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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Inman Group, LLC v. Contact Privacy Inc. Customer 0148713779 / Gary Guerrero

Case No. D2019-1521

1. The Parties

The Complainant is Inman Group, LLC, United States of America (“United States”), represented by Davis Wright Tremaine LLP, United States.

The Respondent is Contact Privacy Inc. Customer 0148713779, Canada / Gary Guerrero, United States.

2. The Domain Name and Registrar

The disputed domain name <inmanconnect.com> (the “Disputed Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 29, 2019. On July 1, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 4, 2019, 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 amended Complaint on July 9, 2019.

The Center verified that the Complaint, together with the amended 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 July 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2019.

The Center appointed Lynda M. Braun as the sole panelist in this matter on August 7, 2019. 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 is a leading source of real estate industry information that has been operating since 1996. Real estate industry professionals from around the world visit the website created by the Complainant at “www.inman.com” for the latest news and information relating to the real estate industry. In the month of May 2019 alone, the website received over 960,000 unique visitors, which generated nearly 2 million page views. The Complainant has spent millions of dollars in sales and promotional activities and as a result has achieved public recognition as a source of quality real estate-related services. The Complainant prominently features the name “inman” on its website.

The Complainant has been organizing and conducting real estate conferences since 1997. These week-long events draw thousands of attendees and are held all over the United States in major cities such as New York, Las Vegas, and San Francisco and are recognized as important events for real estate industry professionals.

The Complainant is the owner of valid and subsisting federal trademark registrations, including, but not limited to, the following marks:

INMAN CONNECT, United States Registration No. 5,690,216, in international classes 35 and 41, registered on March 5, 2019, with its first use in commerce on March 26, 2015; INMAN NEWS, United States Registration No. 4,072,157 in international class 41, registered on December 13, 2011, with its first use in commerce on April 4, 1991; INMAN SELECT, United States Registration No. 4,768,768, in international class 41, registered on July 7, 2015, with its first use in commerce on November 15, 2014; CONNECT, United States Registration No. 5,690,218, in international class 35, registered on March 5, 2019, with its first use in commerce on March 18, 2009; REAL ESTATE CONNECT, United States Registration No. 3,692,146 in international classes 35 and 41, registered on October 6, 2009, with its first use in commerce on April 4, 1997; LUXURY CONNECT, United States Registration No. 4,767,716, in international class 41, registered on July 7, 2015, with its first use in commerce on September 5, 2014; and INMAN DISCONNECT, United States Registration No. 5,690,219, in international class 35, registered on March 5, 2019, with its first use in commerce on August 7, 2017.1 The foregoing trademarks will hereinafter collectively be referred to as the “INMAN Marks”.

The Disputed Domain Name was registered by the Respondent on May 29, 2013. The Disputed Domain Name resolves to a website at “www.inmanconnect.com” that has links to the Complainant’s official website displaying the INMAN CONNECT Marks. When one clicks on the “About Us” section, there is a description of the Respondent’s services that replicates the information from the Complainant’s website. Moreover, the section entitled “Inman 101” found under the “Awards” section on the homepage redirects to the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

The following are the Complainant’s contentions:

- The Disputed Domain Name is confusingly similar to the Complainant’s trademarks.

- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

- The Disputed Domain Name was registered and is being used in bad faith.

- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4 of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order for the Complainant to prevail and have the Disputed Domain Name transferred to the Complainant, the Complainant must prove the following (Policy, paragraph 4(a)):

(i) the Disputed 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 Disputed Domain Name; and

(iii) the Disputed Domain Name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

This element consists of two parts: first, does the Complainant have rights in a relevant trademark and, second, is the Disputed Domain Name identical or confusingly similar to that trademark.

The Complainant has established rights in the INMAN Marks. The Complainant began using some of those marks in commerce as early as 1991. The Complainant did not register some of the other INMAN Marks until after the Respondent registered the Disputed Domain Name, although those marks were previously used as unregistered marks. As stated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), at section 1.1.1, “[t]he term “trademark or service mark” as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks”.

