WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
John L. Scott, Inc. v. Apex Financial LLC
Case No. D2010-1659
1. The Parties
Complainant is John L. Scott, Inc of Issaquah, Washington, United States of America (“U.S.A.”), represented by Graham & Dunn, PC, U.S.A.
Respondent is Apex Financial LLC of Issaquah, Washington, U.S.A.
2. The Domain Name and Registrar
The disputed domain name <johnlscotteastside.com> is registered with GoDaddy.com, Inc. (“GoDaddy”)
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on October 1, 2010. On October 1, 2010, the Center transmitted to GoDaddy a request for registrar verification in connection with the disputed domain name. On October 1, 2010, GoDaddy provided its verification response confirming that Respondent is listed as the registrant, and providing contact details and other information pertinent to the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 26, 2010.
The Center appointed Debra J. Stanek as the sole panelist in this matter on November 2, 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 owns United States federal trademark registrations the mark JOHN L. SCOTT for various real estate brokerage and related services. It began using the mark as early as 1931, obtained the earliest registration in 1992, and registered and began using the <johnlscott.com> domain name in 1995 and 1996, respectively.
In June 2010, Respondent registered the disputed domain name <johnlscotteastside.com>. Currently, the disputed domain name does not resolve to an active web site.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant provides real estate brokerage services to sellers and buyers in Washington and Oregon.
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 earliest of these registrations, for the mark JOHN L. SCOTT, was registered in 1992; another registration, issued in 2003, claims a date of first use in commerce of 1948. Complainant has used JOHN L. SCOTT REAL ESTATE as its company name and as a trademark since 1931.
Since 1996, Complainant has operated a web site at “www.johnlscott.com” through which it offers real estate listing information and access to third party real estate services.
Complainant also claims common law trademark rights in the mark JOHN L. SCOTT by virtue of its use of the mark in connection with real estate brokerage services and franchise services. Since 1931, Complainant has expended millions of dollars and many years developing, marketing and advertising the JOHN L. SCOTT trademark, developing consumer demand and good will.
The domain name <johnlscotteastside.com> is confusingly similar to Complainant’s trademark JOHN L. SCOTT because it contains the mark in its entirety while referring to the “eastside” of Lake Washington, a common Seattle-area term for the geographic area where Complainant has done business for 70 years. Adding “eastside” does not in any way avoid a likelihood of confusion.
2. Rights or Legitimate Interests
Respondent is not commonly known as John L. Scott and has not been licensed by Complainant to register or use the JOHN L. SCOTT trademark or the domain name. Respondent is in no way connected with Complainant.
There is no indication that Respondent is using the domain name in connection with any bona fide offering of goods and services. The domain name is not being used for an active web site.
Respondent’s registration of the domain name strongly suggests that Respondent intends to use the domain name solely to profit from traffic consisting chiefly of persons who wish to communicate with or find information about JOHN L SCOTT in the “eastside” of Lake Washington.
The absence of any meaningful content on the web site associated with the domain name further underscores Respondent’s lack of legitimate business interest.
There is no evidence that Respondent is making legitimate noncommercial or fair use of the domain name, without intent for commercial gain.
In July and August of 2010, Complainant contacted representatives of Respondent to object to its use of the domain name and ask that it be discontinued. Subsequently, in a September, 2010 telephone conversation, a representative of Respondent indicated that Respondent refused to cease use of the domain name. From that refusal, one can infer that Respondent has no independent legitimate interest in the domain name.
3. Registered and Used in Bad Faith
Respondent knew of Complainant’s services at the time it registered the disputed domain name on June 24, 2010 because there is no reason for Respondent to select and register the domain name unless it knew of Complainant and its services, which are well known in the Seattle-area real estate market. The domain name consists of an obvious reference to the JOHN L. SCOTT trademark in the “eastside” of the Seattle area. This is typical cybersquatting.
Further, the term “eastside” has no significance in any legitimate field of commerce.
It is well established that the mere passive holding or “parking” of a domain name can evidence bad faith.
