Yarosh Brothers, LLC v. Junk My Cars
Claim Number: FA0707001048718
Complainant is Yarosh Brothers, LLC (“Complainant”), represented by Fred
H. Perkins of Morrison Cohen LLP, 909 Third Avenue,
New York, NY, 10022. Respondent
My Cars (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <junkmycars.com>, registered with Tucows Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically July 30, 2007; the National Arbitration Forum received a hard copy of the Complaint July 31, 2007.
On July 31, 2007, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <junkmycars.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 3, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 23, 2007, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 29, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:
1. The domain name that Respondent registered, <junkmycars.com>, is confusingly similar to Complainant’s JUNKMYCAR mark.
2. Respondent has no rights to or legitimate interests in the <junkmycars.com> domain name.
3. Respondent registered and used the <junkmycars.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant operates through its <junkmycar.com> domain name, a commercial car removal service that tows away junk automobiles and other vehicles. Complainant has been in continuous operation since June 2004, when it first used the JUNKMYCAR mark and registered the <junkmycar.com> domain name. Complainant receives over 3,000 vehicle removal submissions each month and last year had over $1.4 million in total revenue. Complainant filed several trademark applications on December 4, 2006, including for the JUNKMYCAR mark, with the United States Patent and Trademark Office (“USPTO”) (Serial. No. 77064275 filed December 14, 2006).
The disputed domain name that Respondent registered, <junkmycars.com>, was registered March 1, 2007. It resolves to a website that is almost identical in layout and form as the website maintained on Complainant’s <junkmycar.com> domain name and it offers services that are similar to and attempt to compete with the vehicle removal services offered under Complainant’s mark.
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 Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel considers to be appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant has not registered the JUNKMYCAR mark with any governmental authority; but Complainant has filed for such rights. However, the UDRP does not require governmental registration for a party to establish rights in a mark; common law rights can create rights in a mark sufficient to satisfy Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also HR Commodities LLC v. Rob Harper, D2007-0153 (WIPO April 9, 2007) (“It is well-settled that the Policy encompasses both registered and common law marks.”).
The JUNKMYCAR mark has been continuously used since Complainant’s registration of its <junkmycar.com> domain name in 2004. The <junkmycar.com> domain name receives about 3,000 vehicle removal submissions per month and had in 2006 a net income of more than $1.4 million. Complainant has also filed trademark application with the USPTO. The Panel finds by virtue of the commercial popularity and success of the domain name Complainant operates under the JUNKMYCAR mark, that Complainant has established common law rights in the JUNKMYCAR mark pursuant to Policy ¶ 4(a)(i). See BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000) (finding that the complainant has common law rights in BROADCASTAMERICA.COM, given extensive use of that mark to identify the complainant as the source of broadcast services over the Internet, and evidence that there is wide recognition with the BROADCASTAMERICA.COM mark among Internet users as to the source of broadcast services); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The <junkmycars.com> domain name fully incorporates Complainant’s JUNKMYCAR mark. It also adds the letter “s” to the end of Complainant’s mark and includes the generic top-level domain (“gTLD”) “.com”. It is well established that the addition of a letter and the inclusion of a top-level domain do not negate a finding of confusing similarity. The Panel thus finds pursuant to Policy ¶ 4(a)(i), that Respondent’s <junkmycars.com> domain name is confusingly similar to Complainant’s JUNKMYCAR mark. See Nat’l Geographic Soc’y v. Stoneybrook Invs., FA 96263 (Nat. Arb. Forum Jan. 11, 2001) (finding that the domain name <nationalgeographics.com> was confusingly similar to the complainant’s NATIONAL GEOGRAPHIC mark); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must initially make a prima facie case that Respondent has no
rights or legitimate interests in the domain name at issue. See
Inc. v. VeneSign
Respondent failed to submit a Response to the Complaint. In these circumstances, the Panel may presume that Respondent has no rights or legitimate interests in the <junkmycars.com> domain name; however, the Panel still considers the available evidence with respect to the factors listed in Policy ¶ 4(c) before making this determination. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, the Panel may presume that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s WHOIS information does list an administrative contact by the same name as the disputed domain name, but Respondent does not provide any other affirmative evidence of rights in the domain name. The Panel finds that because anyone can list a contact they desire as their administrative contract, the record contains no evidence pursuant to Policy ¶ 4(c)(ii) that establishes that Respondent is or ever has been commonly known by Complainant’s mark or even by Respondent’s disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Home Builders Inst. v. Nat’l Inst. of Home Builders, Inc., FA 166011 (Nat. Arb. Forum Oct. 3, 2003) (holding that listing the respondent’s trade name, The National Institute of Homebuilders, Inc., as the administrative contact in the WHOIS contact information for <homebuilderinstitute.com>, failed to establish that the respondent was commonly known by the domain name because the respondent could list any administrative contact it desired).
The disputed domain name resolves to a website that is almost identical in layout and form to the website maintained on Complainant’s <junkmycar.com> domain name. Respondent offers services on this website that are similar to and attempt to compete with the vehicle removal services offered under Complaint’s mark. In lieu of any further evidence from Respondent, the Panel presumes that Respondent is attempting to profit from the confusing similarity between Complainant’s JUNKMYCAR mark and the corresponding domain name with Respondent’s <junkmycars.com>. The Panel thus finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for commercial benefit by diverting Internet users to a website that sold goods and services similar to those offered by the complainant and thus, was not using the name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
The <junkmycars.com> domain name is confusingly similar to both Complainant’s mark and Complainant’s <junkmycar.com> domain name. The disputed domain name resolves to a website that is almost identical in layout and form to the website maintained by Complainant and it offers services that are similar to and that attempt to compete with the vehicle removal services offered under Complainant’s mark. Consequently, the Panel finds that Respondent registered and is now using the <junkmycars.com> domain name in a bad faith for the purpose of disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote a competing auction sites, which is the same as the services provided under Complainant’s mark); see S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith pursuant to Policy ¶ 4(b)(iii) by attracting Internet users to a website that competes with the complainant’s business).
Moreover, Respondent’s disputed domain name resolves to a commercial website, which offers services in direct competition with those offered under Complainant’s mark. It can be presumed that this financially benefits Respondent. The Panel finds this to also be evidence of bad faith registration and use by the creation of a likelihood of confusion between the disputed domain name and Complainant’s mark in which Respondent commercially benefits pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds that Complainant 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 <junkmycars.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 12, 2007.
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