WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
RE/MAX, LLC v. Privacy--Protect.org / Isaac Goldstein / Hulmiho Ukolen, Shlomo Icik
Case No. D2013-2036
1. The Parties
The Complainant is RE/MAX, LLC of Denver, Colorado, United States of America, represented internally.
The Respondent is Privacy--Protect.org of Shanghai, China / Isaac Goldstein of Hong Kong, China / Hulmiho Ukolen of Helsinki, Finland and Shlomo Icik of Bratislava, Slovakia.
2. The Domain Names and Registrar
The disputed domain names <remaxdenver.com>, <remaxnj.com>, <remaxrealators.com>, <remaxrealitor.com> and <remaxresidex.com> (together “the Domain Names”) are registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING ( SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 27, 2013. On November 27, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On November 28, 2013, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 10, 2013 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 December 14, 2013.
On December 27, 2013, the Center transmitted an email to the parties in English, Slovak and Finnish regarding the language of the proceeding. On December 27, 2013, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint in English, Slovak and Finnish, and the proceedings commenced on January 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was January 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 29, 2014.
The Center appointed Karen Fong as the sole panelist in this matter on February 11, 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
The Complainant is a leading international franchisor of real estate brokerage services operating under the RE/MAX brand name since 1973. It now has a network of over 90,000 franchisees and affiliated independent contractors/sales associates (the“RE/MAX Network”) providing real estate brokerage services through over 6,000 independent offices with a presence in over 90 countries. Through the years, the Complainant has extensively advertised and promoted its business under the RE/MAX brand.
The RE/MAX and REMAX trade marks are registered in the United States and many other countries worldwide including the countries which the Respondent appear to be located i.e. China, Slovakia and Finland. The earliest trade mark registration submitted in evidence dates back to 1980. The Complainant owns and operates the website connected to the domain name <remax.com>. The Complainant’s licensee in New Jersey, RE/MAX of New Jersey owns and operates the website connected to the domain name <remax-nj.com>.
The Domain Names were registered on the following dates:
<remaxdenver.com> - August 9, 2009,
<remaxnj.com> - January 22, 2000,
<remaxrealators.com> - December 21, 2007,
<remaxrealitor.com> - August 20, 2009, and
<remaxresidex.com> - June 18, 2012
All the Domain Names other than <remaxresidex.com> appear to have first been registered by third parties. The Domain Names were subsequently acquired by the Respondent. The probable dates of acquisition are as follows:
<remaxdenver.com> - February 20 to March 3, 2010,
<remaxnj.com> - January 24, 2011 to March 3, 2011,
<remaxrealators.com> - October 19, 2009 to January 19, 2010, and
<remaxrealitor.com> - November 4, 2009 to February 18, 2010.
The Domain Names are connected to websites which feature pay-per-click links to real estate related services and companies (“the Websites”).
5. Parties’ Contentions
The Complainant contends that the Domain Names are identical or confusingly similar to the RE/MAX and REMAX trade marks, the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainant requests transfer of the Domain Names, all of which it believes are related and under management and control of a single entity.
The basis of its belief that the registrants are related and under management and control of a single registrant are as follows:
1. At the time of the filing of the Complaint on November 26, 2013, the registrants of all the Domain Names were all set out in the same format – the Domain Names themselves, a privacy protect message, identical address, telephone number, person responsible C. Xiaojie and an email address linked to Privacy—Protect.org.
2. On November 28, 2013, the registrant for <remaxnj.com> was changed to Hulmiho Ukolen with a post office address in Finland whilst the registrants for the other Domain Names <remaxdenver.com>, <remaxrealators.com>, <remaxrealitor.com> and <remaxresidex.com> were changed to Shlomo Icik with a post office address in Slovakia.
3. The email addresses for the Domain Names are all still connected to Privacy—Protect.org.
4. The Domain Names are all connected and the various registrant names are aliases or the alter ego of Isaac Goldstein. Between March to May 2013, the Complainant’s representative corresponded with the registrant of <remaxnj.com> at the email address on the WhoIs record – “[…]@privacy--protect.org”. The registrant claimed that it purchased the Domain Name for USD 2,500 in 2011 and provided the link to the DN Journal to substantiate the price of the purchase. The DN Journal lists the purchase to have taken place in March 2011. The registrant of the Domain Name on or about the time of the purchase is listed in historical WhoIs records to be Isaac Goldstein with an address in Hong Kong.
