Keller Williams Realty, Inc. v. Advantage Realtor

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Keller Williams Realty, Inc. v. Advantage Realtor

Case No. D2002-0123

1. The Parties

The Complainant is Keller Williams Realty, Inc., a corporation of the state

of Texas, having a principal place of business at 3701 Bee Cave Road, Suite

200, Austin, Texas, 78746, United States of America.

The Respondent is Advantage Realtor located at 1520 Jasmine Street, St. Joseph,

Michigan 49085, United States of America.

2. The Domain Name and Registrar

The Contested Domain Name is <kwrealtor.com>.

The Registrar is Network Solutions, Inc. (NSI), located at 505 Huntmar Drive,

Herndon, Virginia 20170, USA.

3. Procedural History

The Complaint was brought pursuant to the Uniform Domain Name Dispute Resolution

Policy (the "Policy"), which was adopted by the Internet Corporation

for Assigned Names and Numbers (ICANN) on August 26, 1999, and

approved on October 24, 1999, and in accordance with the ICANN

Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")

as approved on October 24, 1999, and by the World Intellectual

Property Organization Supplemental Rules for Uniform Domain Name Dispute

Resolution Policy in effect as of December 1, 1999 (the "Supplemental

Rules").

The Complaint was filed with the WIPO Arbitration and Mediation Center

(the "Center") in e-mail form on February 6, 2002, and in hard-copy

form on February 11, 2002 with Annexes A-P and the appropriate

payment,

The Complainant's attorney stated that he separately served, on February 5, 2002

and by e-mail, a copy of the Complaint itself together with a copy of the

cover sheet, on the Respondent, and, by first class mail and with the annexes,

on the Respondent.

Pursuant to paragraph 4(d) of the Policy, the Complainant selected the

Center as the ICANN approved administrative dispute resolution service provider

to administer this proceeding. Through the Complaint, the Complainant requested

a single member panel.

After receiving the original Complaint, the Center, in accordance with

paragraph 5 of the Supplemental Rules, determined whether the Complaint

fully complied with the formal requirements of the Rules and the Supplemental

Rules. In that regard, on February 11, 2002, the Center requested

confirmation from the Registrar of information set forth in the Complaint

relative to the contested domain name; specifically, contact and registrant

information for that domain name, as well as whether the Registrar received

a copy of the Complaint from the Complainant. The Center also requested

the Registrar to specify: (a) whether the ICANN Policy applies to the

contested domain name, (b) the current status of that domain name, and (c)

whether the registrant has submitted, in its registration agreement, to

the jurisdiction at the location of the principal office of the registrar

for court adjudication of disputes concerning or arising from the use of

the domain name.

On February 14, 2002, the Registrar provided its response to

the Center through which the Registrar provided contact information pertinent

to the contested domain name from its WHOIS database, confirmed that NSI

is the registrar of that name, stated that the language of the registration

agreement is English, and stated that the domain name was then in an "active"

status. The Registrar also informed the Center that the Respondent, through

its registration agreement, submitted to the jurisdiction at the location

of the principal office of the registrar for court adjudication of disputes

concerning or arising from the use of the domain name(s).

On February 15, 2002, the Center notified the Respondent of the filing

of the Complaint, including an indication that the Center was forwarding

a complete copy of the Complaint, both in e-mail and hard-copy form, to

the Respondent (with the latter method forwarding a copy of all the annexes

as well). The Complaint, and its accompanying documents, and all subsequent

communications associated therewith were provided in the preferred manners

and to the addresses as mandated by paragraphs 2(a), 2(b) and 4(a)

of the Rules.

Hence, the notification to the Respondent having occurred on February 15, 2002,

under paragraph 4(c) of the ICANN Policy, this administrative proceeding

is deemed to have commenced on that date.

Having reviewed the Complaint and succeeding correspondence between the

Center and the Registrar, in detail, the Panel agrees with the determination

of the Center that the Complaint and its handling met the requirements of

the Rules and the Supplemental Rules.

The Respondent was then provided with a 20-calendar day period, expiring

on March 7, 2002, to file its Response with the Center and serve

a copy of the Response on the Complainant.

