Carey International, Inc. v. Fabio Simon c/o
Claim Number: FA0712001124304
Complainant is Carey International, Inc. (“Complainant”), represented by Sara
L. Edelman, of Davis & Gilbert LLP, 1740 Broadway,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montrealcareylimo.com>, registered with Godaddy.com, Inc.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 2008 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 by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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 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. Respondent’s <montrealcareylimo.com> domain name is confusingly similar to Complainant’s CAREY mark.
2. Respondent does not have any rights or legitimate interests in the <montrealcareylimo.com> domain name.
3. Respondent registered and used the <montrealcareylimo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Carey International, Inc.,
operates one of the largest premier limousine and transportation-related
service companies. Complainant’s
business was created in 1922, and since that time Complainant has expanded its
company to now provide service in seventy-five countries and 460 cities
worldwide. Complainant holds numerous
registered trademarks around the world for the CAREY mark, including in
Respondent, Fabio Simon, registered the <montrealcareylimo.com> domain name
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 draw such inferences it considers 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 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.
Complainant alleges rights to the CAREY mark through its
numerous trademark registrations around the world. The Panel acknowledges that these
registrations are sufficient to confer rights in the CAREY mark to Complainant
pursuant to Policy ¶ 4(a)(i). See
Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005)
(“Complainant’s numerous registrations for its HONEYWELL mark throughout the
world are sufficient to establish Complainant’s rights in the HONEYWELL mark
under the Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat.
Respondent alleges that the <montrealcareylimo.com> domain name is confusingly
similar to Complainant’s CAREY mark. The
dominant portion of the disputed domain name contains Complainant’s mark in its
entirety, and contains a few additions.
First, the disputed domain name adds the geographic identifier “
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have rights or legitimate interests in the <montrealcareylimo.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Under Policy ¶ 4I(ii), a respondent must prove that it is commonly known by the disputed domain name. In this regard, there is some evidence in the record favoring Respondent since the WHOIS domain name registration information for the <montrealcareylimo.com> domain name identifies Respondent as “Fabio Simon c/o Montreal Limo.” However, as stated above, the dominant portion of the disputed domain name is Complainant’s CAREY mark, and there is no evidence in the record indicating that Respondent conducts business as, or is commonly known by, the CAREY mark. Furthermore, the WHOIS information is the only source to indicate that Respondent may conduct business under the name “Montreal Limo,” and Respondent’s failure to respond to the Complaint consequently does not disclose any evidence to support this claim. Therefore, the Panel can and must conclude that Respondent is not commonly known by the <montrealcareylimo.com> domain name pursuant to Policy ¶ 4I(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
Respondent is using the <montrealcareylimo.com> domain name to redirect Internet users to a website which is virtually identical to the reservations page of Complainant’s website. The website which resolves from the disputed domain name prominently displays Complainant’s CAREY mark and logo. Respondent is attempting to “pass itself off” as Complainant in an attempt to commercially benefit, and such use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4I(i), or a legitimate noncommercial or fair use under Policy ¶ 4I(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. 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); see also 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 ¶¶ 4I(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
While Respondent’s website that resolves from the <montrealcareylimo.com> domain name
displays Complainant’s logo, Respondent actually offers its own limousine and
transportation services that compete with Complainant. This use of the disputed domain name is
likely to mislead customers into doing business with Respondent when they
intend to do business with Complainant.
Consequently, Complainant’s business is disrupted by Respondent’s use of
domain name. Therefore, Respondent
registered and is using the <montrealcareylimo.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb.
Forum Sept. 21, 2006) (finding that the respondent registered and used the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the
disputed domain names to operate websites that compete with Complainant’s
business); see also DatingDirect.com
Ltd. V. Aston, FA 593977 (Nat. Arb. Forum
Respondent is using the <montrealcareylimo.com>
domain name to redirect Internet users to a website which is virtually
identical to the limousine and transportation services page of Complainant’s
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <montrealcareylimo.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: February 8, 2008
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