If Respondent should subsequently create content for its web site, any apparent “legitimate interest” indicated by that content would be pretextual, having occurred after Complainant’s initial correspondence informing Respondent of its well-established trademark rights in the JOHN L. SCOTT mark.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, Complainant must prove, as to the disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which Complainant has rights.
(ii) Respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
The primary consequence of Respondent’s failure to respond is that it has not made any argument or offered any evidence described in paragraph 4(c) of the Policy, such as using (or preparing to use) the disputed domain name before the dispute, being known by the domain name, or making legitimate noncommercial or fair use of the domain name, that might support a finding that Respondent has rights or legitimate interests in the domain name. Nor has Respondent provided any evidence on the issue of bad faith.
A. Identical or Confusingly Similar
Complainant has established its rights in the mark JOHN L. SCOTT by virtue of the evidence of its United States federal trademark registrations.1
The domain name is not identical to Complainant’s marks. Complainant asserts that the disputed domain name is confusingly similar because it includes Complainant’s entire mark followed by the term “eastside.” Complainant asserts that “eastside” is a term commonly used to refer to the area of Seattle, Washington, east of Lake Washington, where Complainant has done business for many years.2
The Panel agrees that, as a general matter, a domain name is likely to be deemed confusingly similar to a mark if it incorporates the mark or a variation of the mark. Regardless of whether “eastside” has the specific meaning ascribed to it in the Complaint, the Panel agrees that “east side” clearly has a geographic connotation and the addition of that geographic designation at the end of the domain name does nothing to effectively differentiate or distinguish the domain name from Complainant’s mark, which remains the dominant portion of the domain name (the presence or absence of spaces and the addition of the generic top-level domain “.com” is not relevant for purposes of this comparison).
The Panel finds the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.1 (once complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(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; or
(ii) you (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 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.
The Panel finds that Complainant has made a prima facie showing as to the examples set out in paragraph 4(c) of the Policy.
It does not appear that Respondent has engaged in – or could under the circumstances engage in – any legitimate use of the domain name. There is no reason to believe, from the WhoIs record or otherwise, that Respondent is or could be known by the domain name. It does not appear that Respondent is making a legitimate noncommercial or fair use of the domain name.
C. Registered and Used in Bad Faith
Complainant must also establish that the disputed domain name was registered and is being used in bad faith. The Policy itself sets out four sets of circumstances, evidence of which may establish bad faith, (see Policy, paragraph 4(b)(i)-(iv)):
(1) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(2) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(3) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(4) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [respondent’s] web site or location (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in its marks predate Respondent’s registration of the disputed domain name. Given the proximity of Complainant and Respondent, the Panel believes that it is most probable that Respondent had actual knowledge of Complainant’s trademark rights at the time the domain name was registered.
Had it responded to the Complaint, Respondent might have been able to present evidence or make an argument that its registration of the domain name was not in bad faith. However, in the absence of any response, the Panel draws an adverse inference on this point, and finds, under these circumstances, that Complainant has established that Respondent has registered and is using the domain name in bad faith.3
For all 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, <johnlscotteastside.com> be transferred to Complainant.
Debra J. Stanek
Dated: November 4, 2010
1 Although Complainant also alleges rights in an unregistered mark, it has provided no evidence regarding length of use and amount of sales, the nature and extent of its advertising, consumer surveys, or media recognition that would establish trademark rights in the mark. See, e.g., WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.7 (setting out consensus view as requiring a complainant asserting rights in unregistered trademark rights to prove that it is a “distinctive identifier” that is associated with complainant or its goods and services).
2 This bare assertion is supported only by the certification of Complainant’s counsel. As a general matter, the Panel gives little or no weight to unsupported statements by a party’s representative as to factual matters that would not, in ordinary circumstances, be within the representative’s personal knowledge, and that are easily established by documentary evidence.
3 Having concluded that Complainant has established that the domain name was registered in bad faith, under the circumstances of this case, the Panel views the non-use or “passive holding” of the domain name as sufficient to establish bad faith “use”, satisfying paragraph 4(a)(iii) of the Policy, which requires that the domain name at issue “has been registered and is being used in bad faith.” See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.