As of March 7, 2002, the Center had not received any Response to the Complaint

from the Respondent; hence, the Center, in an e-mail letter dated March 11, 2002,

notified the Complainant and the Respondent of the Respondent's default.

Accordingly, pursuant to the Rules and Supplemental Rules, by e-mail letter

dated March 14, 2002, the Center contacted the undersigned, Mr.

Peter L. Michaelson, Esq., requesting his service as a sole panelist for

this dispute. Subsequently, on that date, Mr. Michaelson accepted and

returned, by facsimile to the Center, a fully executed Statement of Acceptance

and Declaration of Impartiality and Independence. The Center, through an

e-mail letter dated March 15, 2002, notified the parties of the appointment

of Mr. Michaelson as sole panelist.

Based on the deadline set forth in paragraph 15 of the Rules, a decision

was to be issued by the Panel to the Center on or before March 29, 2002.

This dispute concerns one domain name, specifically: <kwrealtor.com>.

The language of this proceeding is English.

4. Factual Background

A copy of the WHOIS registration record for the contested domain name appears

in Annex A to the Complaint. As indicated on this record, the Respondent

registered this name with Register.com on October 1, 1999.

The Complainant owns various United States and Canadian trademark registrations

for its "Keller Williams" and "KW" marks (Marks) on

which this dispute is based. The Complainant has respectively provided,

in Annexes C and D to the Complaint, hard-copy printouts of corresponding

records from the United States Patent and Trademark Office (Trademark Electronic

Search System -- TESS) web server for its United States registrations and

from the website of the Canadian Intellectual Property Office for its Canadian

registrations. These registrations are as follows:

a) KELLER WILLIAMS (block letters)

US registration 2,309,099; registered January 18, 2000

This mark was registered for use in connection with: "Franchising,

namely, offering technical assistance in the establishment and/or operation

of real estate brokerages" in international class 35, and "Real

estate brokerages" in international class 36. This mark claims first

use of December 31, 1989, and first use in inter-state commerce

of July 31, 1992, for international class 35, and first use of December

31, 1983, and first use in inter-state commerce of October 31, 1984,

for international class 36.

b) KW (block letters)

US registration 2, 146,559; registered March 24, 1998

This mark was registered for use in connection with: "Franchising,

namely, offering technical assistance in the establishment and/or operation

of real estate brokerages" in international class 35, and "Real

estate brokerage" in international class 36. This mark claims first

use and first use in inter-state commerce of December 21, 1994,

for both classes.

c) KELLER WILLIAMS (block letters)

Canadian registration TMA 542364; registered March 14, 2001

This mark was registered for use in connection with: "Franchising,

namely, offering technical assistance in the establishment and/or operation

of real estate brokerages", and "Real estate brokerage".

d) KW (block letters)

Canadian registration TMA 542382; registered March 14, 2001

This mark was registered for use in connection with: "Franchising,

namely, offering technical assistance in the establishment and/or operation

of real estate brokerages", and "Real estate brokerages".

The Complainant is one of the fastest growing franchising real estate companies

in the United States and Canada, with its growth rate of sales and commissions

topping 700% from 1995 through 2001. Specifically, the Complainant

is a leading franchisor of residential real estate and brokerage services,

beginning its franchising activities in 1983. The Complainant has offered

franchises in approximately twenty-five states within the United States

and three Canadian provinces with continued growth in the near future.

The Complainant has been using the trade name "KELLER WILLIAMS"

and the service mark "KELLER WILLIAMS," alone and in combination

with other components since at least as early as 1983...The mark "KW"

is an arbitrary mark that neither suggests nor describes any ingredient,

quality or characteristic of the goods and services offered under it.

The Complainant is also the owner of various related domain names,

including, e.g., <kellerwilliams.com> registered on August 28, 1995,

and <kw.com> registered on April 17, 1995. The Complainant

has provided a hard-copy printout of the WHOIS information for each of these

domain names in Annex E to the Complaint.

