Read the full decision: National Association of REALTORS® v. Schermerhorn
An administrative law judge has considered NAR’s challenge to a series domain names registered by a nonmember entity using the term “REALTOR”.
John and Tara Schermerhorn of National Network LLC (collectively, “Registrants”) registered 16 domain names that contained the term “REALTOR”. Most of the names contained a variation of the name <realtoreview.com> as well as including other domain names like <realtorranking.net> and <realtorreportcard.net>. All of the domain names linked to the Registrants’ website that was entitled “REALTOR REVIEW®”. The website claimed to help consumers learn more about real estate professionals and also attempted to have real estate professionals create accounts to “demonstrate their experience”.
NAR has several trademark registrations related to the REALTOR mark, and owns the domain <realtor.com> and <realtor.org>. Members of NAR receive a limited license to use the REALTOR® mark, as set forth in NAR’s rules for trademark usage.
In 2013, the Registrants filed an application with the United States Patent & Trademark Office (“USPTO”) seeking to register “Realtor Review” as a mark. NAR filed a letter of protest, and the USPTO denied the Registrants’ application on the grounds that the proposed registration would cause confusion with NAR’s marks because of its similarity to NAR’s marks and also because the proposed registration also involved the real estate industry.
NAR then filed a complaint with the World Intellectual Property Organization (“WIPO”), alleging that the Registrants had registered their 16 domain names incorporating the REALTOR mark in bad faith and sought the turnover of the domains to NAR. The Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for management of top level domains such as .com, .net and .org, has appointed WIPO as the body to resolve disputes involving domain names containing a trademarked term. The WIPO procedure allows a hearing panel to consider whether the domain should be transferred, canceled, or remain with the respondent. The panel decisions require domain name registrars to take the necessary steps to enforce a decision, such as transferring the name concerned. To learn more about WIPO, click here.
The WIPO hearing panel ruled that NAR had satisfied the criteria necessary for the transfer of domain names and so ordered the domain names transferred to NAR. In order to seek a domain name turnover, a trademark holder needs to demonstrate the following: 1) the domain names are identical or confusingly similar to the trademark; 2) owner of domain names has no rights or legitimate interest in the domain names; and 3) the domain names were registered and are being used in bad faith.
The panel ruled that NAR had established that the 16 domain names were confusingly similar to the REALTOR® marks. Showing that a domain name contains the trademark can be sufficient to establish that the domain name is identical or confusingly similar. For the three domain names that used “realtoreview” within the domain, the Registrants tried to argue that they hadn’t used the REALTOR mark and instead these domains should be read as “real to review”. The court rejected this argument, finding that it was “highly implausible” that the domain name which linked to a website entitled “Realtor Review” should be read as “real to review”.
The panel also determined that NAR had established that the Registrants did not have a legitimate right or interest to use the domain names. The Registrants are not members of NAR, and do not have a license to use the term REALTOR. They also create a false impression by including the “®” on their website page, when in fact the USPTO had rejected their attempt to register the mark. While the Registrants certainly could create a website offering the services it seeks to offer consumers, the Registrants could not use NAR’s marks in its domain names.
Finally, the panel stated that NAR had demonstrated that the Registrants had registered the domain names in bad faith. The panel determined that the Registrants had attempted to benefit commercially through their use of NAR’s marks by creating a likelihood of confusion over the nature of the Registrants’ relationship with NAR. Thus, the panel ordered that all 16 of the Registrants’ domains be turned over to NAR.
National Ass’n of REALTORS® v. Schermerhorn, No. D2013-2116 (WIPO Arb. & Med. Ctr. Feb. 2, 2014).