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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Keller Williams Realty, Inc. v. Fusion Marketing
Case No. D2001-1266
1. The Parties
The Complainant is Keller Williams Realty, Inc. of 3701 Bee Caves Road, Suite 200, Austin, Texas 78746, United States of America.
The Respondent is Fusion Marketing of 8801 S. Sepulveda Boulevard, #1, Los Angeles, California 90045, United States of America.
2. The Domain Name and Registrar
The domain name in dispute is <kellerwilliamsuniversity.com>.
The Registrar is DomainPeople, Inc., a Canadian company, having its principal business address at 555 West Hastings Street, Suite 1440, Harbour Center, Vancouver, BC, Canada V6B 4N6.
3. Procedural History
This proceeding initiated by Complainant with the filing of a Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on October 18, 2001. The Complaint was received via mail on October 23, 2001, and via email on October 26, 2001. It was reviewed and verified that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. On October 30, 2001, the Center sent an acknowledgement of its receipt of the Complaint via email, post and facsimile to Complainant and Respondent. On November 15, 2001, having found that the Complaint met the Formal Requirements Compliance Check List, the Center Notified the Respondent of the commencement of the proceedings via email and by facsimile without attachments and by post with enclosures. The Notification informed Respondent that it should submit a response by December 5, 2001. A hard copy of the Notification together with the Complaint and attachments were sent to Respondent via Federal Express to Respondent’s Post Office address. Respondent failed to submit a response within the required period. A Notification of Respondent Default was issued on December 7, 2001. Up to the present, Respondent has submitted no response. On January 10, 2002, after clearing for conflicts, the Center appointed Maria C. H. Lin as the sole panelist as requested by Complainant.
A Procedural Order No. 1 was issued February 21, 2002, under Rule 12 of the Rules requesting the Complainant to submit information on the issue of when and how Mr. Gilroy, Respondent's administrative contact, applied for a franchise to operate a Keller Williams Market Center in California, and when and how his application was denied.
On February 26, 2002, Complainant submitted an affidavit by Mr. Darrow Fiedler, Regional Representative for the Los Angeles California Coastal Region for Complainant. According to Mr. Fiedler, Mr. Philip Gilroy met with members of the Complainant's organization to discuss a license for Mr. Gilroy. Subsequently, an application with the required fee for a license was submitted in May 2000, by Mr. Gilroy. However, after a few days, the application was withdrawn.
4. Factual Background
Since no response was submitted by the Respondent, the allegations of the Complaint supported by evidence are accepted as true. See Rita Rudner v. Internetco Corp., WIPO Case No. D2000-0581, August 3, 2000, §4, and Easy Heat, Inc. v. Shelter Products, WIPO Case No. D2001-0344, June 14, 2001; see also Rules paragraph 5(e) ("If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint.").
Complainant or its predecessors, Keller Williams, Inc. has been in the real estate business since 1987. According to the Complaint, Complainant has developed a system characterized by distinctive real estate brokerage methods and techniques; agent recruitment methods; financial control techniques; uniform standards and specifications; quality and uniformity of products and services; procedures for training and assistance; advertising and promotional programs; and other services, all of which Complainant or its predecessors have been licensing to third parties since 1987. Complainant is the owner of U.S. Service Mark Registration No. 2309099 for the mark "KELLER WILLIAMS" for "franchising, namely, offering technical assistance in the establishment and/or operation of real estate brokerages" in International Class 35. See Exhibit C, a copy of U.S. Registration Certificate No. 2,309,099. Additionally, Complainant is the owner of a number of domain names: <kw.com>, registered on April 17, 1995, and <kellerwilliams.com>, registered on August 28, 1995 (collectively, the "Domain Names"). A copy of the Whois information for these domain names is attached to the Complaint as Exhibit D.
In April 2001, Complainant became aware that the domain name <kellerwilliamsuniversity.com> had been registered by Respondent. Upon visiting the web site located at <kellerwilliamsuniversity.com>, Complainant found the web site to be password protected, with no information provided thereon. See Exhibit E. Therefore, it is not clear how Respondent uses the domain name <kellerwilliamsuniversity.com>.
Complainant stated that it made further investigation and allegedly discovered that Mr. Gilboy, Respondent’s administrative contact, applied for a franchise to operate a Keller Williams Market Center in California and that his application was denied. This allegation is supported by an affidavit by Mr. Darrow Fiedler to attest to the fact that Mr. Philip Gilroy, the contact person for Respondent has applied for a license from Complainant in May 2000. The application was withdrawn and no license had been granted.
