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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> RE/MAX International Inc v Balata.com LLC [2005] DRS 2863 (4 November 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/2863.html Cite as: [2005] DRS 2863 |
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Nominet UK Dispute Resolution Service
DRS 02863
RE/MAX International Inc. v. Balata.com LLC
Decision of Independent Expert
Complainant: RE/MAX International Inc.
Country: US
Respondent: Balata.com LLC
Country: IL
The domain name in dispute is remax.co.uk ("the Domain Name")
On 9 August, 2005 the Complaint was lodged with Nominet UK in accordance with the Dispute Resolution Service Policy (hereinafter "the DRS Policy") and hard copies of the Complaint were received in full on 12 August 2005.
On 12 August, 2005 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia advised the Respondent that the procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (i.e. until 6 September 2005) within which to respond to the Complaint.
On 5 September, 2005 Nominet UK received the Response from the Respondent and on the same day Nominet UK notified the Complainant that the Response had been received and sent the Complainant a copy allowing the Complainant until 12 September, 2005 to file a Reply. The Reply was received by Nominet UK on 12 September, 2005.
The mediation process then ensued but to no effect.
On 14 October, 2005 Nominet UK received the relevant fee for these proceedings from the Complainant and Nominet UK proceeded to select and appoint an expert.
On 17 October, 2005 Tony Willoughby, the undersigned, ("the Expert") confirmed to Nominet UK that he knew of no reason why he could not properly accept the invitation to act as Expert in this case and further confirmed that he knew of nothing which ought to be drawn to the attention of the parties which might appear to call into question his independence and/or impartiality.
Shortly after the receipt of the papers it came to the Expert's attention coincidentally and in connection with a different matter that the Respondent was also the registrant of the domain names, lutontownfc.co.uk, theaa.org.uk, generalelectric.co.uk, villaroyandboch.co.uk, virginfm.co.uk and jaguardriversclub.co.uk.
On 23 October, 2005, the Expert issued a Procedural Order in the following terms:
"Coincidentally, and from an independent source, I have had my attention drawn to other domain names in the '.uk' domain registered in the name of the Respondent. They include, and, , , .
Given that this information has come to me otherwise than via the parties, it is right that the parties should each have an opportunity to make submissions in relation to it.
The Complainant is invited to submit to Nominet a further submission dealing with this information, if it is minded to do so, by 4pm on Thursday of this week. The Respondent has until 4pm on Tuesday of next week to respond."
The Complainant responded to the Procedural Order on 27 October, 2005 and the Respondent responded to it on 1 November, 2005.
N/A
The Complainant is RE/MAX International Inc., a company incorporated in Colorado, USA which is engaged in the field of real estate brokerage services. It provides its services world wide through a network of franchisees and independent contractors who are licensed to use the name RE/MAX.
The Complainant is the proprietor of a large number of trade mark registrations of or incorporating the name RE/MAX including inter alia UK Trade Mark Registration No. 1477168 dated 16 September, 1991 RE/MAX (word) in Class 35 for "advice and assistance relating to business management and organisation; marketing and promotional services; business advisory services relating to franchising; business management assistance relating to real estate agencies, insurance brokerage and financial organisations; auctioneering; advisory services relating to all the aforesaid service; all included in Class 35."
That Registration is subject to the following qualification:
"Registration of this mark should give no right to the exclusive use of the word MAX"
The Complainant operates its principal website at www.remax.com and is the Registrant of other similar domain names such as remax.org, remax.net, and remax.us.
The Domain Name was registered by the Respondent on 27 May, 2004.
Since at least the end of 2004 the Respondent has been using the Domain Name for the web address www.remax.co.uk. At that site there feature various links to other commercial sites.
Towards the end of 2004 the site featured links offering loan services of one kind and another principally for home owners and home purchasers. The text on the homepage at that time read "Having trouble with your finances? Don't worry you are not alone. Today millions share the same problems. Here we can help you find the information you need to help repair your credit, deal with your debt, or to help you make money."
Currently, the Respondent's site is of similar style to that identified above, but is now concerned with various income tax services. The main body text reads "Tax forms, instructions, publications, tax tables, rates schedules, charts, worksheets and answers to practically every tax question. Tips on how to survive and strategies on how to avoid an audit."
On 11 November, 2004 the Complainant's representatives wrote to the Respondent drawing the Respondent's attention to the Complainant's rights and seeking the Respondent's cessation of use of the Domain Name. No reply was received to that letter.
