WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
National Association of Realtors v. Domains By Proxy, LLC / Edouard Joseph, Prince Development LLC
Case No. D2017-0479
1. The Parties
The Complainant is National Association of Realtors of Chicago, Illinois, United States of America (“US”), internally represented.
The Respondent is Domains By Proxy, LLC of Scottsdale, Arizona, US / Edouard Joseph, Prince Development LLC of Boynton Beach, Florida, US, represented by ATO Law, US.
2. The Domain Name and Registrar
The disputed domain name <floridaboardofrealtors.org> (the “Domain Name”) 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 March 8, 2017. On March 8, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On the same date, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 9, 2017, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on March 10, 2017.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2017. The Response was filed with the Center on April 5, 2017. On April 19, 2017, the Center received an unsolicited Supplemental Filing from the Complainant. The Center acknowledged its receipt, and informed the Parties that it would be forwarded to the Panel, once appointed, who would have the discretion to accept or reject it. The Respondent sent an email to the Center on April 20, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on April 27, 2017. 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. Preliminary Issue: Supplemental Filing
With regard to the Complainant’s Supplemental Filing of April 19, 2017, paragraphs 10 and 12 of the Rules in effect grant the Panel sole discretion to determine the admissibility of supplemental filings.
The Complainant argued that its Supplemental Filing contained additional information it obtained based on the Respondent’s Response that had not been available at the time of filing the Complaint. The Respondent argued that the Supplemental Filing is an attempt to circumvent the rules by filing additional information in an untimely manner and thus should be dismissed, but raised no further new information in response. The Panel has determined to allow the Complaint to provide a reply to the assertions of the Respondent raised in the Response that the Complainant could not reasonably have anticipated at the time of filing. The Panel will thus accept the Complainant’s Supplemental Filing, but has not considered it necessary to give the Respondent any additional opportunity to reply. This finding is consistent with other UDRP decisions, see, e.g., Talal Abu-Ghazaleh International, Talal Abu Ghazaleh & Co., Abu Gazaleh Intellectual Property and Aldar Audit Bureau v. Fadi Mahassel, WIPO Case No. D2001-0907; Société des Technologies de l’Aluminium du Saguena Inc. v. Success Inc., WIPO Case No. D2008-0268; and Boutique Tristan & Iseut Inc. v. B & B, WIPO Case No. D2007-1816.
5. Factual Background
The Complainant is a trade association, representing over 1.2 million real estate professionals, 54 territorial associations, and more than 1,200 local associations. The Complainant owns trademark registrations for REALTOR (e.g., REALTOR, US Registration No. 0,515,200, registered September 13, 1949).
The date of the Domain Name registration was confirmed by the Registrar to be December 31, 2016.
The Panel conducted an independent search to determine that the Domain Name is currently active and resolves to the Respondent’s website “Florida Board of Realtors” that appears to promote finding realtors as well as job opportunities for realtors. The various links and invitation to register provide a phone number and office hours and appear to be set up to collect information.
Additional evidence was filed regarding solicitations made by the Respondent which asked for money as well as identification of possible criminal activity, which was disputed in the Response regarding the nature of the “mailers”.
6. Parties’ Contentions
The Complainant was established in 1908 and is the largest trade association representing over 1.2 million real estate professionals, 54 territorial associations and more than 1,200 local associations. “NAR strives to be the collective force influencing and shaping the real estate industry.” Membership in the Complainant’s organization provide a wide range of benefits and opportunities. The Complainant alleges that it coined the term “realtor” in 1916, and it has used the marks as a collective membership mark “to identify real estate professionals who are members of NAR and subscribe to its strict Code of Ethics” for nearly 100 years.
The Complainant also provided evidence that the Respondent is using the website affiliated with the Domain Name, together with other direct solicitations, for the unlawful purpose of obtaining money and private information regarding criminal activity, as well as other private “log in” details.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks REALTOR and REALTORS in respect of a broad range of realty services. The Domain Name is confusingly similar to the trademarks owned by the Complainant. The addition of “Florida board of” to the Complainant’s trademark, together with the generic Top-Level Domain (“gTLD”) “.org” does not prevent a finding of confusing similarity. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademark. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith, and that continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for competing goods and services. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent takes issue with the UDRP decisions cited by the Complainant and alleges that the current situation is distinguishable from those previous decisions.
To summarize the Response, the Respondent argues that the use of the term “realtor” is necessary and nominative fair use and the term is descriptive, and thus the Complainant has no rights in the name, and that the Domain Name is not confusingly similar to the trademarks owned by the Complainant. The Respondent contends that it does have rights or legitimate interests in using the Domain Name and that the Domain Name was registered and is being used in good faith for legitimate purposes. The Respondent further contends that there is no competition between the Complainant and the Respondent, especially with regard to activity limited to Florida, and that the Complainant’s Supplemental Filing (which includes information regarding the “mailings”) should not be allowed (as discussed above). The Response also refers to a claim that appears to be for the emotional distress for the investment it made and the incurring of legal fees that is causing it harm.
7. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for REALTOR, including some in stylized form, some in block letters with or without other textual portions and others with a design element, inter alia, US Registration No. 0,515,200 (registered on September 13, 1949), and US Registration No. 0,519,789 (registered on January 10, 1950). Even though not a prerequisite under the first element of the Policy, these rights precede the date of the Respondent’s obtaining of the Domain Name.
The Panel rejects the Respondent’s argument that the term “realtor” in this context has become a “dictionary” term and is thus not entitled to protection. The abovementioned trademark registrations provide prima facie evidence of the Complainant’s trademark rights, whose validity has not been contested in any credible formal manner by the Respondent. In any event, the scope of the Policy does not provide for a challenge of trademark validity per se, such matter falling within the purview of the respective trademark office or national courts.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Further, the Panel finds that the mere addition of the phrase “Florida board of” to the Complainant’s trademark in the Domain Name does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.” See also:
“The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the Domain Name.” See paragraph 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is identical or confusingly similar to the Complainant’s trademark, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that the burden of production shifts to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
The Panel notes the Respondent’s assertion that it has rights or legitimate interests to use the Domain Name falls essentially into four categories: (1) because the term “realtor” is generic; (2) because of nominative fair use; (3) because the Respondent is only operating in Florida (which is contradicted by the evidence); and (4) the Respondent and the Complainant are in different businesses.
Based on the available record, the Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Panel specifically rejects the Respondent’s argument that the use of the term “realtors” is necessary. The Panel is not persuaded that the Domain Name is being used for a legitimate competitive interest (and which also informs the third element of the Policy discussed further below). The Panel is not persuaded that the Respondent having a “different purpose and its desired place to operate is specifically focused in the state of Florida alone” provides the Respondent with rights or legitimate interests to use the Complainant’s widely-known trademark for similar goods and services under the Domain Name.
The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the Complainant’s trademark, and agrees in the particular context of this case with the Complainant’s argument and the finding in Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 in which the panel stated that: “in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by the Respondent”. Further, the Respondent is not an authorized “realtor” of the Complainant and has never had a business relationship with the Complainant. This was stated by the panel as a factor in the finding of a lack of rights or legitimate interests with regard to the respondent in Dr. Ing. h.c. F. Porsche AG v. Ron Anderson, WIPO Case No. D2004-0312.
Further to the Panel’s findings regarding bad faith below, the Panel finds that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel notes that this case provides an interesting challenge under this third element of the test, and it is here that the circumstances of the case as a whole were particularly persuasive in determining that the third element of the test was met. The Respondent raised what might have appeared as innocent descriptive use of the term “realtor”, which were immediately contradicted by the Respondent’s own statements. The Panel does not find the Respondent’s arguments sufficiently compelling, and the Panel finds the Complainant’s version of the nature of the unlawful solicitations more likely than the Respondent’s claim to innocent mailers to be true.
Given the distinctiveness of the Complainant’s trademark and reputation, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademark REALTOR and uses it for the purpose of misleading and diverting Internet traffic, as well as for the solicitation of money and damaging information in bad faith. Indeed, the Respondent makes it clear it was aware of the Complainant’s mark because it states: “Respondent purposely registered it in that manner to be sure of its descriptive nature, it was not registered the way how the complainant’s trademark ‘REALTORS’ was recorded all capitalized.” Although the Panel disagrees and rejects the Respondent’s legal conclusions about this point, the acknowledgment of the prior awareness is evident to the Panel.
The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant’s mark when it registered the Domain Name. The Panel agrees with the Complainant’s claims and finds that the Respondent has registered the Domain Name with knowledge of the Complainant’s trademark and that the continued use of the Domain Name is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046. It has been held in previous UDRP decisions that knowledge of a corresponding mark at the time of the domain name’s registration can suggest bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D’Estalvis i Pensions de Barcelona (“La Caixa”) v. Eric Adam, WIPO Case No. D2006-0464; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services, WIPO Case No. D2000-0177.
It is clear to the Panel that the Domain Name as well as the website are deliberate plays on the Complainant’s reputation trademark. The Panel finds that the Respondent’s registration and use of the Domain Name to direct to a website which advertises realtor services in competition with the Complainant is disruptive of the Complainant’s business and is further evidence of bad faith registration. This holding is consistent with the holding in The American Automobile Association, Inc. v. Wanjun Li, WIPO Case No. D2010-1481 (the respondent’s use of a confusingly similar domain name to advertise services of AAA’s competitors disrupted AAA’s business and constituted bad faith use and registration).
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant’s trademarks and services, the evidence of what appears to be the fraudulent solicitation of information and money, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under paragraph 4(a)(iii) 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 Domain Name, <floridaboardofrealtors.org>, be transferred to the Complainant.
Ellen B Shankman
Date: May 7, 2017