5. Isaac Goldstein is the same as the current registrant of the Domain Name <remaxnj.com> – Hulmiho Ukolen.
6. Historical WhoIs records also show that Isaac Goldstein to have been the registrant for <remaxresidex.com>.
7. An analysis of historical WhoIs records for domain names owned by Shlomo Icik and Hulmiho Ukolen specifically with respect to the domain names <bnanarepublic.com> and <bananarepublci.com> (misspellings of the famous Banana Republic brand) evidences a link between these two registrants and Isaac Goldstein. As in the present case, the addresses for Shlomo Icik and Hulmiho Ukolen are post office addresses with minimal specificity suggesting that these are likely to be fictitious aliases.
8. Privacy—Protect.org is not a “real” proxy service and Isaac Goldstein is not a customer but its owner or alter ego. Historical WhoIs records list him as a previous registrant of Privacy—Protect.org. Proxy services would usually reveal the identity of the underlying registrant upon the filing of a UDRP complaint. In this case, the email addresses continue to be the same Privacy—Protect.org addresses suggesting that it is also an alias of Isaac Goldstein.
9. The Domain Names also all display ads of an identical design from the same advertising provider.
10. There are other UDRP decisions which have concluded that Isaac Goldstein and Privacy—Prorect.org are either one and the same or related in some way.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and are being used in bad faith.
B. Preliminary Procedural Issue - Consolidation of Proceedings
Paragraph 4(f) of the Policy allows a panel to consolidate multiple disputes between the same parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple respondents in a single administrative proceeding. In fact, paragraph 3(c) of the Rules provides that a complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder. The panel in Speedo Holdings BV v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 reviewed the relevant UDRP decisions in relation to consolidation in multiple respondents’ cases and extracted the following general principles:
1. Consolidation of multiples registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraphs 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.
2. The administrative provider should act as a preliminary gatekeeper in such cases by determining whether or not such complaints fulfill the requisite criteria. Once a case is admitted on a prima facie basis, the respondent has the opportunity to make its submissions on the validity of the consolidation together with its substantive arguments. In the event that the panel makes a finding that the complaint has not satisfied the requisite criteria, the complainant is not precluded from filing the complaint against the individual named respondents.
The Complainant has provided good evidence to substantiate its case that Shlomo Icik, Hulmiho Ukolen. Isaac Goldstein and Privacy — Protect.org. are either one and the same person or entity or are somehow connected to each other.
The Respondent failed to respond substantively to the Complaint. It also appears from the unsuccessful attempts by the Center to deliver by post to the Respondent Writtent Notice of the Complaint that the addresses provided by the Respondent are fictitious. This reinforces the Complainant’s case of common control by a known cybersquatter following a pattern of behavior.
Accordingly, applying the principles to the facts in this case, the Panel finds that the Complainant has established more likely than not that the Domain Names are subject to common ownership or control. The Panel finds such common control to justify consolidation of the Complainant’s claims against the registrants of the Domain Names in this proceeding. The Panel further concludes in the circumstances of this case that consolidation would be fair and equitable to all parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
C. Preliminary Procedural Issue – Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement in relation to <remaxnj.com> is Finnish whilst the language of the registration agreement for <remaxdenver.com>, <remaxrealators.com>, <remaxrealitor.com> and <remaxresidex.com> is Slovak.
The Complainant submits in Section IV of the Complaint that the language of the proceeding should be English for the following reasons:
(1) The Respondent previously communicated with the Complainant in relation to <remaxnj.com> in English;
(2) Previous panels in UDRP proceedings against the Respondent found it appropriate to conduct the proceedings in English as the Respondent has proven to be proficient in English;
(3) The Registrar’s website is in English;
(4) The Domain Names themselves contain English words that correspond to geographic locations and misspellings of English words;
(5) The content of the websites connected to the Domain Names are in English;
(6) The Complainant and its representatives are English speakers.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding and is satisfied that the Respondent is familiar with the English language and will not be disadvantaged from the proceeding being in English. The Complainant on the other hand may be unduly disadvantaged by having to conduct the proceedings in Finnish and Slovak. Further given the Panel’s findings in relation to consolidation of the disputes, it would be procedurally inefficient and cost ineffective for these proceedings to be reissued as two sets of proceedings, one to be conducted in Finnish and the other in Slovak. The Panel notes that all of the communications from the Center to the parties were transmitted in Finnish, Slovak and English. The Respondent has elected not to respond to the Complaint. Having considered all the circumstances of this case, the Panel determines that English is the language of the proceeding.
D. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has rights to the trade mark RE/MAX and REMAX.
