a) of the Rules,
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A. Identical or Confusingly Similar
The Respondent has chosen not to contest the first element of the Complaint, but it is still incumbent on the Panel to determine whether this element has been established.
The Complainant indisputably has rights in three registered service marks on which its Complaint is grounded. United States Registration No. 3079087 is for the standard character mark REECE & NICHOLS. The other two registrations shown in the table above are for design marks in which the name REECE & NICHOLS is the prominent feature, with “REECE” and “NICHOLS” in a particular type font and the ampersand enclosed in a box.
In addition, the Complainant claims common-law trademark rights in REECE NICHOLS and REECE AND NICHOLS since January 1, 2002, based on “its and its customers’ use” and the registration of corresponding domain names. However, the Complainant does not support this claim with evidence of advertising, labeling, signage, or other use. The existence of a domain name is not itself sufficient to support an assertion of common-law trademark rights, because a domain name normally functions as an address, not a brand. See, e.g., Infinity Surfboards Inc. v. Ethan Akins, WIPO Case No. D2007-0177. Thus, the claimed common-law marks will be disregarded for purposes of this proceeding.
The registered marks are comprised of family names, not dictionary words. Each of the Domain Names includes both of the distinctive elements of the REECE & NICHOLS marks, the names “REECE” and “NICHOLS”, or a slight misspelling of those elements. The transposition of two letters, the addition of an “s”, the omission of the letter “e” or “c”, or the replacement of “o” with “i” – these minor changes in the various Domain Names do not result in names that differ substantially in appearance or overall impression from the REECE & NICHOLS marks. Moreover, they are meaningless misspellings, so they cannot be distinguished as connoting something different from the mark. The omission of the ampersand or the conjunction “and” in some of the Domain Names is insufficient to distinguish them from the Complainant’s mark in their overall impression. The substitution of the word “and” for the ampersand is also not distinctive, because the ampersand is not used in URLs (see AT&T Corp v. rnetworld, WIPO Case No. D2006-0569) and in English the ampersand symbol found in the Complainant’s registered marks represents the word “and” and is pronounced the same as the word “and”. (As both the Complainant and the Respondent are located in the United States of America, and the websites of both are in English, it is appropriate to compare the Domain Names and the trademarks exclusively with reference to the English language.)
The last of the listed Domain Names uses “and” instead of the ampersand found in the registered marks but also adds “www” (without a period) at the beginning of the Domain Name. Because “www” is an expected part of a website address, its inclusion in the Domain Name itself does not avoid confusion between the distinctive portion of the Domain Name and the Complainant’s identical mark. See Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. Moniker Privacy Services / MSA, Inc., WIPO Case No. D2007-1743; Crédit Industriel et Commercial v. Domain Drop S.A., WIPO Case No. D2007-0666.
Thus, the Panel finds that each of the Domain Names is confusingly similar to the Complainant’s REECE & NICHOLS marks.
B. Rights or Legitimate Interests
It is undisputed that the Respondent was not authorized to use the Complainant’s marks. This establishes the Complainant’s prima facie case on this element of the Complaint, and the burden shifts to the Respondent to produce evidence of its rights or legitimate interests under paragraph 4(c) of the Policy. See Admiral Insurance Services Limited v. Mr. Adam Dicker, WIPO Case No. D2005-0241; Cassava Enterprises Limited, Cassava Enterprises (Gibraltar) Limited v. Victor Chandler International Limited, WIPO Case No. D2004-0753.
The Policy, paragraph 4(c), provides a non-exhaustive list of circumstances in which a respondent could demonstrate rights or legitimate interests in a contested domain name. The Respondent relies on the first of these:
“(i) before any notice to you 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”.
Before notice of the dispute, the Respondent used each of the Domain Names for a landing page with third-party advertising links. The Respondent argues that this represents a legitimate commercial “use of a generic domain name to provide information about the genus” (see Admiral Insurance Services, supra). The Respondent cites other decisions similarly affirming that a generic or dictionary word, a descriptive phrase, or a meaningless string of characters may legitimately be registered and used in connection with an advertising portal, at least absent evidence that a trademark was knowingly targeted. See, e.g., Shirmax Retail Ltd. v. CES Marketing, Inc., e-Resolution Case No. AF-0104: “Where the domain name and trademark in question are generic—and in particular where they comprise no more than a single, short, common term—the rights/interests inquiry is more likely to favor the domain name owner.”