The Complainant, through its significant efforts, skills and experience,

has acquired and enjoys substantial goodwill and a valuable reputation as

a result of using its Marks. The maintenance of high standards of quality

and excellence for Complainant’s services has contributed to this valuable

goodwill and reputation. In that regard, the Complainant has expended and

continues to expend a significant amount of time and money to advertise

and promote Complainant’s services through its Marks and domain names.

On or about December 7, 2001, the Complainant discovered, through correspondence

from one of its licensees, that by typing <kwrealtor.com>, as a uniform

resource locator (URL), Internet users were then being re-directed to a

website offering real estate and related services by the Respondent and

his wife, Paula Schatz, on behalf of Coldwell Banker, a real estate

brokerage company that directly competes with the Complainant. The Complainant

has provided a print-out of a screen shot for the home page for website

<kwrealtor.com>, as it existed on or about December 7, 2001,

in Annex F to the Complaint. On December 7, 2001, in response to this

finding, the Complainant’s attorney sent the Respondent a letter requesting

the Respondent to immediately discontinue its use of the contested domain

name and immediately refrain from re-directing users to the Respondent's

website. The Complainant has provided a copy of this correspondence in Annex

G to the Complaint. This letter also requested the Respondent to transfer

the contested domain name to the Complainant on or before December 27, 2001.

On December 21, 2001, and in response to the Complainant’s December 7, 2001

letter, the Respondent sent an e-mail (a copy of which appears in Annex

H to the Complaint) to the Complainant’s attorney pursuant to which the

Respondent indicated that he immediately complied with the Complainant’s

requests to cease redirecting users to his web site but that he was unwilling

to transfer the contested domain name unless the Complainant purchased that

name from the Respondent.

Currently, users that enter <kwrealtor.com> as a URL are not directed

to the Respondent's web site offering competing services. Instead, the contested

domain name is directly linked to a web page that is under construction

but which contains a pop-up window which provides users with an interactive

message board with the following titles -- some of which indicate topics

relating to the Complainant and its business: (a) <kwrealtor.com>

- "Domain name information"; (b) "Keller Williams- "Anything

what you would like to share about Keller Williams"; (c) "Realtor";

and (d) "Real Estate". Upon double clicking on the title

<kwrealtor.com>, users are permitted to enter bids to purchase the

contested domain name from the Respondent. The Complainant has provided,

in Annex I, a printout of the pop-up message board and a screen/shot offering

the contested domain name for sale. The Complainant has never authorized

the Respondent to offer the contested domain name for sale.

In response to the Respondent's December 21, 2001, e-mail, the Complainant,

through its attorney and via a letter dated December 31, 2001 (a copy of

which appears in Annex J to the Complaint), informed the Respondent it had

failed to comply with Complainant’s attorney's letter of December 7, 2001,

and that the Respondent's continued use of the contested domain name constituted

a violation of the Complainant’s trademark rights.

On January 14, 2002, the Complainant’s attorney contacted the Respondent

by telephone in an attempt to amicable settle the dispute. During that conversation,

the Respondent offered to sell the contested domain name to the Complainant.

After the Respondent's failure to transfer this name as requested in

its letters of December 7 and 31, 2001, and its unsolicited offer to

sell the contested domain name to the Complainant’s attorney, the Complainant

instituted this proceeding.

The Respondent registered the contested domain name while the Respondent’s

wife, Paula Schatz, was a real estate agent for one of the Complainant's

licensees in Indiana.

The Complainant is unsure as to the purpose for which the Respondent registered

the contested domain name, as the Complainant only became aware that this name

was registered in the Respondent’s name on December 7, 2001, and discovered

that the name was then being used to promote a competing real estate business.

Notwithstanding, the Complainant does not permit its licensees or their agents

to register domain names using the Complainant’s marks without first obtaining

the Complainant’s express permission. The Respondent registered the contested

domain name without permission or authority from Complainant.

5. Parties’ Contentions

A. Complainant

i. Similarity

The Complainant contends that the contested domain name is identical

and confusingly similar to the Complainant's Marks inasmuch as that

name includes the Complainant's mark "KW".

