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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

F.M. Tarbell Co. dba Tarbell, Realtors v. Name Catcher/Mark Lichtenberger

Case No. D2007-0189

 

1. The Parties

Complainant is F.M. Tarbell Co. dba Tarbell, Realtors, of Santa Ana, California, United States of America, represented by Raysman & Steiner LLP, United States of America.

Respondent is Name Catcher, of Huntington Beach, California, United States of America, represented by Mark Lichtenberger and claiming to be the Respondent.

2. The Domain Names and Registrar

The disputed domain names

<tarbelldesert.com>

<tarbellestates.com>

<tarbell-oc.com>

<tarbellpreferred.com>

<tarbell-realtor.com>

<temeculatarbell.com>

are all registered with Go Daddy Software, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 9, 2007. On February 12, 2007, the Center transmitted by email to Go Daddy Software, Inc. a request for registrar verification in connection with the domain names at issue. On February 12, 2007, Go Daddy Software, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant supplied the required fee which was received by the Center on March 1, 2007. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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, and the proceedings commenced on March 9, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was March 29, 2007. The Response was filed with the Center on March 26, 2007.

The Center appointed Gary J. Nelson as the sole panelist in this matter on April 18, 2007. 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

Complainant is the owner of the following United States Service Mark Registration:

- 3,156,610 TARBELL INSURANCE SERVICES, INC. and Design.

Complainant does not own any registered service marks for TARBELL or for service marks incorporating TARBELL for real estate services.

Complainant operates an Internet website at <tarbell.com> promoting an array of real estate services.

Respondent was employed by Complainant as a real estate agent beginning on June 9, 2005 until June 29, 2006. During or before this employment period, Respondent registered all domain names being contested in this proceeding. All of the contested domain names have corresponding websites which incorporate a “real estate” theme.

 

5. Parties’ Contentions

A. Complainant

Complainant contends that it owns a United States Service Mark Registration for TARBELL INSURANCE SERVICES, INC. and Design for insurance services, and that is owns common law service mark rights in TARBELL REALTORS for real estate services, and that it is commonly known as “Tarbell.” Complainant further claims the contested domain names at issue in this proceeding are confusingly similar to its TARBELL REALTORS and TARBELL INSURANCE SERVICES, INC. and Design service mark.

Complainant alleges it has been using the TARBELL REALTORS service mark since 1964.

Complainant contends Respondent has no rights or legitimate interest in any of the six contested domain names, and that Respondent registered and is using these domain names in bad faith.

Complainant denies that it authorized Respondent to register domain names containing the word “tarbell.”

B. Respondent

Respondent contends Complainant does not own service mark rights in TARBELL or any other mark incorporating the word “tarbell.”

Respondent contends that it secured authorization from Complainant to register domain names that incorporated the word “tarbell,” and that Respondent therefore has a legitimate right to use the contested domain names.

Respondent also contends that numerous TARBELL-based domain names are registered by individuals or entities unrelated to Complainant. Respondent has identified a set of domain names to support this contention.

Respondent denies that it registered the contested domain names in bad faith and that it asserts it has never used these domain names in bad faith.

 

6. Discussion and Findings

The identified registrant of record of all six contested domain names is Name Catcher. Nevertheless, the Response has been filed by an individual named Mark Lichtenberger. Mr. Lichtenberger asserts he is the actual Respondent and that he operates a business under the name “Name Catcher.”

Complainant does not contest this allegation. Indeed, Complainant has identified Mr. Lichtenberger on the caption page of the Complaint (i.e., “Mark W. Lichtenberger aka “Name Catcher”). Accordingly, because the Complainant appears to treat Mr. Lichtenberger as being synonymous with Name Catcher, the Panel finds the response submitted by Mr. Lichtenberger is a Response filed by the Respondent and owner of the contested domain names.

Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(i) The domain name in issue is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in the contested domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds Complainant has established common law service mark rights in TARBELL REALTORS for real estate services.

A common law mark is established when a complainant’s goods or services become distinctive through the acquisition of secondary meaning. Complainant has established secondary meaning in TARBELL REALTORS through its extensive use and promotion of this mark beginning at least as early as 1964. Indeed, while Complainant was incorporated in 1964, its predecessor(s) in interest, in regard to ownership of the TARBELL REALTORS service mark, appear to have begun using TARBELL as a service mark in 1926. Evidence of record has established that Complainant has developed and maintains a strong presence in the Southern California area. See Keppel TatLee Banck v. Taylor, WIPO Case No. D2001-0168 (“On account of long and substantial use of the said name (<keppelbank.com>) in connection with its banking business, it has acquired rights under the common law”).

