WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association of Realtors v. Access Internet Marketing / Bill Macchio
Case No. D2014-1441
1. The Parties
Complainant is National Association of Realtors of Chicago, Illinois, United States of America ("US"), internally represented.
Respondent is Access Internet Marketing / Bill Macchio of Charleston, South Carolina, US.
2. The Domain Names and Registrar
The disputed domain names <beaufortrealtors.com>, <holdenbeachrealtors.com>, <milliondollarrealtors.com> and <southcarolinarealtors.net> (collectively, the "Disputed 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 August 21, 2014. On August 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On the same day, the Registrar transmitted by email to the Center its verification response confirming Respondent as the registrant and provided 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 Respondent of the Complaint, and the proceeding commenced on September 1, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on September 24, 2014.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on October 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, National Association of Realtors ("Complainant"), established in Chicago, Illinois on May 12, 1908, is currently one of the largest trade associations in the United States, representing over one million real estate professionals, 54 territorial associations, and more than 1,400 local associations.
In 1916, Complainant adopted the fanciful term "realtor" to identify real estate professionals who are members of Complainant and subscribe to its strict Code of Ethics. Complainant has used the REALTOR mark in connection with association membership and other products and services for nearly 100 years, licensing the use of REALTOR marks to its members. Non-members are not authorized or in any way allowed to use the REALTOR marks.
The marks REALTOR and REALTORS were first registered with the United States Patent and Trademark Office ("USPTO") on September 13, 1949 and January 10, 1950, respectively, under Registration Numbers 515200 and 519789. Complainant owns numerous other U.S. and worldwide trademark registrations for REALTOR, REALTORS, the REALTOR Logo, and other REALTOR-formative marks (collectively, the "REALTOR Marks").
Complainant previously sought and obtained transfer of domain names incorporating the REALTOR Marks under the Policy in the following matters: National Association of Realtors v. Simo Elbaz, WIPO Case No. D2005-1019; National Association of Realtors v. John Fothergill, WIPO Case No. D2010-1284; National Association of Realtors v. Hammerberg & Associates, Inc., WIPO Case No. D2012-0075; and National Association of REALTORS® v. Jeffrey Schermerhorn/ National Network LLC/ Tara Schermerhorn, WIPO Case No. D2013-2116.
Respondent, Access Internet Marketing ("Respondent"), is not a member of Complainant, is not affiliated with Complainant, and is not authorized or licensed to use the REALTOR Marks. Respondent registered the Disputed Domain Names which feature advertisements for and links to digital magazines regarding local real estate markets created and distributed by Respondent. Respondent is also the owner of the domain name <mediaservices1.com>, the official website for Media Services, Inc., which is described on its website as "an integrated print and digital publishing and marketing company that provides products and services communicating a wealth of information on homes, interiors and the business of real estate throughout the Atlantic Southeast states."
5. Parties' Contentions
Complainant contends as follows:
1. Respondent's Disputed Domain Names are confusingly similar to Complainant's REALTOR Marks because the Disputed Domain Names incorporate in their entirety and merely append descriptive wording thereto.
2. Respondent has no rights to or legitimate interests in the Disputed Domain Names because Respondent is not a member of Complainant and therefore not authorized to use Complainant's REALTOR Marks.
3. Respondent has registered and is using the Disputed Domain Names to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant's REALTOR Marks. These actions are in bad faith as Respondent falsely claims that the real estate agents listed on Respondent's websites are Complainant members and use the Disputed Domain Names to post pay-per-click links to third-party websites related to the real estate industry.
Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, Complainant must prove that:
(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant's Marks.
The Disputed Domain Names <beaufortrealtors.com>, <holdenbeachrealtors.com>, <milliondollarrealtors.com> and <southcarolinarealtors.net> all contain Complainant's REALTORS Mark in its entirety, coupled with descriptive or geographic terms.
UDRP panels have consistently concluded that a domain name's inclusion of a registered mark in its entirety results in generally confusing similarity for purposes of paragraph 4(a)(i) of the Policy. See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("[T]he fact that a Domain Name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks"); Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778 (<playboysportsbook.com> was found confusingly similar to the PLAYBOY mark); and Adaptive Molecular Technologies, Inc. v. Piscilla Woodward & Charles R, Thorton, d/b/a Machines & More, WIPO Case No. D2000-0006 (the distinctive features of the domain name were complainant's mark).
The mere addition of the terms "beaufort", "holdenbeach", "milliondollar", or "southcarolina" to the Disputed Domain Names does not change this finding since the Panel finds that the terms are not sufficient to distinguish the Disputed Domain Names from Complainant's registered trademarks.