To establish unregistered trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. See WIPO Overview 3.0, section 1.3. The Panel finds that the Complainant’s INMAN Marks have become distinctive identifiers associated with the Complainant’s services because the Complainant has been promoting its services throughout the United States under the INMAN and CONNECT names since 1996, it has advertised extensively under those names, its services are recognized by real estate professionals, it has adopted the names as its company and business names, it has registered the domain name using the term “inman”, and it spends large sums of money on advertising and promoting its annual real estate conferences. See Sant’Andrea S.p.A. v. Andy Picken, WIPO Case No. D2009-0517. Thus, the Panel finds that the Complainant has established registered and unregistered trademark rights for purposes of the UDRP.

Moreover, the Disputed Domain Name consists of the INMAN CONNECT trademark in its entirety followed by the generic Top-Level Domain (“gTLD”) “.com”. The addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. Thus, the Disputed Domain Name is identical to a mark in which the Complainant has rights.

Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.

B. Rights or Legitimate Interests

Under the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.

In this case, the Panel finds that the Complainant has made out a prima facie case. In particular, the Respondent has not submitted any arguments or evidence to rebut the Complainant’s prima facie case and there is no evidence in the record that the Respondent is in any way associated with the Complainant. Furthermore, the Complainant has not authorized, licensed or otherwise permitted the Respondent to use its INMAN Marks. The Respondent does not run any business under the name “Inman Connect” nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name.

Finally, where a respondent has registered and is using a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services. In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.

Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.

C. Registered and Used in Bad Faith

The Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith registration and use of the Disputed Domain Name pursuant to paragraph 4(a)(iii) of the Policy for the reasons set forth below.

The INMAN NEWS mark was registered 2 years before the Disputed Domain Name. For completeness, where a respondent’s registration of a domain name predates a complainant’s trademark registration, panels may not find bad faith on the part of the respondent. See WIPO Overview 3.0, section 3.8.1. However, certain exceptions apply to this rule. For example, the Panel may find bad faith under the Policy when, as here, the Respondent registered the Disputed Domain Name in contemplation of the reputation and goodwill that it knew the Complainant would develop and because the Complainant attained significant media attention in connection with its prominent annual real estate conferences. See id., section 3.8.2. Thus, the Panel concludes that with respect to the INMAN CONNECT mark the Respondent has acted in bad faith.

Second, the Panel finds that the Respondent used the Disputed Domain Name in bad faith by attempting to attract for commercial gain Internet users to the Respondent’s website or other online location by creating a likelihood of confusion with the Complainant’s INMAN Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent’s registration and use of the Disputed Domain Name to resolve to a website that replicated parts of the Complainant’s official website indicates that such registration and use was done for the specific purpose of trading on the name and reputation of the Complainant and its well-known INMAN Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain” and “[t]hat purpose is a violation of the Policy, as well as U.S. Trademark Law”).

Finally, the registration of a domain name that is confusingly similar to a well-known registered trademark by an entity that has no relationship to that mark suggests bad faith registration and use. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163 (use of a name connected with such a well-known service and product by someone with no connection to the service and product suggests opportunistic bad faith). Based on the circumstances here, the Respondent registered and used the Disputed Domain Name in bad faith in an attempt to create a likelihood of confusion with the INMAN Marks.

Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.

7. Decision

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 Name <inmanconnect.com> be transferred to the Complainant.

Lynda M. Braun
Sole Panelist
Date: August 16, 2019

1 The Complainant uses a family of INMAN trademarks in connection with its real estate-related information services, including INMAN, INMAN NEWS, and INMAN SELECT, among others; the Complainant uses a family of CONNECT trademarks in connection with its real estate conferences, including INMAN CONNECT, CONNECT, REAL ESTATE CONNECT, and LUXURY CONNECT, among others. The Complainant has been using the federally registered INMAN CONNECT trademark in connection with its real estate conferences since 2015. The Complainant has been using the unregistered mark in connection with its real estate conferences since 1997.

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