Specifically, the Complainant cites to prior panel decisions that, in its view,

have seriously questioned whether pairing a registered trademark with another

word, where the latter associates the domain name with the underlying business

of the owner of the registered mark, provides the name registrant with any rights

to the domain name. See Chanel, Inc. v. Uraina Heyward D2000-1802

(WIPO February 23, 2001), and Expedia, Inc. v. European Travel Network D2000-0137

(WIPO April 18, 2000).

Further, the Complainant states that prior panel decisions have also ignored

the generic top level domain when analyzing the domain name for confusing similarity.

See Experience Hendrix, L.L.C. v. Denny Hammerton, et al. D2000-0364

(WIPO August 2, 2000); and Wal-mart Stores, Inc. v. Yongsoo Hwang, et al.

D2000-0838 (WIPO December 3, 2000).

Therefore, the Complainant takes the position that merely tacking

the word "realtor" after "KW", which users could

logically use while looking for the Complainant’s web site (i.e. append

to the term "KW"), and without the ".com" suffix,

is not sufficient to ameliorate user confusion.

Hence, the Complainant concludes that it has met the confusing similarity

requirement in paragraph 4(a)(i) of the Policy.

ii. Legitimacy

The Complainant contends that, for several reasons, that the Respondent

has no rights or legitimate interests in the contested domain name

pursuant to paragraph 4(a)(ii) of the Policy.

First, the Complainant states that the Respondent is not related

to the Complainant nor has the Respondent ever been licensed by Complainant

or otherwise permitted to use the mark "KW" or apply for

any domain name incorporating any of those marks.

Second, on December 7, 2001, when the Complainant and its attorney

viewed the Respondent’s web site, the contested domain name was being

used to direct users to a home page where the Respondent and his wife

advertised their affiliation with Coldwell Banker, which is a direct

competitor of Complainant. Further, the contested domain name was

not used by the Respondent to establish a web site, since that name

did not appear as the URL and was merely used to divert users to a

competing page. Subsequent to the Complainant’s December 7th letter,

the Respondent changed the web site associated with the contested

domain name such that the name now directs users to a message board

where that name is offered for sale. Therefore, the Complainant contends

that the Respondent is not currently using the contested domain name

in connection with a bona fide offering of realty or real estate goods

or services.

Lastly, the Complainant contends that the contested domain name does

not reflect the name of the Respondent’s corporate identity nor does

the Respondent have any rights to any trade names or trademarks consisting

in whole or in part the marks "KW" or "KELLER WILLIAMS."

Thus, the Complainant concludes that the Respondent has no rights

or legitimate interests in the contested domain name pursuant to paragraph 4(a)(ii)

of the Policy.

iii. Bad Faith

The Complainant contends that, also for various reasons, the Respondent

has registered and is now using the contested domain name in bad faith.

First, the Complainant contends that by registering and using <kwrealtor.com>,

the Respondent has intentionally attempted to attract, for commercial

gain, Internet users to the Respondent’s web site by creating a likelihood

of confusion with the Complainant’s Marks as to the source, sponsorship,

affiliation, or endorsement of Respondent’s web site.

Specifically, as noted above, the Respondent’s web site <kwrealtor.com>

currently directs users to a web page under construction and provides

a link to a message board. The message board not only contains a number

of topics relating to the Complainant and its business, but also provides

a link to solicit offers (bids) from interested parties to purchase

the contested domain name. Further, while the December 21, 2001

correspondence, from the Respondent offered the contested domain name

for sale to the Complainant, no price was quoted. The Complainant

contends that implicit in that offer was the fact that the Respondent

sought compensation in excess of its registration costs. Hence, the

Complainant takes the position that the Respondent's acts in offering

to sell the contested domain name to third parties for an amount in

excess of the registration costs evidences bad faith under paragraph

4(a)(iii) of the Policy.

Additionally, the Complainant also contends that the Respondent is

also guilty of opportunistic bad faith. In that regard, the Respondent

registered the contested domain name while the Respondent's wife,

Paula Schatz, was a real estate agent for a Keller Williams licensee

in Indiana. Inasmuch as the Complainant did not permit the Respondent

to register any domain name that incorporated any of the Complainant's

Marks, the Complainant contends that the Respondent is holding the

contested domain name hostage to capitalize, in some fashion, on the

Respondent's wife’s prior association with the Complainant.

