Over the years many persons including licensed real estate agents and brokers have sought to incorporate the word “REALTOR” into their domain name. The National Association of Realtors® (NAR) is very protective of its trademarked term of “REALTOR”.
Recently a couple registered various domain names containing the term “REALTOR” in the name. Some examples were <realtoreview.com>, <realtorranking.net> and <realtorreportcard.net>. All of the subject domain names in question were in turn linked to the registrants’ website that was called “REALTOR REVIEW®.”
NAR has a number of trademark registrations related to the REALTOR mark (the blue square with a gold “R” inside of it) and owns various domain names such as <realtor.com> and <realtor.org>. In turn, NAR grants a limited license to its members to use the REALTOR® mark subject to certain restrictions.
NAR, upon learning of the attempted registration of the poaching domain names filed an application with the United States Patent & Trademark Office (USPTO) seeking denial of the Registrants’ application. NAR also filed a complaint with the World Intellectual Property Organization (WIPO) claiming Registrants’ application was submitted in bad faith and sought the right to have the Registrants’ proposed names turned over to NAR as its property.
The Internet Corporation for Assigned names and Numbers (ICANN) is responsible for the management of certain domain names such as .com and .org. ICANN appointed WIPO as the body to resolve disputes such as the one in question.
WIPO ruled that NAR had met all the requirements for the transfer of the domain names and ordered the disputed trade names be turned over to NAR. NAR sufficiently demonstrated that the Registrants did not have a legitimate right or interest to use the domain names. They were not members of NAR and did not have a license to use the term REALTOR. They also created a false impression by including the “®” symbol on their website page when in fact USPTO had previously rejected their attempt to register the mark. Therefore it ruled the Registrants had acted in bad faith. As a result the panel ordered that all sixteen (16) domain names in dispute be turned over to NAR. The moral is “don’t abuse the word REALTOR”. NAR is very, very protective of its valuable property right in that word and mark.
