U-Haul International, Inc. v. Steven Freed
Claim Number: FA0201000103878
Complainant is U-Haul International, Inc., Phoenix, AZ (“Complainant”) represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro, LLP. Respondent is Steven Freed, Tarzana, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ucalluhaul.com> registered with Network Solutions, <call-uhaul.com>, <u-callu-haul.com>, <u-calluhaul.com>, and <calluhaul.com>, registered with Go Daddy Software.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as Panelist in this proceeding.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 16, 2002; the Forum received a hard copy of the Complaint on January 22, 2002.
On January 17, 2002, Network Solutions confirmed by e-mail to the Forum that the domain name <ucalluhaul.com> is registered with Network Solutions and that Respondent is the current registrant of the name. On January 17, 2002, Go Daddy Software confirmed by e-mail to the Forum that the domain names <call-uhaul.com>, <u-callu-haul.com>, <u-calluhaul.com>, and <calluhaul.com> are registered with Go Daddy Software and that Respondent is the current registrant of the names. Network Solutions and Go Daddy Software have verified that Respondent is bound by the Network Solutions and Go Daddy Software registration agreements and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 13, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, and email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On February 18, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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.” 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 names be transferred from the Respondent to the Complainant.
1. Respondent’s domain names are confusingly similar to Complainant’s mark U-HAUL. All five domain names in dispute simply add “call,” “u-call,” or “u call” before Complainant’s U-HAUL mark. Since the prefixes are short hand for “you call,” which can be considered a generic term, the domain names in dispute are confusingly similar to Complainant’s mark U-HAUL.
2. Because Respondent is not commonly known by any of the disputed domain names, its passive holding of domain names, which incorporate a world famous trademark is not a bona fide offering of goods or services, and does not demonstrate a legitimate noncommercial or fair use. Respondent does not have rights to or legitimate interests in any of the disputed domain names.
3. Respondent’s multiple registrations of Complainant’s famous mark permits the inference that Respondent was aware of Complainant’s mark prior to registering the disputed domain names, which can be considered bad faith. Further, Respondent’s passive holding of the disputed domain names is also evidence that Respondent’s registration and use of the domain names are in bad faith.
No Response was received.
Since the 1940’s, Complainant has used the trademark U-HAUL in connection with the rental of moving equipment and storage space, the rental and sale of related goods, and other services in interstate commerce. Complainant owns the following federally registered trademarks: (1) U-HAUL, Registration Number 746,034, registered February 26, 1963; (2) U-HAUL (Stylized), Registration Number 786,156, registered March 2, 1965; (3) U-HAUL, Registration Number 795,733, registered September 7, 1965; (4) U-HAUL, Registration Number 893,891, registered June 30, 1970; (5) U-HAUL’S HOUSEHOLD MOVING and Design, Registration Number 1,023,924, registered October 28, 1975; (6) RENT IT ALL AT U-HAUL, Registration Number 1,432,341, registered March 10, 1987; (7) U-HAUL and Design, Registration Number 1,023,923, registered October 1975; (8) U-HAUL HAS IT ALL, Registration Number 1,609,442, registered August 7, 1990; (9) 1-800-GO-U-HAUL, Registration Number 1,965,385, registered April 2, 1996; (10) U-MOVE U-STORE U-HAUL RENTALS and Design, Registration Number 1,127,296, registered December 4, 1979; (11) U-HAUL MOVING AND STORAGE and Design, Registration Number 1,085,695, registered February 14, 1978; (12) U-HAUL, Registration Number 1,861,196, registered November 1, 1994; (13) U-HAUL SPORT, Registration Number 2,209,007, registered December 8, 1998; and (14) U-HAUL MOVING CENTER, Registration Number 2,262,059, registered July 20,1999. Complainant has been using <u-haul.com> since November 1996 to conduct business online, allowing customers to make reservations, find U-HAUL locations, get rates, and to serve as the company's online contact with consumers.
