marthaagottfried.com

The Complainant is Martha A. Gottfried, Inc. of Palm Beach, Florida, United States of America, represented by Edwards & Angell, LLP of United States of America.

The Respondent is Martin I. Klein of New York, NY, United States of America, represented by Kramer, Ali, Fleck, Hughes Gelb & Bornstein, Esqs. of United States of America.

The disputed domain name <marthaagottfried.com> is registered with Easyspace.

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on January 28, 2003. On January 29, 2003, the Center transmitted by email to Easyspace a request for registrar verification in connection with the domain name at issue. On February 4, 2003, Easyspace transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was February 25, 2003. The Response was filed with the Center on February 24, 2003.

The Center appointed Nels T. Lippert as the Sole Panelist in this matter on February 27, 2003. 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 the Rules, paragraph 7.

Following receipt of communication from the Complainant that the disputed domain name may be voluntarily transferred, the Center, on March 13, 2003, directed that the Complainant would have until March 21, 2003, to forward a suspension request to the Center for the Panel’s consideration. Having not received a suspension request, the Center set April 9, 2003, for Decision.

On January 29, 2002, the United States Patent and Trademark Office issued a Certificate of Registration, No. 2,533,885 for the mark "MARTHA A. GOTTFRIED, INC." in International Class 36 for real estate brokerage services. The registration was issued to the Complainant and claims first use since January 1980. The application for this service mark registration was filed on September 22, 2000.

Respondent Martin I. Klein was formerly associated with Complainant and served as Complainant’s General Counsel and real estate associate.

On July 11, 2000, Respondent terminated his relationship with Complainant and, on the same day announced formation of a competing business.

The disputed domain name was registered by Respondent on July 25, 2000.

The Complainant contends that the domain name is almost identical to and as confusingly similar to Complainant’s registered service mark.

The Complainant notes that the Respondent was Complainant’s former General Counsel and real estate associate and was, therefore, well aware of the "MARTHA A. GOTTFRIED, INC." service mark long before he registered the disputed domain name. The Complainant further contends that the "MARTHA A. GOTTFRIED, INC." service mark has been utilized by the Complainant for many years and has become synonymous with the real estate brokerage firm and related services provided by Complainant. Therefore, the Respondent has no right or legitimate interest in the disputed domain name.

Respondent’s registration of the disputed domain name which is almost identical to or confusingly similar to Complainant’s service mark is a bad faith registration as Respondent had no legitimate interest in the domain name and continues to have no legitimate interest in the domain name.

Complainant also notes that this not the first time that Respondent had registered a domain name in which he had no legitimate rights and has cited the registration of a domain name <pamhoffpauer.com> which he subsequently transferred to a Pam Hoffpauer another principal of Complainant. Complainant has also noted several domain names that have been registered by the Respondent that are confusingly similar to domain names registered by Complainant.

The Respondent contends that registration of the disputed domain name was before registration of Complainant’s service mark and therefore could not have been registered in bad faith. Respondent further contends that he has never used the disputed domain name and therefore the use of the name could not be in bad faith.

The Respondent does not materially contest any of the other allegations of the Complainant and, in fact indicates a willingness to transfer the disputed domain name upon reimbursement for actual costs of the registration and annual fees for the years involved.

The disputed domain name incorporates a substantial part of Complainant’s registered service mark. That portion not included within the domain name is the abbreviation "Inc" which is disclaimed in the service mark registration. Therefore, the Panel finds that the disputed domain name is identical or confusingly similar to the Complainant’s registered service mark.

The Panel finds that the Respondent has no right or legitimate interest in the disputed domain name. At the time the domain name was registered, Respondent had terminated his relationship with the Complainant and, therefore, would not have any rights stemming from that relationship.

The Respondent does not contest the Complainant’s contention that the Respondent is not known by or permitted to use the disputed name or Complainant’s service mark. Indeed, by the explanation given by Respondent it appears that he admits he has no rights or legitimate interest in the domain name.

The Panel finds that the Respondent registered the disputed domain name in bad faith. There is no question that the domain name was registered shortly after Respondent terminated the relationship with Complainant and formed a competing business. The technicality suggested by Respondent that the Complainant’s service mark was not registered until after registration of the domain name is without merit. From Respondent’s relationship, particularly as General Counsel, he knew or should have known Complainant’s claim of service mark rights in the mark in question. Furthermore, registration of a trademark is not required to establish trademark rights. The mark in question has indisputably been used for many years and was in use at the time Respondent had a business relationship with Complainant.

Respondent notes that the disputed domain name has not been put in use. However, that does not rebut the allegation of bad faith use. Passive use has often been held to constitute bad faith particularly in fact situations such as we have here where a Respondent is operating a competitive business and does not seriously dispute Complainant’s service mark rights.

Respondent’s offer to transfer the disputed domain name does not resolve this issue. While the Center and this Panel has given Respondent the opportunity, the disputed domain name apparently was not transferred as promised. Accordingly, it can only be concluded that maintenance of the disputed domain name by the Respondent is in order to prevent the Complainant from reflecting the mark in the corresponding domain name or for the purpose of disrupting the business of a competitor, namely the Complainant.

Accordingly, the Panel finds that the disputed domain name has been used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <marthaagottfried.com> be transferred to the Complainant.