The only other potentially relevant fact is that in three previous DRS decisions, namely DRS 02372 (wagamamas.co.uk) dated 7 April 2005, DRS 02455 (compaq.co.uk) dated 9 May 2005 and DRS 02462 (marksattin.co.uk) dated 3 May 2005, the Respondent was found in each case to be the holder of abusive domain name registrations. The potential relevance of this lies in paragraph 3(c) of the Policy.
Complainant
The Complainant contends that its registered trade mark RE/MAX is substantially identical to the Domain Name if one ignores the generic domain suffix.
The Complainant further complains that, in the hands of the Respondent, the Domain Name is an abusive registration.
The Complainant contends that paragraphs 3(a)(i)(B), 3(a)(i)(C), 3(a)(ii), 3(a)(iii) and 3(a)(iv) of the Policy are all applicable to the Domain Name.
In response to the Procedural Order the Complainant contends that the existence of the further registrations cited in that Order merely confirm the Complainant's contention that the Respondent has engaged in a pattern of abusive domain name registration. The Complainant cites details of UK Trade Mark Registrations for Jaguar, Virgin, AA and Villeroy and Boch, the trade marks featured in some of the further domain name registrations in the name of the Respondent.
Respondent
The Respondent denies that paragraph 3 of the Policy is in any way applicable to the Domain Name. The Respondent contends that paragraphs 4(i)(a) and 4(ii) of the Policy apply .
The Respondent asserts that the Domain Name was purchased for business use and that the purchase had nothing whatever to do with the Complainant. The Respondent asserts that it was not aware of the existence of the Complainant.
The Respondent asserts that the Domain Name is being used "to offer services as a portal that provide finance information to its visitors in order to assist them to maximize their assets thus it has not infringed the Complainant's trade mark which relates to different classes." The Respondent goes on to contend that the Domain Name is simply composed of two generic words "RE" and "MAX" which together mean "regarding the maximum or the most". The Respondent asserts that this describes the portal's objective namely "to enable its clients to get the most or the max of their money".
To the extent that the Complainant's allegations suggest that the Respondent 's use of the Domain Name has led or is likely to lead to confusion of Internet users, the Respondent rejects them. The Respondent says:
"An Internet user that visits our website will not see reference to Complainant, to real estate or to consultancy for business management thus there is no reason people that visit this website will be confused to believe that the domain name is registered to, operated or authorised by or connected with the Complainant."
In response to the Complainant's reference to the wagamamas.co.uk case (DRS 02372) the Respondent asserts that this was a very different case and that in any case it was a complaint to which they did not respond "due to a technical error in [their] offices".
As to the allegation that the contact details that the Respondent has provided to Nominet UK are incorrect, the Respondent rejects that complaint and asserts that the contact details that it has given are correct and have enabled the Respondent to receive the documents in the proceedings.
In response to the Procedural Order the Respondent asserts that the other two DRS decisions to which the Complainant refers should also be ignored by the Expert because they too were cases in which the Respondent failed to respond "due to technical errors in their offices".
As to the other domain names mentioned in the Procedural Order, the Respondent asserts that the vast majority of them are generic words and were registered, like the Domain Name, in accordance with paragraphs 4(i)(A) and 4(ii) of the Policy.
The Respondent then provides a number of examples of domain names featuring generic words such as "athletic.org.uk", "australian.org.uk", "buycamera.co.uk" none of which correspond to well known names or trade marks. They deny that there has been a pattern of abusive registration on their part.
General
To succeed in a complaint under the Policy, the Complainant must first prove that it "has rights in respect of a name or mark which is identical or similar to the domain name" (paragraph 2(a)(i) in the Policy). Rights are defined in paragraph 1 of the Policy as follows:-
""Rights" includes but is not limited to rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business."
Having established that the Complainant has rights in respect a name identical or similar to the Domain Name, the Complainant must demonstrate that the Domain Name, in the hands of the Respondent, is an abusive registration.
Abusive registration is defined in paragraph 1 of the Policy as follows:-
"Abusive registration means a domain name which either:
(i) was registered or otherwise acquired in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's rights; or
(ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights."
