Lyft, Inc. v. ATHAN PATOULAS / COM HOTEL SEVICES inc
Claim Number: FA2012001924123
Complainant is Lyft, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is ATHAN PATOULAS / COM HOTEL SEVICES inc (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lyftpartnernyc.com> (the “disputed domain name”), registered with ENARTIA S.A.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 7, 2020; the Forum received payment on December 7, 2020.
On December 9, 2020, ENARTIA S.A. confirmed by e-mail to the Forum that the <lyftpartnernyc.com> disputed domain name is registered with ENARTIA S.A. and that Respondent is the current registrant of the name. ENARTIA S.A. has verified that Respondent is bound by the ENARTIA S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lyftpartnernyc.com. Also on December 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 5, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the disputed domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the LYFT trademark since at least as early as May 30, 2012 to promote its on-demand ridesharing network. Complainant has rights in the LYFT trademark through Complainant’s registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,686,618, registered February 17, 2015) (hereinafter referred to as the “LYFT Mark”.
Respondent’s disputed domain name is identical or confusingly similar to Complainant’s LYFT Mark, Respondent lacks rights or legitimate interests in the disputed domain name, and Respondent registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that Complainant has registered trademark rights in the LYFT Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to the Complainant’s LYFT Mark, Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of 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 Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Panel finds that Complainant has rights in the LYFT Mark through Complainant’s registration of the trademark with the USPTO (e.g., Reg. No. 4,686,618, registered February 17, 2015). Registration of a mark with the USPTO confers upon a complainant trademark rights for purposes of the Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”)
The Panel also finds that Respondent’s disputed domain name is confusingly similar to the LYFT Mark under Policy ¶ 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, adds the descriptive term “partner” and abbreviation “nyc”, an abbreviation for New York City, and is followed by the generic Top-Level Domain (“gTLD”) “.com”. Many panels have found that adding an abbreviation to a registered trademark renders the domain name confusingly similar to a complainant’s mark. See, e.g., Nordstrom, Inc. and NIHC, Inc. v. Steven Grotte, Case No. FA0207000115347 (Forum Aug. 26, 2002) (transferring the <nordstrominc.com> and <nordstromsinc.com> domain names to the complainant). The addition of a dictionary term and a gTLD also does not distinguish a disputed domain name from a trademark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (confusing similarity exists where a disputed domain name contains a complainant’s entire mark and differs only by the addition of a dictionary term and Top-Level Domain; the differences between the domain name and its incorporated trademark are insufficient to differentiate one from the other for purposes of the Policy).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been established by Complainant.
In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show that it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Here, the Panel holds that Complainant has made out a prima facie case.
The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name as Respondent has not provided evidence nor proven that it is commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LYFT Mark. Moreover, Respondent has no relationship, affiliation, connection, endorsement or association with Complainant.
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy.
Respondent attracts Internet users for commercial gain by using the disputed domain name to pass itself off as Complainant and to disrupt Complainant’s business, indications of bad faith. Passing off as Complainant for commercial gain demonstrates bad faith under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). Here, Respondent is engaging in the impersonation of Complainant by copying Complainant’s website with the only conceivable explanation being to engage in nefarious conduct and deceive users.
Moreover, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the LYFT Mark at the time of registration. Under Policy ¶ 4(a)(iii), actual knowledge of rights in a mark is considered sufficient to establish bad faith registration, and may be demonstrated by Respondent where, as here, it incorporates a registered mark into a disputed domain name. Bad faith is also exhibited when a Respondent’s use of a disputed domain name to resolve to a website that impersonates Complainant’s website and uses Complainant’s trademarks on that website. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Specifically, Respondent prominently displays on its website Complainant’s LYFT Mark and the signature pink and purple hues that Complainant uses to identify its services. Further, the content on the website, including images of vehicles and phones accompanied by offers for partnership, are similar to that displayed on Complainant’s website. The website associated with the disputed domain name requests that users “become a driver” and displays what purports to be a Bank of America checking account and routing number before requesting identifying personal and confidential information. Such impersonation of Complainant’s website and use of a phishing scheme by Respondent clearly demonstrates its bad faith. Respondent cannot credibly claim to have been unaware of the LYFT Mark before registering and using the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by Complainant.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lyftpartnernyc.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: January 19, 2021
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