WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Century 21 Real Estate LLC v. Luka Ivanovic, Fresh Realestate
Case No. DME2020-0008
1. The Parties
The Complainant is Century 21 Real Estate LLC, United States of America (“United States”), represented by Janković Popović Mitić, Serbia.
The Respondent is Luka Ivanovic, Fresh Realestate, Montenegro.
2. The Domain Name and Registrar
The disputed domain name <c21fresh.me> is registered with ME-net (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 7, 2020. On September 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 8, 2020, 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”) as adopted by doMEn, d.o.o. (doMEn), the registry operator of the .ME TLD on April 30, 2008, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) approved by doMEn on October 1, 2012, 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 September 15, 2020. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2020.
The Center appointed Andrew D. S. Lothian as the sole panelist in this matter on October 26, 2020. 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 an American real estate franchising company founded in 1971 whose system consists of approximately 8,000 independently owned and operated franchised broker offices in approximately 80 countries and territories worldwide with over 120,000 sales professionals.
The Complainant is the holder of a range of C21 and C21 formative trademarks in multiple territories, including Montenegrin trademark No. 13427 for the word mark C21, registered on March 30, 2017 in class 36 (real estate brokerage services).
The disputed domain name was created on November 14, 2012. The Respondent has chosen not to engage with the present administrative proceeding. Screenshots of “Google” Internet searches provided by the Complainant indicate that the Respondent operates a real estate business in Montenegro. The Complainant notes that the Respondent operates as part of a company named Fresh d.o.o., based in Podgorica, Montenegro.
The Complainant states that the Respondent was once a part of the Complainant’s franchise network. The Complainant’s parent company, Realogy Group LLC, appears to have entered into a franchise agreement dated February 1, 2008 with a Serbian company named International Real Estate d.o.o. According to the Complainant, said agreement (which has not been produced by the Complainant in these proceedings) granted International Real Estate d.o.o. a right to use the Complainant’s marks in its business activities and to approve such use to its sub-franchisees from Serbia and Montenegro. Said agreement was terminated by the Complainant on November 20, 2014.
The Complainant states that in 2015 “the Respondent’s mother company” was a company named Century 21 Fresh Real Estate. On September 23, 2015, the Complainant’s representatives wrote to said company, at an address which appears to be very close to the address for the Respondent in the WhoIs entry for the disputed domain name, advising of the termination of the franchise agreement. In such letter, the Complainant’s representatives also indicated that they did not know whether Century 21 Fresh Real Estate had concluded an agreement with International Real Estate d.o.o. authorizing the use of the Complainant’s CENTURY 21 trademark but that it had been identified from a list of brokers using said mark on websites at “www.century21.rs” and “www.c21centar.rs”. The letter went on to assert that the continued use of the CENTURY 21 trademark by Century 21 Fresh Real Estate was without legal grounds and should cease forthwith. No answer was received to such letter and the Complainant filed a complaint with the Montenegrin Trade Inspection, which carried out an inspection of the Respondent in March 2017. The corresponding report found that the Respondent was using the Complainant’s trademarks without authorization and the Respondent was ordered to remove the trademark concerned from photographs of real estate on a website at “www.realitica.com”.
5. Parties’ Contentions
The Complainant contends as follows:
Identical or Confusingly Similar
The disputed domain name is confusingly similar to the mark C21 as it reproduces this in its entirety. In addition to this, the disputed domain name contains the word "fresh", which is a descriptive word that does not contribute to the overall distinctiveness of the disputed domain name.
Rights or Legitimate Interests
The Complainant is not affiliated with the Respondent in any way and has not authorized it to use any of its trademarks. The Complainant’s C21 and CENTURY 21 marks were well known worldwide and on the Montenegrin real estate market long before the disputed domain name was registered. The Respondent is not commonly known by the disputed domain name and does not use the disputed domain name in connection with a bona fide offering of services, since the disputed domain name is used as “bait” to attract potential customers to the Respondent’s web page.
Registered and Used in Bad Faith
The Respondent registered the disputed domain name after the Complainant had established rights and market publicity in its C21 trademark. The Respondent was once a part of the Complainant’s franchise network but the related agreement was terminated on November 20, 2014, with the Respondent’s then parent company receiving notification of same on September 23, 2015.
Although the Respondent received such notification in 2015 and was subject to action by the Montenegrin Trade Inspection in 2017, it decided to renew the registration of the disputed domain name in November 2017 and November 2019, contrary to its warranty in paragraph 2(d) of the UDRP. When searching the Internet for the Complainant’s trademarks with relevant geographic locations, the Respondent’s web page appears. The Respondent recently changed its web page address, which now uses the domain name <freshestate.me>, and the disputed domain name now redirects to such new web page. The Respondent is doing damage to the Complainant and its authorized representatives in Montenegro. The Respondent also violates the law of unfair competition in Montenegro. By using the disputed domain name in this manner, the Respondent acts contrary to paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in its C21 mark as described in the Factual Background section above. It is not necessary for the purposes of the first element analysis that this mark pre-dates the date of creation of the disputed domain name. The mark is identical to the first element of the second level of the disputed domain name. The additional word “fresh” does not prevent the Complainant’s mark from being recognizable in the disputed domain name. The country code Top-Level Domain (“ccTLD”), in this case “.me”, is typically disregarded for the purposes of comparison with the relied-upon mark.