The threshold test for confusing similarity involves the comparison between the trade mark and the domain name itself to determine likelihood of Internet user confusion. The trade mark would generally be recognizable within the domain name. In this case the Complainant’s registered trade mark REMAX is the dominant portion of the Domain Names. The addition of the letters “nj” (which probably stands for the geographical name New Jersey) and “denver” (also a geographical name) does nothing to minimize the risk of confusion. With respect to the other three Domain Names, the additional words after REMAX, “residex”, “realators” and “realitor” are all words that concern the Complainant’s business. The name “RE/MAX Residex” is the trade name of one of the Complainant’s franchisee whilst the words “realators” and “realitor” are misspellings of the word “Realtor” which is the name given to designated members of the real estate industry. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic domain suffix “.com”.
For the reasons above, the Panel finds that the Domain Names are identical or confusingly similar to a trade mark in which the Complainant has rights.
E. Rights or Legitimate Interests
The Respondent has not made any use of, or demonstrable preparations to use, the Domain Names or a name corresponding to the Domain Names in connection with a bon fide offering of goods or services, and is not making any legitimate noncommercial or fair use of the Domain Names. The websites connected to the Domain Names all feature pay-per-click links related to the Complainant’s industry including links to the Complainant’s competitors.
The consensus view under paragraph 2.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that whilst the use of a domain name to post parking and landing pages or PPC links may be permissible in some circumstances, it would “not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ [see also paragraph 3.8 below] or from ‘legitimate noncommercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”
The Respondent has no trade mark or intellectual property rights in the Domain Names. The Respondent is not and has never been a licensee or affiliate of the Complainant. There is no evidence that the Respondent is commonly known by the Domain Names or that the Domain Names is the legal name of the Respondent.
The Panel takes the view as stated in the WIPO Overview 2.0 “… that it will generally be very difficult for a respondent to establish rights or legitimate interests where that respondent has no relevant trade mark rights and without the authority of the complainant has used a domain name identical to the complainant’s trademark.”
This is such a case.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
F. Registered and Used in Bad Faith
To succeed under the Policy, a complainant must show that the domain name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the RE/MAX and REMAX trade marks when it registered the Domain Names. The Complainant has provided sufficient evidence that the registration/acquisition of the Domain Names by the Respondent post dates the registration of the trade marks. The very incorporation of the REMAX mark in the Domain Names as well as addition of geographical indications and names descriptive of the Complainant’s industry confirm the Respondent’s awareness of the RE/MAX and REMAX trade marks. Further the purchase by the Respondent of <ziloow.com> at about the same time of the purchase of <remaxnj.com> demonstrated the Respondent’s knowledge of the US real estate industry. ZILLOW is the trade mark of another prominent US real estate listings website and <ziloow.com> is a misspelling of the trade mark. The other UDRP decisions against the Respondent demonstrate that the Respondent has engaged in a pattern and practice of registering domain names containing the trade marks of others. See Bayer Healthcare LLC v. Isaac Goldstein, WIPO Case No. D2011-0581 where the panel found that the respondent’s prior and current domain name registrations show a pattern of bad faith in registering domain names.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Names in bad faith.
The Panel also finds that the actual use of the Domain Names is in bad faith. The reasons are as follows:
(1) The Websites are linked to real estate related services and companies including links to the Complainant’s competitors. This could potentially divert Internet users and potential customers away from the Complainant and disrupt the business of the Complainant;
(2) Such use by the Respondent shows an intention on the part of the Respondent to attract for commercial gain by misleading Internet users into believing that the websites are authorised by or somehow connected to the Complainant;
(3) As evidenced above in the sections relating to the consolidation of proceedings, the Respondent has gone to great lengths to hide its identity in order to avoid the legal consequences of prolific cybersquatting activities it is engaged in;
(4) The Respondent offered to sell <remaxnj.com> to the Complainant for USD 2,500. Although this may be the sum that it claimed to have acquired the Domain Name, the value is far above the registration and renewal cost because of the value of the trade mark itself and the advertising and pay-per-click revenue it would generate and therefore should be considered in excess of the Respondent’s documented out of pocket costs directly related to the Domain Name.
From the above, the Panel concludes that Domain Names were registered and are being used in bad faith under paragraphs 4(b)(i),(ii),(iii) and (iv) 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 Names <remaxdenver.com>, <remaxnj.com>, <remaxrealators.com>, <remaxrealitor.com> and <remaxresidex.com> be transferred to the Complainant.
Date: March 1, 2014