On April 2, 2001, Complainant, through its attorneys, sent a letter to demand Respondent to cease and desist using the domain name <kellerwilliamsuniversity.com>, stating that the domain name was confusingly similar to Complainant’s Mark and Domain Names. See Exhibit F. No response to the April 2 letter was received by Complainant or its attorneys.
5. Parties’ Contentions
Complainant contends that:
i. The Respondent's domain name is confusingly similar to Complainant's Mark and domain names in that <kellerwilliamsuniversity.com> is identical to <kellerwilliams.com> or KELLER WILLIAMS except for the modifier "university." Complainant contends that Respondent is offering similar services to those offered by Complainant.
ii. The Respondent 's registration and use of the domain name at issue is an intentional attempt to mislead Internet users to Respondent's site for financial gain and that this is evidence of bad faith.
iii. The Respondent knew of Complainant's mark and domain names through its administrative contact, Mr. Gilboy and that the registration of the disputed domain name is an attempt to dilute the Complainant's goodwill.
Respondent did not respond.
6. Discussion and Findings
It is the burden of the Complainant under paragraph 4(a) of the Policy to prove that:
(i) 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) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and used in bad faith.
A. Complainant's federal trademark registration is prima facie proof of its ownership of the mark KELLER WILLIAMS. EAuto, L.L.C. v Triple S. Auto Parts, WIPO Case No. D2000-0047, March 24, 2000. However, only the cover sheet of the Certificate of Registration of the mark was attached to the Complaint as Exhibit C. The Certificate of Registration itself was not attached.
A search of the database of the United States Patent and Trademark Office revealed that the mark, Registration No. 2309099 for KELLER WILLIAMS was registered on January 18, 2000, and that Registration No. 1617925 was cancelled on April 21, 1997. The reason for the cancellation was not stated. Further, there is an application for design of KW KELLER WILLIAMS REALTY, Application No. 76/291449, filed July 27, 2001.
Since the earlier registration was cancelled in 1997, it is not clear whether there is continuous use of the mark since 1987. The record shows that the disputed domain name was registered on January 26, 2000, three years after the prior registration was cancelled and only eight days after Complainant's mark was registered by the United States Patent and Trademark Office.
A comparison of the disputed domain name and Complainant's registered mark shows that the domain name contains the word "university" in addition to the Complainant's registered trademark "KELLER WILLIAMS." The term "university" is a descriptive term for an institution for education. Under a number of UDRP case decisions a domain name that consists of a registered trademark and a descriptive term is regarded as confusingly similar to the registered trademark. In ISL Marketing AG et al. v. J.Y. Chung, WIPO Case No. D2000-0034, the panel found that the domain names containing "world cup" and "2002" or a variation thereof to be confusingly similar to the mark, WORLD CUP. Similarly the domain name <toshibastore.com> was found to be confusingly similar to the mark TOSHIBA. See, WIPO Case No. D2000-0464.
B. The Respondent has not shown any legitimate use of the disputed domain name. There is no evidence of the type of use of the disputed domain name by the Respondent. The home page requires a password in order to access the website. This restriction limits accessibility to those who know Respondent. The Respondent's name is "Fusion Marketing", there is nothing to show that Respondent has a legitimate basis for the use and registration of the disputed domain name.
C. On the available evidence in the Complaint, it was not clear whether Respondent had knowledge of Complainant's registration and use of the Mark when Respondent registered the domain name in January, 2000. However, based on the Supplemental filing (Fiedler affidavit), Mr. Gilboy had applied for a license from Respondent in May 2000. Therefore it seems to the Panel that the Respondent had knowledge of Complainant's registration and use of the Mark.
After Respondent withdrew the application for a license, it continued to use the domain name, albeit the site is not accessible without a password. In addition, the passive holding of a domain name has been found to be use of the domain name in bad faith. Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Distribution Purchasing & Logistics Corp., WIPO Case No. D2000-0464.
Complainant has therefore met its burden of showing that Respondent's registration and use of the disputed domain name are in bad faith.
Complainant has met its burden of proof under Paragraphs 4 a. of the Policy. The Complainant's request for transfer of the disputed domain name is granted.
Maria C.H. Lin
Dated: March 15, 2002