For decades, U-HAUL has provided individuals and families an economical and convenient means for moving and storing their personal possessions. U-HAUL has more than 16,000 locations in the United States and Canada and a rental fleet of approximately 84,000 trucks and 86,000 trailers. As such, Complainant has spent substantial time, money and effort over the last fifty years to develop enormous goodwill in the U-HAUL name among its customers.
Respondent registered <ucalluhaul.com> on April 30, 2001. Respondent registered <call-uhaul.com>, <u-callu-haul.com>, <u-calluhaul.com>, and <calluhaul.com> on May 4, 2001. There is no evidence that Respondent has ever used or plans to use the disputed domain names in connection with any goods or services.
Complainant sent a cease and desist letter to Respondent via U.S. mail on August 1, 2001 and again by e-mail on September 5, 2001. No response to either request was received by Complainant.
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.”
In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the 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.
Identical and/or Confusingly Similar
Complainant has established its rights in the U-HAUL family of marks. The domain names in dispute are confusingly similar to Complainant’s mark. In the disputed domain names, Respondent incorporates Complainant’s mark in its entirety. Further, the addition of “ucall” and “call” as a prefix to the distinctive mark does not diminish the confusing similarity between the mark and the domain names in dispute. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also U-Haul International, Inc. v. Harold R. Brown II a/k/a Ted Waitt, FA 99482 (Nat. Arb. Forum Oct. 4, 2001) (finding that since “urn2” is a generic prefix, Respondent’s domain names <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org> are confusingly similar to Complainant’s U-HAUL mark); see also America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has established its rights in U-HAUL. Respondent has failed to file a Response in the matter. It is well established that when Respondent fails to file a response, the Panel will presume that Respondent has no rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Based on the evidence provided, the Panel presumes that Respondent has not used the disputed domain names in connection with an active website. Respondent’s use does not demonstrate that it has used the disputed domain names in connection with a bona fide offering of goods or services and, thus, has failed to satisfy Policy ¶ 4(c)(i). See Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000) (finding that Respondent’s failure to develop the site demonstrates Respondent has not used the domain name in connection with a bona fide offering of goods or services).
Complainant has held the rights to U-HAUL for nearly forty years and has subsequently spent a lot of money and effort maintaining its famous mark; it is difficult to imagine that another entity could possibly be commonly known by any of the domain names in dispute other than Complainant. Because Respondent has not provided any evidence to the contrary, it has failed to satisfy Policy ¶ 4(c)(ii). See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding that no person besides Complainant could claim a right or a legitimate interest with respect to the domain name <nike-shoes.com>); see also Strojirny v. Rautiainen, D2000-1394 (WIPO Dec. 20, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where Respondent is not commonly known by the distinct ADAST mark and has made no use of the domain name in question).
There is no evidence that Respondent has planned or is planning to use the disputed domain names. Currently they are “under construction.” Thus, Respondent is not making a legitimate noncommercial or fair use of the disputed domain names and therefore, Respondent has not satisfied Policy ¶ 4(c)(iii). See Media West-GSI, Inc., & Gannett Satellite Info. Network, Inc. v. Macafee, D2000-1032 (WIPO Oct. 6, 2000) (finding no rights and legitimate interests where Respondent was not commonly known by the BASEBALL WEEKLY mark and made no use of the domain name other than to state that the “web site for domain name BASEBALLWEEKLY.COM is under construction”); see also American Home Prod. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where Respondent merely passively held the domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Because of the fame attained by Complainant’s mark, the Panel can presume that Respondent knew of U-HAUL before registering the disputed domain names. Since Respondent has used the disputed domain passively and has not responded to Complainant’s cease and desist requests, the Panel finds that Respondent has used the disputed domain names primarily for the purpose of disrupting Complainant’s business. Therefore, Respondent has registered and used <ucalluhaul.com>, <call-uhaul.com>, <u-callu-haul.com>, <u-calluhaul.com>, and <calluhaul.com> in bad faith pursuant to Policy ¶ 4(b)(iii). See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name "winegallo.com"); see also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the Respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain names <ucalluhaul.com>, <call-uhaul.com>, <u-callu-haul.com>, <u-calluhaul.com>, and <calluhaul.com> be transferred from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: March 1, 2002
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