Complainant is JLS Corporation of Issaquah, Washington, United States of America represented by Graham & Dunn, PC, United States of America.
Respondent is James Dean of Portland, Oregon, United States of America.
The disputed domain name <johnscott.com> (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 6, 2013. On August 7, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On August 7, 2013, the Registrar transmitted its verification response by e-mail to the Center confirming that Respondent as the registrant and provided contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 19, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was September 8, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 9. 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on September 13, 2013. 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 paragraph 7 of the Rules.
Through subsidiaries, Complainant provides real estate brokerage services to buyers and sellers in the states of Washington, Oregon, and Idaho United States of America, and franchises brokerage offices in the same region. These services are provided under the mark JOHN L. SCOTT.
Complainant holds several registrations of the mark JOHN L. SCOTT, including a registration of that mark with the United States Patent and Trademark Office, which shows a first use in commerce in 1948. Since 1996, Complainant has operated a website at the domain name <johnlscott.com>. At the website, Complainant offers real estate listing information, as well as access to other parties’ real estate services such as mortgage, relocation, and home warranty assistance.
The Domain Name was registered in April 1998. Currently, the Domain Name resolves to a website which contains links to sites offering various goods and services, such as “Homes for Sale,” “Free Foreclosure Listings,” and “Real Estate Auction Listings.”
On June 20, 2013, Complainant sent Respondent a cease-and-desist letter, to which no response has been received.
Complainant’s main factual assertions are set forth above or will be addressed below in the context of the three elements under the Policy. Complainant seeks a transfer of the Domain Name.
Respondent did not reply to Complainant’s contentions.
Paragraph 4(a) of the Policy lists three elements which Complainant must satisfy in order to obtain a transfer of the Domain Name:
(i) the Domain Name 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 respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Complainant holds rights, through registration and longstanding use, in the mark JOHN L. SCOTT. The Domain Name is identical to the mark, except for the omission of the middle initial “L.” In the Panel’s view, this small difference does not sufficiently distinguish the Domain Name from the mark. In another case involving Complainant, the panel ruled that the domain name “<johnloscott.com> was confusingly similar to the JOHN L. SCOTT mark, despite the additional letter “O” in the domain name. John L. Scott, Inc. v. PrivacyProtect.org/ICS Inc., WIPO Case No. D2012-0649.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in a Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174, rightly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and did not reply to Complainant’s cease-and-desist letter. Thus, Respondent did not effectively rebut any of Complainant’s assertions or lay out its own bona fides, if such exist.
There is no evidence that Respondent was ever authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Name or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
It is reasonable to conclude, and Respondent does not dispute, that Respondent derives revenue from the commercial hyperlinks on the website to which the Domain Name resolves. Accordingly, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion between the Domain Name and Complainant’s JOHN L. SCOTT mark. This is bad faith registration and use under paragraph 4(b)(iv) of the Policy.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <johnscott.com> be transferred to Complainant.
Robert A. Badgley
Sole Panelist
Date: September 26, 2013