Further, the Complainant believes that, had it not been for the wife’s affiliation

with the Complainant, it is unlikely that the Respondent would have known that

the term "KW" was a mark affiliated with the Complainant’s business.

As noted, the mark "KW" is an arbitrary mark that neither suggests

nor describes any ingredient, quality or characteristic of the goods and services

offered under it. Hence, the Complainant contends that it is highly unlikely

that the Respondent happened by chance upon the letters "k" or "w"

or the words "keller" or "williams," let alone those words

combined with "realtor" to form the contested domain name <kwrealtor.com>.

Additionally, it also seems unlikely that the Respondent would happen upon that

combination of words to offer third party goods and services that are in direct

competition to those of the Complainant. The Complainant believes that this

is especially true since the Complainant had been using its Marks for over eighteen

years and its domain names for over six years prior to the Respondent’s registration

of the contested domain name. Therefore, the Complainant contends that the contested

domain name can only refer to the Complainant and no one else. In that regard,

the Complainant cites to Deutsche Bank AG v. Diego-Arturo Bruckner, D2000-0277

(WIPO May 30, 2000), in which the domain name there at issue, <deutsche-bank-ag.com>,

was held to be "so obviously connected with the Complainant and its services

that its very use by someone with no connection with the Complainant suggests

opportunistic bad faith." By analogy, as the domain name <deutsche-bank-ag.com>

was obviously connected with Deutsche Bank AG, so to, as the Complainant believes,

is the contested domain name, <kwrealtor.com>, obviously connected

with the Complainant, Keller Williams Realty, Inc. Thus, the Complainant contends

that the registration and use by the Respondent of the contested domain name

exhibits opportunistic bad faith; hence, apparently contravening paragraph 4(b)

of the Policy.

Moreover, the Respondent was originally using the Complainant’s "KW"

mark as a domain name to, in part, offer third party services in the

same business as and competitive with the Complainant. The Complainant

submits this as additional evidence of Respondent’s bad faith in registering

and using the contested domain name. In the Complainant's mind, the

fact that the Respondent has now altered its web site to offer the

domain name for sale does not negate the effect of the Respondent’s

original actions.

Therefore, the Complainant concludes that the Respondent's conduct

in registering and using the contested domain name constitutes bad

faith registration and use under paragraph 4(a)(iii) of the Policy.

B. Respondent

The Respondent has filed any substantive Response to the allegations raised

in the Complaint.

6. Discussion and Findings

In view of the lack of a Response filed by the Respondent as required under

paragraph 5 of the Rules, this proceeding has proceeded by way of default.

Hence, under paragraphs 5(e), 14(a) and 15(a) of the Rules, the Panel is

directed to decide this administrative proceeding on the basis of the Complainant's

undisputed representations. In that regard and apart from judging this proceeding

through mere default of the Respondent, the Panel makes the following specific

findings.

i. Similarity

The Panel finds that confusion would likely arise as a result of the

Respondent's current use of the contested domain name.

In that regard, the contested domain name includes the Complainant's

registered mark "KW" which has clearly acquired requisite secondary

meaning and distinctiveness as a result of the Complainant's apparently

continuous and rather extensive use since 1994, and particularly in conjunction

with its real estate brokerage and related services. There can be no question

here that the contested domain name, by virtue of its inclusion of the

term "KW", as currently used by the Respondent or by a third-party

to which the Respondent might transfer that name, will likely cause user

confusion.

