Christie's Great Estates, Inc. v. Claudia Close

[Indexed as: Christies Great Estates v. Close]
[Indexed as: CHRISTIESREALESTATE.COM]

National Arbitration Forum
Administrative Panel Decision

Forum File No. FA0008000095392
Commenced: 14 August 2000
Judgement: 18 September 2000

Presiding Panelist: Hon. James A. Carmody

Domain name - Famous mark - Confusingly similar - Bad faith registration - Common law trademark rights - Unlikely words in domain name selected at random.

Complainant a subsidiary wholly owned by Christie's Inc., established in 1766.  Complainant is the real estate branch of Christie's.  Respondent registered the domain name christiesrealestate.com.

Held, Name Transferred to Complainant.

Domain name is confusingly similar to mark of Complainant.  Complainant has common law rights in the mark "Christie's Great Estates".  The combination of the words Christie's, real and estate are likely to cause confusion with Complainant.

Respondent has no rights or legitimate interest in the domain name.  Respondent submitted a belated Response but without any request for an extention.  The Response was not considered and even if it were, it provided no defense to the allegations of Complainant.  The Panel may accept as true all the allegations of Complainant.  Respondent has failed to show any rights or legitimate interests in the domain name.

Respondent has shown bad faith.  Complainant's mark is famous.  Respondent knew of or should have known of the mark of Complainant.  It is unlikely that the combination of words in the domain name were selected at random.  Respondent was taking advantage of the famous mark.  Therefore, there was bad faith.

Policies referred to

ICANN Rules for Uniform Domain Name Dispute Resolution Policy
Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

Panel decisions referred to

BIC Deutschland GmbH & Co. KG v. Tweed, ICANN Case D2000-0418 (WIPO).
CBS Broadcasting, Inc. v. LA-Twilight-Zone, ICANN Case D2000-0397 (WIPO).
Charles Jourdan Holding AG v. AAIM, ICANN Case D2000-0403 (WIPO). 
Marriott Int’l v. Café au lait, ICANN Case FA 93670 (Nat. Arb. Forum). 
Reuters Ltd. v. Global Net 2000, Inc., ICANN Case D2000-0441 (WIPO).
Roberts v. Boyd, ICANN Case D2000-0210 (WIPO).
Talk City, Inc. v. Robertson, ICANN Case D2000-0009 (WIPO).

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Carmody, Panelist: -

PARTIES

The Complainant is Christie’s Great Estates, Inc, Santa Fe, New Mexico, ("Complainant"). The Respondent is Claudia Close, Rancho Mirage, CA, USA ("Respondent").

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is "CHRISTIESREALESTATE.COM", registered with Network Solutions Inc ("NSI").

PANELIST

The Panelist certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as the panelist in this proceeding.

Hon. James A. Carmody, as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on August 7, 2000; The Forum received a hard copy of the Complaint on August 7, 2000.

On August 9, 2000, NSI confirmed by e-mail to The Forum that the domain name "CHRISTIESREALESTATE.COM is registered with NSI and that the Respondent is the current registrant of the name. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 4.0 and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 14, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@chrisitesrealestate.com by e-mail.

Having received no Response from Respondent by the September 5, 2000 deadline, using the same contact details and methods as were used for the Commencement Notification, The Forum transmitted to the parties a Notification of Respondent Default.

On September 14, 2000, pursuant to Complainant’s request to have the dispute decided by a Single Member panel, The Forum appointed the Hon. James A. Carmody as Panelist.

On September 15, 2000, the Forum received a belated email Response from Respondent. No request for an extension of time to file a Response was made, either prior to or in the email Response.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that The Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, The Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any further Response from the Respondent.

RELIEF SOUGHT

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

PARTIES’ CONTENTIONS

A. Complainant

The Complainant asserts that the Respondent has no legitimate right to the domain name and use of that domain name would certainly lead to confusion in the marketplace. The Complainant asserts that the domain name was registered in bad faith as a way of either keeping the Complainant from its legitimate use or as an attempt to gain some financial advantage.

The Complainant alleges that anyone else attempting to trade on the name and/or trade style that the Complainant has built would be in clear violation of its names, trademarks, and trade styles.

B. Respondent

The Respondent submitted no timely response in this matter, however the extremely limited statements in the email Response have been reviewed, considered and found to be of no defense to the allegations of the Complainant which are in no respect denied by Respondent.

FINDINGS

Because Respondent has failed to deny any allegation of the Complaint based on the Policy, the Panel accepts as true all allegations set forth in the Complaint. Uniform Rule 14(b). See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint"). The Respondent does not rely on any defense to preclude the relief sought by Complainant.

The Complainant is a wholly owned subsidiary of Christie’s Inc., established in 1766. The Complainant is the real estate arm of the group and markets and advertises real estate for Christie’s clients and others. The Complainant has advertised its services in connection with its mark for many years.

The Respondent registered the domain name on September 23, 1999.

DISCUSSION

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

The Complainant has common law rights in the mark "Christie’s Great Estates." See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name "Julia Roberts" has sufficient secondary association with the Complainant that common law trademark rights exist). The domain name is confusingly similar to the Complainant’s mark. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (finding that the domain name, <tippex.com> is confusingly similar to Complainant’s mark, TIPP-EX); Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum March 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s mark "Marriott").

Rights or Legitimate Interests

The Complainant asserts that the Respondent has no legitimate right to the domain name. The Respondent has not denied this assertion. The Respondent is not commonly known by the mark comprising the domain name in question. Policy ¶ 4.c.(ii). The Respondent has not used the domain name for a legitimate noncommercial purpose or in connection with a bona fide offering of goods and services. Policy ¶ 4.c.(i), (iii).

The Panel concludes that the Respondent has no rights or legitimate interests in the domain name.

Registration and Use in Bad Faith

The Complainant asserts that the Respondent registered the domain name in bad faith. The Respondent has not denied this assertion.

The Complainant’s mark is well established and widely known. The Respondent knew or should have known of the Complainant’s famous mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that knowledge of the Complainant’s registered mark can be imputed to the Respondent given that the Complainant’s mark is long established and widely known); Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is "so obviously connected with the Complainant and its products that its very use by someone with no connection with the Complainant suggests opportunistic bad faith). The domain name in comprised of the words "Chrisites", "real", and "estate". The odds that these three words were selected at random are prohibitive. The Respondent chose the Complainant’s famous mark as a domain name in order to keep the Complainant from utilizing the domain name or gain some financial advantage from the Complainant’s established and famous mark.

The circumstances listed in Policy ¶ 4.b. are evidence of bad faith. However, that list is without limitation. See CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) ("[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith"). Therefore, the Panel concludes that the domain name was registered and used in bad faith.

DECISION

Having established all three elements required by the ICANN Policy Rule 4(a), it is the decision of the panel that the requested relief be granted.

Accordingly, for all of the foregoing reasons, it is ordered that the domain name, "CHRISTIESREALESTATE.COM", be transferred from the Respondent to the Complainant.
  Hon. James A. Carmody, Arbitrator
Dated: September 18, 2000


Domain Name Transferred