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Unfair Use of an Association’s Trademark

A respondent may, as has frequently been pointed out, rightfully register a domain name incorporating a complainant’s trademark if authorized by contract or permitted under a nominative fair use theory. If neither, the registration is abusive. In National Association of Realtors v. John Fothergill, D2010-1284 (WIPO September 20, 2010) the Panel held that the domain names <listonrealtor.com> and <listitonrealtor.com> were “outside of the terms of the license and do[] not otherwise satisfy the [standards set forth in] Oki Data Americas, Inc. v. ASD, Inc [, D2001-0903 (WIPO November 6, 2001)] … for a “bona fide” resale of Complainant’s services.” The Panel noted that the facts are complex but “it has an obligation when faced with such disputed facts … to make the best findings it can, by a preponderance of the evidence, based on the record submitted, with full knowledge that the parties have the right to take their dispute to court if they wish a full, judicial resolution.” citing Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO January 29, 2001). (Footnote: the same Panel is the author of all three decisions).

The Complainant’s agreement in National Association of Realtors grants its members “a limited license to use the REALTOR mark in a domain name if the mark is used in connection with a member’s name or the complete legal name of a member’s real estate firm.” However, at the commencement of the proceedings the Respondent had no legal identity as “List On” or “List It On” although after service of the complaint it took steps to officially change its name with the Florida Secretary of States from N Properties, Inc to List On, Inc. It also changed its name on the Complainant’s website in an attempt to legalize the domain names.

Notwithstanding these actions, the Panel rejected the Respondent’s narrative of legitimate interest. It concluded (in essence) that the Respondent was manufacturing a position to bring itself into compliance with member rights under the NAR license. Morever,

[e]ven if Respondent had demonstrated by a preponderance of the evidence that it had changed its name to “List It On” prior to the instigation of this dispute, the Panel would still be inclined, on the evidence presented, to find that the name is not a legitimate interest for purposes of the Policy. Respondent’s conduct smacks of a bad faith intention to use the literal words of the NAR license to undermine the actual intent of the parties.

In using the domain names “as a website to sell a $99 ‘For Sale By Owner’ package allowing consumers to list their homes for sale directly on several websites, including <realtor.com>, without the use of a realtor and without the payment of a commission,” the Respondent fell short also on the nominative fair use defense. To succeed under the Oki Data standards “[t]he site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site if, in fact, it is only one of many sales agents.”

The Panel “divined” from the Complainant’s Membership Marks Manuel that its “license is designed to allow real estate professionals to publish websites that use their distinctive names along with the REALTOR designation, such as <johndoerealtor.com>. It does not appear to have been designed to allow NAR members to cleverly call their company by a descriptive name (such as “I’m The Top” ) and then use that name, in conjunction with the REALTOR mark, to create an attractive domain name (e.g., <imthetoprealtor.com>).”

The evidence discussed above supports the inference that Respondent registered the Domain Names to take advantage of the goodwill of the REALTOR mark and to confuse consumers into believing that the Domain Names and the services sold on Respondent’s website, which include direct listing on “www.realtor.com” in violation of Complainant’s policies, have some connection or affiliation with Complainant.

Levine Samuel, LLP <researchtheworld.com>
Gerald M. Levine <udrpcommentaries.com>
E-Mail gmlevine@researchtheworld.com

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