The domain name at issue in Admiral Insurance was <elephant.com>, and in Shirmax it was <thyme.com>. By contrast, the Domain Names at issue in the current proceeding are not generic terms, dictionary words, descriptive phrases, or random strings of characters. They are, instead, close approximations of a distinctive trademark comprised of two particular family names. The Respondent does not explain why these Domain Names were chosen, and it does not demonstrate that they are, in fact, “generic” terms as claimed.
The Panel concludes, therefore, that the Respondent has not established rights or legitimate interests in any of the Domain Names.
C. Registered and Used in Bad Faith
The Policy, paragraph 4(b), gives non-exhaustive illustrations of bad-faith registration and use, including the following:
“(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 website or location or of a product or service on your website or location.”
The facts presented in this proceeding are consistent with the circumstances described in paragraph 4(b)(iv). As noted above in connection with the first element of the Complaint, each of the Domain Names appears to represent a very slight variation on the Complainant’s REECE & NICHOLS mark, which would have the effect of misleading careless Internet users and diverting them to the Respondent’s landing pages, filled with “sponsored” advertising links. The Respondent does not deny that these landing pages generate revenue for the Respondent. Indeed, that is the value proposition advertised by the Google AdSense service employed by the Respondent: “Google AdSense matches ads to your site’s content, and you earn money whenever your visitors click on them.” (See “https://www.google.com/adsense/www/en_US/adsense_casestudy.html?sourceid=aso&subid=ww-en-ha-adsense_lptest_casestdy&medium=sem”.)
On its face, each of the Domain Names appears to have been designed to take advantage of the careless typist seeking information about the Complainant. Typists commonly transpose adjacent letters in a word or name, and the erroneous entry of “i” for “o” (or vice versa) may result from the fact that those keys are adjacent on the QWERTY keyboard that is almost universally used in the United States of America. The Domain Name <wwwreeceandnichols.com> would similarly take advantage of the typist who neglects to enter a period after the World Wide Web address prefix “www”. Thus, all ten of the Domain Names have all the characteristics of “typosquatting”, “the intentional registration and use of a domain name that is a common misspelling or predictable mistyping of a distinctive mark” (see Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517, and cases cited therein).
The Respondent denies prior knowledge of the Complainant’s mark, but it offers no alternative explanation as to why it chose to register ten quite similar Domain Names over a period of some nine months in 2005. They are not “common words” as the Respondent claims. The Respondent has not mentioned any other firm or product or place named “Reece and Nichols”, for example. Nor has it demonstrated that this combination of family names (or any of the misspelled variations thereof) is a generic term representing, for example, a class or type of goods, services, processes, or activities. The Respondent had opportunities to explain its choice of Domain Names, and it has not done so.
The Respondent points out that it is located in Texas, while the Complainant is best known in the Kansas City metropolitan area. But the record shows that the Complainant is the largest real estate firm in this major metropolitan area, and by the time the Respondent registered the Domain Names in 2005, the Complainant had been operating as REECE & NICHOLS and using the REECE & NICHOLS mark for more than three years. It is not necessary to presume constructive notice of the Complainant’s applications for trademark registration to conceive that the Respondent became aware of the Complainant’s mark. The Respondent’s conduct in registering ten close approximations of the distinctive mark seems inexplicable without positing such awareness.
Moreover, the Respondent, by its own admission, registers thousands of domain names. It has a history of registering names similar to those of marks used by companies outside of its native Texas. See, e.g., Associated Bank Corp. v. Texas International Property Associates, WIPO Case No. D2007-0334 (ordering transfer of <associtedbank.com>, based on the mark of a Wisconsin bank); Gaetano, Inv. d/b/a Lisa Curran Swim v. Texas International Property Associates, WIPO Case No. D2007-1428 (ordering transfer of domain names representing misspellings of the trademark of a New Jersey swimwear company); Asian World of Martial Arts v. Texas International Property Associates, WIPO Case No. D2007-1415 (ordering transfer of domain names confusingly similar to the mark of a Pennsylvania martial arts clothing and equipment company). Thus, it is hardly implausible that the Respondent registered the Domain Names at issue here to take advantage of the mark of a Kansas City real estate company.