Accordingly, the Panel finds that the Complainant has rights in a mark and that the disputed domain name is confusingly similar to such mark. The requirements of paragraph 4(a)(i) of the Policy have therefore been satisfied.
B. Rights or Legitimate Interests
The requirements of paragraph 4(a) of the Policy are conjunctive. A consequence of this is that failure on the part of a complainant to demonstrate one element of the Policy will result in failure of the complaint in its entirety. Accordingly, in light of the Panel’s finding in connection with registration and use in bad faith, as discussed below, it is unnecessary for the Panel to address the issue of the Respondent’s rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the Respondent registered and used the disputed domain name in bad faith. It is universally accepted that the requirement to prove both registration in bad faith and use in bad faith is conjunctive. Accordingly, failure to prove registration in bad faith, even in the event of subsequent bad faith use of the disputed domain name, would result in failure of the Complaint.
In this case, the Complainant states in terms that the Respondent was once a part of the Complainant’s franchise network. Despite this clear statement of fact, the Complainant’s representatives’ letter of September 23, 2015 appears to suggest that, at least at that date, the Complainant’s representatives were not wholly certain that the Respondent had concluded any agreement with International Real Estate d.o.o. authorizing the Respondent to use the Complainant’s trademarks. However, the presence of the name of the Respondent’s parent company on a website operated by the then-Complainant’s franchisee, as also noted in that letter, may suggest that the Respondent was likely to be part of the franchise network. It is equally possible that some other facts or documentation have since come to light in which the matter was placed beyond doubt in the Complainant’s mind. Whatever the reason might be, the Complainant does not elaborate, and the Panel must proceed on the basis of the position which is unambiguously put forward in the Complaint.
The franchise agreement referred to was entered into in 2008 and was terminated in 2014. Over the period when it was in force, according to the Complaint, International Real Estate d.o.o. was authorized to approve the use of the Complainant’s marks by its sub-franchisees from Serbia and Montenegro. Assuming that the Respondent was such a sub-franchisee, as the Complaint suggests, the disputed domain name was registered while the franchise agreement was in force and in that context. This means that it was registered in the knowledge of the Complainant’s rights, as asserted by the Complainant. However, it also means that on the balance of probabilities the disputed domain name is very unlikely to have been registered in bad faith, unless, for example, there was an express prohibition on making domain name registrations in the franchise agreement itself, which has not been produced.
The Panel’s approach here is in line with the detailed conclusions of the panel in a similar case involving a franchise arrangement, Elders Limited v. Private Company, WIPO Case No. D2007-1099 (“Elders”) and specifically the panel’s observation: “[…] These circumstances indicate that, in registering the disputed domain name, the Respondent may well have been intending to do no more than to complement the very business name it had been expressly permitted to use in the franchise. In the absence of any other evidence of the motivation of the Respondent at the time of registration, this would support a conclusion that the disputed domain name was likely registered in good faith even if no permission had been granted by the Complainant."
Faced with this apparent likelihood of a registration in good faith, the sole ground of bad faith registration advanced by the Complainant in this case is effectively that of renewal of the disputed domain name in bad faith after termination of the franchise agreement, on two separate occasions, in breach of the Respondent’s warranty under paragraph 2(d) of the Policy. However, as is noted in section 3.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[...] irrespective of registrant representations undertaken further to UDRP paragraph 2, panels have found that the mere renewal of a domain name registration by the same registrant is insufficient to support a finding of registration in bad faith”. This consensus view derives ultimately from the approach of the panel in an early case under the Policy, Teradyne, Inc. v. 4Tel Technology, WIPO Case No. D2000-0026 (“Teradyne”), in which it was noted that the scope of the Policy did not extend to domain names originally registered in good faith but which are subsequently used in an abusive manner.
In the specific context of distributorships and franchises, the panel in Elders added:
“This Panel does not consider that distributorships or franchises fall into any special category and prefers the reasoning in Yoomedia Dating Limited v. Cynthia Newcomer / Dateline BBS, WIPO Case No. D2004-1085, in which the Panel said:
Previous decisions have considered the matter of good faith registration followed by bad faith use. The prevailing view is that the Policy was not designed to prevent such situations. In Substance Abuse Management, Inc. v. Screen Actors Modesl [sic] International, Inc. (SAMI), WIPO Case No. D2001-0782, the panel stated that ‘If a domain name was registered in good faith, it cannot, by changed circumstances, the passage of years, or intervening events, later be deemed to have been registered in bad faith’.”
Finally, as was also observed in Elders, it is open to an entity in the position of the Complainant to pursue the matter further in an appropriate court should it choose to do so. In those circumstances, the Panel notes that nothing in this Decision should be taken as condoning the Respondent’s present use of the disputed domain name, and that this Decision is not addressed to the attention of any other forum that may ultimately be seized of the matter.
In these circumstances, the Panel finds that the Complainant has failed to prove that the disputed domain name was registered in bad faith and the Complaint therefore fails. Accordingly, the Panel does not require addressing the Complainant’s submissions relating to use in bad faith.
For the foregoing reasons, the Complaint is denied.
Andrew D. S. Lothian
Date: November 9, 2020