It is appropriate to mention here that in this case paragraph 3(c) of the Policy is potentially relevant. That paragraph reads:
"There shall be a presumption of abusive registration if the Complainant proves that the Respondent has been found to have made an abusive registration in three (3) or more dispute resolution service cases in the two (2) years before the complaint was filed. This presumption can be rebutted (see paragraph 4(c))."
Paragraph 4(c) of the Policy reads:
"If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the response that the registration of the domain name is not an abusive registration."
Complainant's Rights
The Complainant has demonstrated that it has rights in the trade mark RE/MAX.
The Complainant has also asserted that it has rights in the name 'remax' on the basis of its use and the use by licensees of various domain names featuring the name 'remax'. It is unnecessary for the Expert to express a view on this latter point.
Manifestly, the Complainant's registered trade mark is very similar to the Domain Name if, as is appropriate for this purpose, one omits the generic domain suffix from the Domain Name.
Abusive Registration
There having been three DRS decisions in the course of this year in which the Respondent has been found to be in possession of an abusive registration, paragraph 3(c) applies. Accordingly, there is a presumption that the Domain Name is an abusive registration.
The Respondent denies that the Domain Name is an abusive registration. The Respondent claims that it registered the Domain Name for a genuine commercial purpose wholly unconnected with the Complainant. Indeed, the Respondent denies that it was aware of the existence of the Complainant when it registered the Domain Name.
The Respondent says that it registered the Domain Name to use it for a portal site providing financial services to Internet users. It says that it selected the Domain Name with the idea that the combination of "re" and "max" should indicate the purpose of the portal namely "to enable its clients to get the most or the max of [sic] their money".
This strikes the Expert as an unlikely explanation. It comes across to the Expert as a self-serving explanation produced ex post facto for the purpose of defeating this complaint.
In taking this view the Expert is heavily influenced by the fact that not only has the Respondent made a practice of registering domain names featuring the trade marks of others (see for example the previous DRS decisions and the registrations referred to in the Procedural Order quoted above), but also, when faced with the Procedural Order, the Respondent made no serious attempt to deal with the matter.
In responding to the Procedural Order, which referred to "virginfm.co.uk" and "villeroyandbosch.co.uk", for example, the Respondent says this:
"As to the other domain names mentioned in the submission, the vast majority of them can be considered as generic words and in accordance with the policy."
The Respondent then goes on to mention the various descriptive domain name registrations that it appears to hold (referred to above) such as, for example, athletic.org.uk, australian.org.uk, buycamera.co.uk etc..
Manifestly, none of the descriptive domain name registrations bear any relation whatsoever to domain names in the category of virginfm.co.uk and villeroyandboch.co.uk, which are highly specific and distinctive names.
The fact of the matter, in the view of the Expert, is that the Respondent has no answer to the presumption that the Domain Name is an abusive registration in the hands of the Respondent.
In the view of the Expert the probability is that the Respondent registers domain names featuring the trade marks of others in order to attract Internet users to the sites to which those domain names are connected for commercial gain. Internet users are attracted to the sites believing those sites to be in someway associated with the owner of the trade mark in question. When they arrive at the site they may well appreciate then that the site has nothing whatever to do with the trade mark owner, but by then the deceit has achieved the desired result in that the Respondent has derived the business opportunity, which it might not otherwise have obtained if the Domain Name had not featured the trade mark. The commercial gain is derived from the click per view income that the Respondent is likely to derive from Internet users clicking through its site.
There is nothing before the Panel to suggest that the Respondent has not achieved its purpose. Thus the Panel finds that the Respondent is:
- using the Domain Name in a way which has confused people into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with the Complainant; and
- engaged in a pattern of registrations where the Respondent is the registrant of domain names which correspond to well known names or trade marks in which the Respondent has no apparent rights and the Domain Name is part of that pattern.
In relation to this last point, while RE/MAX may not be as well-known generally as VIRGINFM, for example, the Panel is satisfied that it is well-known in the specialist area in which it operates; moreover, the services advertised by the Respondent at its website at www.remax.co.uk are or have been sufficiently close to the services offered by the Complainant for the Panel to conclude that when constructing its website the Respondent was very well aware of the Complainant and its services.
In light of the above it is unnecessary for the Panel to address the other attacks on the Domain Name registration levelled by the Complainant.
For all the above reasons, the Expert finds that the Domain Name in the hands of the Respondent is an abusive registration.
The Expert directs that the Domain Name be transferred to the Complainant.
Tony Willoughby
4 November, 2005