The Panel takes notice of a very common propensity currently occurring amongst

the Internet user community regarding composite domain names. Specifically,

contemporary Internet naming conventions are such that a user who seeks to visit

a web site for an organization, but for which (s)he does not know the correct

domain name, that user will often form a domain name by combining a well-known

trademark or service mark associated with that entity with a generic word describing

the products or services offered by that entity. The user's expectation is that

this domain name will be an address of (or at least be automatically re-directed

to) and associated with the desired website, thus sending the user to what (s)he

wants to reach. Hence, in this case, it is well within reason for the Panel

to assume that various users seeking the Complainant's website, but do not know

its URL, will form an address by concatenating "KW" with "REALTORS",

then enter that address as a URL and see where they are taken. However, doing

so does not dispel user confusion, rather it likely exacerbates it. In view

of the Complainant's continuing activities in promoting its real estate brokerage

and related services -- which clearly predate, by at least 5 years, any of the

Respondent's activities in registering the contested domain name, this Panel

clearly finds that any Internet user familiar with the Complainant -- and when

confronted with the domain name <kwrealtor.com> would very likely, if

not reflexively think, that this name and there through the Respondent was affiliated

in some fashion with the Complainant -- when, in fact, no such relationship

exists. In fact, it is rather inconceivable to this Panel that any such user

would likely think otherwise. See, e.g., Viacom International, Inc. v. Matrix

Management and T. Parrott D2001-1442

(WIPO March 11, 2002); Park Place Entertainment Corporation v. Bowno

D2001-1410 (WIPO January 9, 2002); Meijer,

Inc. v. Porksandwich Web Services FA 97186 (Nat. Arb. Forum July 6, 2001);

MPL Communications v. LOVEARTH.net FA 97086 (Nat. Arb. Forum June 4,

2001); MPL Communications v. 1WebAddress.com FA 97092 (Nat. Arb. Forum

June 4, 2001); American Home Products Corp. v. Malgioglio D2000-1602

(WIPO February 19, 2001); Surface Protection Industries, Inc. v. The Webposters

D2000-1613 (WIPO February 5, 2001); Dollar

Financial Group, Inc. v. VQM NET FA 96101 (Nat. Arb. Forum January 25, 2001);

eBAY Inc. v. G L Liadis Computing, Ltd., and John L. Liadis D2000-1463

(WIPO January 10, 2001); Treeforms, Inc. v. Cayne Indus. Sales Corp.

FA 95856 (Nat. Arb. Forum December 18, 2000), and The Pep Boys Manny, Moe

and Jack of California v. E-Commerce Today, Ltd. AF-0145 (eResolution May

3, 2000).

Therefore, the Panel finds that the contested domain name <kwrealtor.com>

sufficiently resembles the Complainant's Marks as to cause confusion;

hence, the Complainant has shown sufficient similarity between these marks

and the contested domain name under paragraph 4(a)(i) of the Policy.

ii. Illegitimacy

Based on its federal trademark registrations, the Complainant has acquired

exclusive rights to use its Marks. Furthermore, by virtue of the registration

of these marks, the US Patent and Trademark Office has implicitly recognized

that each such mark is distinctive and has acquired appropriate secondary

meaning in the marketplace.

The Respondent has yet to provide any basis that would legitimize any

claim it has to the contested domain name. In fact, it is extremely unlikely

that the Respondent can ever make such a claim.

The simple reason is that the contested domain name includes the Complainant's

mark "KW" under which the Complainant provides its real estate

brokerage and related services and has been doing since 1994.

The Complainant has apparently never authorized the Respondent to utilize any

of its marks, nor does the Complainant have any relationship or association

whatsoever with the Respondent. Hence, any use to which the Respondent were

to put of the "KW" mark, including "KWREALTOR" (or the like)

in connection with the real estate brokerage and/or related services listed

in any of the Complainant's registrations would directly violate the exclusive

trademark rights now residing in the Complainant. Consequently, inasmuch as

the Respondent is not now nor has ever been commonly known by the mark "KW",

the Respondent's actions are in direct contravention of paragraph 4(c)(ii) of

the Policy. See, e.g., Viacom International, Inc. v. Matrix Management and

T. Parrott cited supra; Park Place Entertainment Corporation v. Bowno,

cited supra; Jones Apparel Group, Inc. v. Robin Sousa, WIPO Case No.

D2001-1308, December 21, 2001; America

Online, Inc. v. Curtis Wood, WIPO Case No. D2001-0555,

June 13, 2001; Treeforms, Inc. v. Cayne Industrial Sales, Corp. cited

supra; MSNBC Cable, LLC v. Tysys.com, WIPO Case No. D2000-1204,

December 8, 2000; and Cabletron Systems, Inc. v. DLS Enterprises, WIPO

Case No. D2000-0571, August 18, 2000.

