My Pet Cab, LLC v. Mike Davis
Claim Number: FA2204001992458
Complainant is My Pet Cab, LLC (“Complainant”), represented by Staci R. DeRegnaucourt of Varnum LLP, Michigan, USA. Respondent is Mike Davis (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starwood-animaltransport.com> (“Domain Name”), registered with NameCheap, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2022; the Forum received payment on April 14, 2022.
On April 15, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <starwood-animaltransport.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. 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 April 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2022 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@starwood-animaltransport.com. Also on April 18, 2022, 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 May 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant, My Pet Cab, LLC, provides pet transportation services. Complainant has common law rights in the STARWOOD mark based upon its long, continuous use of the mark. The <starwood-animaltransport.com> domain name is confusingly similar to Complainant’s mark because Respondent has incorporated the entire mark and added a hyphen, the words “animal transport” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <starwood-animaltransport.com> domain because Respondent is not commonly known by the Domain Name and is not authorized to use Complainant’s STARWOOD mark. Additionally, Respondent fails to use the Domain Name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the Domain Name to pass itself off as affiliated with Complainant.
Respondent has registered and uses the <starwood-animaltransport.com> domain name in bad faith because Respondent registered and uses the Domain Name to pass itself off as affiliated with Complainant for bad faith attraction for commercial gain. In addition, Respondent had actual knowledge of Complainant’s rights in the STARWOOD mark (and Complainant’s other marks, such as STARWOOD ANIMAL TRANSPORT and MY PET CAB) prior to registering the Domain Name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the STARWOOD mark. The Domain Name is confusingly similar to Complainant’s STARWOOD mark. Complainant has established that Respondent lacks rights or legitimate interests in the Domain Name and that Respondent registered and has used the Domain Name 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 domain name should be cancelled or transferred:
(1) the 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 domain name; and
(3) the 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”).
While Complainant has a trade mark application for the STARWOOD mark with the USPTO, an application to register a mark with the USPTO is generally not sufficient to establish rights in that mark. See Jireh Industries Ltd. v. DVLPMNT MARKETING, INC. / Domain Administrator, FA 1719671 (Forum Apr. 14, 2017) (“Pending trademark applications do not confer rights under Policy ¶ 4(a)(i).”).
As Complainant does not have any registered trade mark rights it is therefore necessary to consider whether Complainant holds common law rights in the STARWOOD mark as Policy ¶ 4(a)(i) does not require a complainant to hold a registered trademark if it can demonstrate established common law rights in the mark. See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017). To establish common law rights in a mark, a complainant generally must prove that the mark has generated a secondary meaning. See Goodwin Procter LLP v. Amritpal Singh, FA 1736062 (Forum July 18, 2017) (holding that the complainant demonstrated its common law rights in the GOODWIN mark through evidence of “long time continuous use of the mark, significant related advertising expenditures, as well as other evidence of the mark’s having acquired secondary meaning.”).
Complainant has offered an animal transportation service under the STARWOOD mark since May 2021, however it has acquired the business and goodwill of its predecessor in title who first provided animal transportation services under the STARWOOD mark in 1988. The Complainant and its predecessor in title have advertised their animal transportation services under the STARWOOD mark from their website at www.starwoodanimaltransport.com (“Complainant’s Website”) since 2004. While the Complainant does not provide any significant evidence of sales or advertising (beyond the Complainant’s Website) of services under the STARWOOD mark, the Panel is satisfied from the evidence in the Complaint and on the Complainant’s Website as to length and manner of use that Complainant’s use of the STARWOOD mark to offer animal transport services is sufficient to establish secondary meaning in that mark and hence Complainant has common law rights in the STARWOOD mark for the purposes of Policy ¶ 4(a)(i).
In support of the above conclusion the Panel notes that section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition states that “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” Such a situation has emphatically occurred in the present case where Respondent seeks to take advantage of people’s familiarity with Complainant and its mark by posing as Complainant.
The Panel finds that the Domain Name is confusingly similar to the STARWOOD mark as it incorporates the entire STARWOOD mark while adding a hyphen, the words “animal transport” and the “.com” gTLD. Domain names which incorporate an entire mark are usually considered confusingly similar, while adding hyphen, generic words and a gTLD is generally insufficient to create a distinction between a complainant’s mark and a disputed domain name under Policy ¶ 4(a)(i). See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. 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 Domain Name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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.”). The Panel holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Domain Name, nor has Complainant authorized Respondent to use the STARWOOD mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS information of record lists “Mike Davis” as the registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation or authorization between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (“Respondent’s Website”) which, through the reproduction of the STARWOOD mark, other marks owned by Complainant and copyrighted material (including photos of Complainant’s employees) from Complainant’s Website, passes itself off as an official website of the Complainant for the purpose of offering unauthorized versions of Complainant’s services, in direct competition with Complainant’s services. The use of a confusingly similar domain name to resolve to a webpage that directly offers unauthorized versions of a complainant’s services does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use; indeed it provides a false impression that the Respondent is affiliated with or authorized by Complainant. See BALENCIAGA SA v. ling lin, FA 1768542 (Forum Feb. 16, 2018) (“The disputed domain names incorporate Complainant's registered mark, and are being used for websites that prominently display Complainant's mark and logo, along with apparent images of Complainant's products, offering them for sale at discounted prices. The sites do not disclaim any connection with Complainant, and in fact seem to be designed to create an appearance of such a connection. Such use does not give rise to rights or legitimate interests.”). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds on the balance of probabilities that, at the time of registration of the Domain Name (November 23, 2021), Respondent had actual knowledge of Complainant’s STARWOOD mark since the Respondent’s Website passes itself off as an official website of the Complainant including reproducing copyrighted material from Complainant’s Website. Furthermore, there is no obvious explanation, nor has one been provided, for an entity to register a domain name that contains the STARWOOD mark and use it to redirect visitors to a website offering services in direct competition with the Complainant under the STARWOOD mark other than to take advantage of Complainant’s reputation in the STARWOOD mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and uses the Domain Name in bad faith to create confusion with Complainant’s STARWOOD mark for commercial gain by using the confusingly similar Domain Name to resolve to a website that mimics Complainant’s website and purports to offer unauthorized versions of Complainant’s services in direct competition with the Complainant’s services. Using a confusingly similar domain name to trade upon the goodwill of a complainant can evince bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). See also 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.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starwood-animaltransport.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: May 17, 2022
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