The Panel holds that the dominant portion of the TARBELL REALTORS mark is the word “tarbell.”

The Panel further holds the “tarbell” portion of all six contested domain names to be the dominant portion of each domain name.

In regard to the contested domain names <tarbell-oc.com> and <tarbelldesert.com> and <temeculatarbell.com>, the “-oc,” “desert” and “temecula” portions, respectively, are geographic locations well known in the Southern California area (i.e., “-oc” is the abbreviation for Orange County; “desert” is a reference to several well known and recognized desert regions outside of the Los Angeles metropolitan area; “temecula” is a city located outside the Los Angeles metropolitan area). See Net2phone Inc. v. Netcall Sagl, WIPO Case No. D2000-0666 (finding that the combination of a geographic term with an established trademark does not prevent a domain name from being found confusingly similar); Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (finding that the addition of the geographic country descriptor “china” to form <cellularonechina.com> was confusingly similar to the CELLULAR ONE trademark). CMGI, Inc. v. Reyes, WIPO Case No. D2000-0628 (finding <wal-mart-europe.com> confusingly similar to the WAL-MART trademark). Accordingly, in regard to these domain names, the Respondent has merely added well known geographic terms to the dominant portion of Complainant’s TARBELL REALTORS service mark. The Panel finds these domain names to be confusingly similar to the Complainant’s service mark.

In regard to the contested domain names <tarbellestates.com> and <tarbellpreferred.com> and <tarbell-realtor>, the “estates,” “preferred” and “-realtor” portions, respectively, represent the addition of a generic term to the dominant portion of Complainant’s service mark. Neither the addition of a generic phrase to another’s trademark, nor the addition of a generic top-level domain name is sufficient to create a distinct domain name capable of overcoming a proper claim of confusingly similar. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, WIPO Case No. D2001-0026 (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); See also Sony Kabushiki Kaisha v. Inja, Kil, WIPO Case No. D2000-1409 (finding that “[n]either the addition of an ordinary descriptive word...nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”). Accordingly, the Panel finds these three domain names to be confusingly similar to Complainant’s TARBELL REALTORS service mark.

Complainant has proven the requirement of Policy, paragraph 4(a)(i) in regard to all six contested domain names.

B. Rights or Legitimate Interests

The Panel finds that Respondent does not own any rights or have legitimate interests in any of the six contested domain names.

From June 9, 2005 through June 29, 2006, Respondent was employed by Complainant. Currently, Respondent is no longer associated with Complainant, Respondent does not claim to have secured a license to use the TARBELL REALTORS service mark, and Respondent (i.e., Mark Lichtenberger/Name Catcher) is not commonly known by the name “tarbell.” In Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403, the panel held that a lack of rights or legitimate interest could be found where (1) respondent is not a licensee of complainant; (2) complainant’s rights in its related trademarks precede respondent’s registration of the contested domain name; and (3) respondent is not commonly known by the domain name in question. The Panel notes that all three of these conditions apply to the analysis of all contested domain names.

In regard to the <tarbellestates.com> and <tarbellpreferred.com> domain names, Respondent is currently operating a website featuring click-through opportunities for real estate related services offered by competitors to Complainant. Accordingly, the Panel concludes that Respondent’s use of these domain names, which are confusingly similar to the Complainant’s TARBELL REALTORS service mark, and which resolve to a website presenting click-through opportunities to services competing directly with services offered by Complainant, is not a bona fide offering of goods and services pursuant to Policy, paragraph 4(c)(iii). See Am. Online, Inc. v. Fu, WIPO Case No. D2000-1374 (“it would be unconscionable to find […] a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the complainant’s mark and for the same business”).

In regard to the <tarbell-realtor.com> and <tarbell-oc.com> and <tarbelldesert.com> and <temeculatarbell.com> domain names, Respondent is using the dominant portion of Complainant’s TARBELL REALTORS service mark to divert internet users to its own commercial website. This type of use of another’s service mark forecloses the possibility of establishing rights or legitimate interest in the contested domain names. See Madonna v. Dan Parisi and Madonna.com, WIPO Case No. D2000-0847 (holding that use which intentionally trades on the reputation of another cannot constitute a bona fide offering of goods and services); Household Int’l, Inc. v. Cyntom Enterprises, Nat. Arb. Forum Case No. FA95784 (employment of someone else’s well-known name undermines any claim to a legitimate interest).

Further, the corresponding websites operating in association with the <tarbelldesert.com> and <temeculatarbell.com> domain names are using Complainant’s TARBELL REALTORS service mark to promote the real estate services offered by Respondent. Infringement of another’s trademark or service mark can never create rights or legitimate interests in a corresponding domain name.