To further support a finding that the Disputed Domain Names are confusingly similar to Complainant's Marks, Complainant submitted evidence of Respondent's rejected trademark application with the USPTO filed on April 26, 2007 for the trademark MILLIONDOLLARREALTORS.COM (U.S. App. No. 78872244). The USPTO refused Respondent's trademark application based on a likelihood of confusion with Complainant's REALTOR Mark. Although Respondent submitted arguments to the contrary, the USPTO maintained the refusal, and the application was abandoned.
The Panel finds that the first element of the Policy has been established here.
B. Rights or Legitimate Interests
The Panel concludes that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that making a showing under the second element often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010‑1762. Accordingly, Complainant may make out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Id. Upon such a showing, the burden of production shifts to Respondent to demonstrate its rights or legitimate interests in the disputed domain names. Id.
In this case the Panel finds that Complainant has made a prima facie showing that Respondent does not have rights or legitimate interests in the Disputed Domain Names within the meaning of paragraph 4(a)(ii) of the Policy.
This finding is based on the following, non-disputed, circumstances:
- Complainant has no relationship whatsoever with Respondent and has never authorized Respondent to use the REALTOR Marks in the Disputed Domain Names or any other domain name.
- There is no indication in the file that Respondent is known under any of the Disputed Domain Names.
- The Disputed Domain Names are primarily representative of Complainant's services as it incorporates Complainant's REALTOR Marks, provide pay-per-click links to third-party websites related to the real estate industry, and purports to list agents affiliated with Complainant. Hence, Respondent's use of the Disputed Domain Names appears to be merely intended to divert Internet users to Respondent's websites and cannot be considered a bona fide offering of goods and services.
Further, the Panel concludes that Respondent has not successfully demonstrated any rights or legitimate interests in the Disputed Domain Names. Paragraph 4(c) of the Policy gives a non-exhaustive list of circumstances that can be brought forward by Respondent in order to demonstrate its rights or legitimate interests. Such circumstances may be:
- use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute;
- an indication that the registrant has been commonly known by the domain name even if it has acquired no trademark rights; or
- legitimate noncommercial or fair use of the domain name without intent to divert consumers or to tarnish the trademark.
Respondent did not reply to Complainant's contentions. Therefore the only plausible reason, in the view of the Panel, for Respondent to register the Disputed Domain Names was to divert Internet users to Respondent's websites by implying an affiliation with or sponsorship by Complainant or that Complainant approves of and endorses Respondents websites and publications. See Ticketmaster Corp. vs. DiscoverNet, Inc., WIPO Case No. D2001-0252 (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from complainant's site to a competing website); Chip Merchant, Inc. v. Blue Star Electronics, d/b/a Memory Word, WIPO Case No. D2000-0474 (finding that Respondent's use of the disputed domain names is confusingly similar to complainant's mark, and respondent's use to sell competing goods was an illegitimate use and not a bona fide offering of goods). This is neither noncommercial nor fair use of the Disputed Domain Names.
For the foregoing reasons, the Panel concludes that the second element of the Policy has been satisfied.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by Complainant and that Respondent's bad faith registrations and use of the Disputed Domain Names have been proven.
The third element of the Policy requires that Complainant establish that each Disputed Domain Name has been registered and used in bad faith.
Paragraph 4(b) provides the following four (non-exclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a Disputed Domain Name:
(i) circumstances indicating that you [Respondent] have registered or you [Respondent] have acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark, or to a competitor of Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the Domain Name; or
(ii) you [Respondent] 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 [Respondent] have registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, you [Respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with 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 your location.
The Panel finds that at minimum the circumstance set out in paragraph 4(b)(iv) is fulfilled here. In the Panel's view there is sufficient evidence that leads to the finding that Respondent acquired the Disputed Domain Names primarily for the purpose of attracting, for commercial gain, Internet users to Respondent's websites or other online locations, by creating a likelihood of confusion with Complainant's REALTOR Marks as to the source, sponsorship, affiliation, or endorsement of Respondent's websites or services on said websites.
In the Panel's view, further proof of bad faith in this case is that Respondent has not responded to Complainant's Complaint.
The Panel finds that Complainant has satisfied the third element under 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 names <beaufortrealtors.com>, <holdenbeachrealtors.com>, <milliondollarrealtors.com> and <southcarolinarealtors.net> be transferred to Complainant.
Maxim H. Waldbaum
Date: October 31, 2014