As such, the Respondent's conduct violates paragraph 4(c)(ii) of the Policy.

Further, this Panel clearly finds that the Respondent, in using the contested

domain name that identically incorporates the Complainant's registered

"KW" mark, is intentionally seeking to exploit user confusion

by diverting Internet users away from the Complainant's site to the Respondent's

own website for the latter's own benefit. Whether that benefit is, as

the Complainant surmises, to hold the contested domain name hostage and

by doing so capitalize, in some fashion, on the Respondent's wife’s prior

association with the Complainant -- for whatever business advantages that

might yield, or just to preclude the Complainant from obtaining that name

unless it remits a sufficiently large sum to purchase the name, the ultimate

effect is the same: the Respondent reaps financial benefit. If this was

not the case, why else would the Respondent have chosen a domain name

that misappropriates and identically includes the Complainant's "KW"

mark, particularly when the initials KW do not identify and have absolutely

no linkage with the Respondent's present, but competitive, business, if

the Respondent had no intention to commercially benefit from doing so?

Since the Respondent has failed to file a Response, the Panel infers,

pursuant to paragraph 14(b) of the Rules, that there is no other reason.

Hence, the Respondent's actions directly contravene paragraph 4(c)(iii)

of the Policy.

In light of the above findings, the Panel is not persuaded that the Respondent

has any or, based on current facts provided to the Panel, is likely to

acquire any rights or legitimate interests in the contested domain name

under any provision of paragraph 4(c) of the Policy.

Thus, the Panel finds that the Respondent has no rights or legitimate

interests in the contested domain name within paragraph 4(a)(ii) of the

Policy.

iii. Bad Faith

The Panel firmly believes that the Respondent's actions constitute bad

faith registration and use of the contested domain name.

Given the prior association which the Respondent's wife had with the Complainant

and the widespread recognition that the Complainant's Marks have achieved, it

is simply strains reason to think that the Respondent was not intimately familiar

with the Complainant's Marks when the Respondent registered the contested domain

name. This is particularly evident since the Complainant has been using its

"KW" mark on a widespread basis for approximately five years prior

to the October 1999, date on which the Respondent registered the contested name

and in connection with the very services which the Respondent's wife had been

offering, i.e. real estate brokerage, as a sales agent for one of the Complainant's

licensees in Indiana. There can be no doubt that the Respondent's actions were

motivated by its own self-serving goal of financially enriching themselves at

the expense of the Complainant either as a direct result of the user confusion

that would inevitably arise or the Complainant acting, in its own self-interest

to prevent such confusion and concomitant injury, by being forced to purchase

the contested domain name from the Respondent for a sum well in excess of the

costs of its registration. The Panel views such opportunistic registration of

the contested domain name as indicative of bad faith registration and the subsequent

use of that domain name by the Respondent in an effort to attain such benefit

as bad faith use, both collectively actionable under paragraph 4(b)(iv) of the

Policy. See, e.g., Viacom International, Inc. v. Matrix Management and T.

Parrott cited supra; Novus Credit Services Inc. v. Personal

D2000-1158 (WIPO November 29, 2000), and

Guinness UDV North America v. Lewis, cited supra.

Thus, the Panel concludes that the Complainant has provided sufficient proof

of its allegations to establish a prima facie case under paragraph 4(a) of the

Policy upon which the relief it now seeks can be granted.

7. Decision

Accordingly, under paragraphs 4(i) of the Policy and 15 of the Rules, the

Panel now grants the relief sought by the Complainant.

The contested domain name, specifically <kwrealtor.com>, is ordered transferred

to the Complainant.

Peter L. Michaelson, Esq.

Sole Panelist

Dated: March 29, 2002

More cases by this complainant

• Keller Williams Realty, Inc. — D2001-1326 · Terminated
• Keller Williams Realty, Inc. v. Fusion Marketing — D2001-1266 · kellerwilliamsuniversity.com · Transfer · 15 Mar 2002