Complainant has proven the requirement of Policy, Paragraph 4(a)(ii) for all six contested domain names and Respondent has failed to prove it has rights or legitimate interests in these same domain names.

C. Registered and Used in Bad Faith

The Panel finds the Respondent registered and is using all six contested domain names in bad faith.

Respondent registered all six contested domain names during June and July of 2005. Respondent does not contest Complainant’s allegation that Respondent was employed by Complainant only during the June 9, 2005 through June 29, 2006 time period. It appears that Respondent registered one of the contested domain names prior to becoming an employee of Complainant, and that Respondent registered the remaining five domain names within six weeks of becoming associated with Complainant.

Complainant expressly denies it gave Respondent authorization to register domain names containing the word “tarbell.”

Notwithstanding this denial, Respondent contends it did indeed receive authorization from Complainant to register tarbell-based domain names. In support of its contention, Respondent indicates the following:

* All Tarbell real estate agents have implied rights to market their services using the TARBELL REALTORS service mark. Given this right and the fact Complainant did not expressly forbid real estate agents from using “tarbell” for Internet domain names, Respondent had the right to register tarbell-based domain names for marketing and sales purposes.

* Complainant conducted marketing classes for its real estate agents, which included instruction on how to advertise their individual services in conjunction with the TARBELL REALTORS service mark.

* Complainant, through a third party contractor, assists its real estate agents in developing an Internet presence.

* Respondent expressly told Complainant that it did not have a registered service mark for TARBELL for real estate services.

* An employee of Complainant, Mr. Wollenberg never expressly indicated that Respondent could not use the word “tarbell” as part of domain names it intended to register.

Assuming these assertions made by Respondent are accurate, Respondent appears to have mistakenly concluded that Complainant gave permission to register tarbell-based domain names. None of the above-identified assertions, by themselves or in combination, support a conclusion that Respondent received permission from Comlainant to register domain names containing the word “tarbell.”

In further support of its contention, Respondent lists at least seventeen domain names that allegedly contain the word “tarbell” (or a similar variation). An examination of these domain names and corresponding websites do not support Respondent’s contention. None of the identified domain names resolve to webpages promoting services by individual real estate agents employed by Complainant. Respondent seems to imply that Complainant allows it employees/real estate agents to use the word “tarbell” in their own personal domain names. If this were true, the Panel would expect to find an extensive array of examples supporting Respondent’s theory. However, Respondent has failed to direct the Panel to even one example (other than Respondent’s own webpages) where Complainant’s real estate agents are operating his/her own Internet websites using the word “tarbell” as part of the domain name.

Therefore, in light of these facts, and the additional fact that Respondent is a former employee of Complainant, the Panel concludes that when Respondent registered all six of the contested domain names, it knew or should have known, that Complainant possessed service mark rights in TARBELL REALTORS. See Kraft Foods (Norway) v. Wide, WIPO Case No. D2000-0911 (“the fact that respondent [chose] to register a well known mark to which he has no connections or rights indicates that he was in bad faith when registering the domain name at issue”).

With regard to <tarbellestates.com> and <tarbellpreferred.com>, Respondent is using these domain names to attract Internet users to a website that features a click-through opportunity to real estates websites that compete directly with the services offered by Complainant under its TARBELL REALTORS service mark. This is further evidence of bad faith registration and use. See Lilly ICOS LLC v. Tudor Burdern d/b/a BM Marketing/Burden Marketing, WIPO Case No. D2005-0313.

Respondent has registered domain names <tarbell-realtor.com> and <tarbell-oc.com> and <tarbelldesert.com> and <temeculatarbell.com> and linked these domain names to websites operated by Respondent in direct competition with Complainant. These actions are conclusive evidence that Respondent registered and is using these domain names in bad faith in violation of Policy, Paragraph 4(a)(iii). See Puckett v. Miller, WIPO Case No. D2000-0297 (finding that the respondent diverted business from the complainant to a competitor’s website in violation of Policy, Paragraph 4(b)(iii)). Furthermore, on two of these websites, Respondent is using Complainant’s TARBELL REALTORS service mark in apparent infringement upon Complainants service mark rights.

Complainant has proven the requirement of Policy, Paragraph 4(a)(iii) for all six contested domain names.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <tarbellestates.com> and <tarbellpreferred.com> and <tarbell-realtor.com> and <tarbell-oc.com> and <tarbelldesert.com> and <temeculatarbell.com> be transferred to the Complainant.

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Gary J. Nelson
Sole Panelist

Dated: May 2, 2007