The Domain Names are not generic, and the Complainant’s mark consists of a particular combination of family names. The Complainant is a major real estate company, and its mark was reasonably well established by the time the Domain Names were registered. The Respondent has offered no reason of its own for selecting the Domain Names. The Panel concludes, therefore, that it is more probable that the Respondent selected the Domain Names to target the Complainant’s mark than that the Respondent randomly selected ten nearly identical Domain Names.
As for its subsequent use of the Domain Names, the Respondent denies responsibility for the content of the landing pages to which the Domain Names resolve, suggesting that this is entirely the product of Google’s AdSense search-engine-based ad servers. The Respondent cites UDRP decisions finding no bad faith per se in using domain names exclusively for such automated advertising purposes (see, e.g., The Landmark Group v. Digimedia L.P., NAF Claim No. FA 285459), even if such automation sometimes results in displaying a link to the trademark holder itself or one of its competitors (see, e.g., Experimental Aircraft Association (EAA) v. EAA.COM, NAF Claim No. FA 206309).
But the cases cited by the Respondent concern generic domain names, with ad servers generally displaying results relevant to the genus. In the much-cited decision in The Landmark Group, for example, the panel held that, “as long as the domain names have been registered because of their attraction as dictionary words, and not because of their value as trademarks, this business model is permitted under the Policy”. The panel in EAA referred to the “brief appearance of aviation links on respondent’s websites” as a result of a “pay-per-click search engine provider”.
Here, by contrast, the Domain Names are not dictionary words or generic phrases, and a predominant and persistent focus of the Respondent’s landing pages is real estate in the Complainant’s sectoral and geographic markets. Nine of the ten landing pages even bear the apparently permanent caption, “For resources and information on Kansas City Homes and Real estate”. This does not represent good-faith use of generic domain names, with only occasional, lamentable references to the Complainant and its competitors.
Even if the advertising links served up to visitors on the landing pages associated with the Domain Names are automated, the Respondent remains responsible for the use of the Domain Names, and the Respondent knowingly profits from that use. Paragraph 2 of the Policy, “Your Representations”, is repeated in the registration agreement of ICANN-approved registrars, including the Registrar of these Domain Names:
“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that . . . (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
In another proceeding decided in 2007 involving the same Respondent, Fry’s Electronics Inc. v. Texas International Property Associates, WIPO Case No. D2007-0343, in which the Respondent consented to the transfer of the domain name, the current Panelist noted the frequency with which this Respondent has been named in UDRP complaints:
“The Panel notes that the Respondent has been the subject of several Policy complaints this year and has resolved at least one of them, in addition to the current proceeding, by consenting to transfer. See, e.g., Bond & Co. Jewelers, Inc. v. Texas International Property Associates, NAF Claim No. FA0703000937650 (transfer ordered); American Airlines, Inc. v. Texas International Property Associates, NAF Claim No. FA0702000914854 (transfer ordered); Wigwam Mills, Inc. v. Texas International Property Associates, NAF Claim No. FA0701000903891 (transfer denied); Genzyme Corporation v. Texas International Property Associates, NAF Claim No. FA0702000921807 (transfer ordered by consent). The frequency of these disputes suggests to the Panel that the Respondent would be well advised to review its practices in registering and using domain names.”
It does not appear that the Respondent has taken this advice. The panel in Asian World of Martial Arts, supra, cited more than two dozen UDRP decisions ordering the transfer of domain names registered and used in bad faith by the same Respondent and referred to the Respondent as “a sophisticated party in the PPC [pay-per-click] landing page business and an experienced Respondent in UDRP proceedings”. The Respondent has not lost every UDRP proceeding in which it was named, but it has lost most of them, and it has avoided decisions in others by agreeing to transfer the disputed domain names. Despite its protestations, the Respondent continues to register and use domain names that are clearly not simply “generic” terms and misspellings of generic terms. It has proved itself careless at best, and opportunistic at worst, with respect to the trademark rights of others. (Its non-responsiveness to communications from the Complainant in this instance is consistent with such a posture.) The Panel finds that the Respondent’s well-documented pattern of typosquatting and similar abuses lends further support to the inference of probable bad faith in the present instance.
The Panel concludes that the Complainant has established the third element of the Complaint.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the following Domain Names be transferred to the Complainant:
W. Scott Blackmer
Dated: May 23, 2008