12th Feb 2010

NATIONAL ARBITRATION FORUM

 DECISION

 The Realty Alliance v. Vertical Axis Inc.

Claim Number: FA0912001296997

 

PARTIES

Complainant is The Realty Alliance (“Complainant”), represented by Elizabeth S. Sobotka, Minnesota, USA. Respondent is Vertical Axis Inc.(“Respondent”), represented by Ari Goldberger, of Esqwire.com Law Firm, New Jersey, USA.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <realtyalliance.com>, registered with Nameview.

PANEL

The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.

The Hon. Neil Brown QC, Judge James A. Carmody and Alan L. Limbury Esq., as Panelists.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 3, 2009.

On December 4, 2009, Nameview confirmed by e-mail to the National Arbitration Forum that the <realtyalliance.com> domain name is registered with Nameview and that the Respondent is the current registrant of the name. Nameview has verified that Respondent is bound by the Nameview registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

On December 16, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 5, 2010 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@realtyalliance.com by e-mail.

Respondent was granted an extension to file its Response until January 15, 2010.

Respondent’s Response was received in electronic copy only on January 15, 2010 and the fee was paid after this deadline. However, in that no hard copy was received by the Response deadline and the fee not timely paid, the Response is considered deficient under ICANN Rule 5. Nevertheless, in the interests of fairness, the Panel has had regard to the Response.

On January 30, 2010, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed The Hon. Neil Brown QC, Judge James A. Carmody and Alan L. Limbury Esq., as Panelists.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

  1. Complainant

The Complainant claims that it has trademark rights based upon its corporate name, The Realty Alliance, Inc., incorporated in Delaware in 1997 and registered with Texas Secretary of State in 2006; that the disputed domain name is confusingly similar to the “THE REALTY ALLIANCE” mark; and that the Respondent has no rights or legitimate interests in the disputed domain name, which was registered and is being used in bad faith.

  1. Respondent

The Respondent disputes all of the Complainant’s contentions.

In particular, the Respondent says Complainant does not have a registered trademark for the term THE REALTY ALLIANCE, alleging that its mark is “based upon the name of the corporation.” A corporate name, however, does not provide rights under the Policy, and Complainant calling it a trademark does not make it one. The fact is that Complainant has never claimed trademark rights to this term. There is no (sm) or ™ next to the term on its web site. The only evidence Complainant has put forward is a 1997 news article from REALTOR. Such publicity does not establish Complainant has common law rights to this term. In order to do so Complainant would have to establish secondary meaning, i.e. that it is the exclusive or nearly exclusive party consumers associate with the term “realty alliance.”

FINDINGS

The Complainant has failed to establish that it has trademark rights in the name THE REALTY ALLIANCE. The Panel finds the Complainant to have attempted to engage in Reverse Domain Name Hijacking.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this 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 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.

Rights in a trademark

The Complainant does not claim to have any registered trademark. Accordingly, the Complainant cannot succeed unless it can demonstrate that it has trademark rights at common law. As stated by the Respondent, the only evidence relied upon by the Complainant in support of its assertion that it has “employed the Mark continuously and conspicuously throughout the country and internationally since 1997” is a 1997 news article announcing the formation of an alliance of real estate brokers under that name. This is insufficient to establish the distinctiveness and secondary meaning required at common law to give rise to trademark rights.

Accordingly, this Complaint must fail. It is unnecessary for the Panel to consider the other elements required to be proved in order to entitle the Complainant to any relief.

Reverse Domain Name Hijacking

From the failure of the Complainant to put forward any evidence that the alleged mark has been used by the Complainant in such a way as to become distinctive of its services the Panel infers that the Complainant was aware, when it filed the Complaint, that there is no such evidence. It follows that this Complaint was brought in bad faith in an attempt to harass the Respondent and that; accordingly, the Complainant has attempted to engage in Reverse Domain Name Hijacking.

DECISION

The Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

Alan L. Limbury, Presiding Paneli 

The Hon. Neil Brown QC, Panelist                                                                                                            Judge James A. Carmody, Panelist

Dated: February 12, 2010.

NATIONAL ARBITRATION FORUM