U-Haul International, Inc. v. Nir Steel a/k/a Saferoads America
Claim Number: FA0206000114586
Complainant is U-Haul International, Inc., Phoenix, AZ (“Complainant”) represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP. Respondent is Nir Steel a/k/a Saferoads America, Sunrise, FL (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <uhaul-moving.com> and <uhaulmoving.net>, registered with Register.com.
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.
James A. Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on June 14, 2002; the Forum received a hard copy of the Complaint on June 18, 2002.
On June 17, 2002, Register.com confirmed by e-mail to the Forum that the domain names <uhaul-moving.com> and <uhaulmoving.net> are registered with Register.com and that Respondent is the current registrant of the names. Register.com has verified that Respondent is bound by the Register.com registration agreement 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 July 1, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 22, 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 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 August 7, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 Respondent to Complainant.
The <uhaul-moving.com> and <uhaulmoving.net> domain names are confusingly similar to Complainant’s U-HAUL mark.
Respondent has no rights or legitimate interests in the <uhaul-moving.com> and <uhaulmoving.net> domain names.
Respondent registered and used the <uhaul-moving.com> and <uhaulmoving.net> domain names in bad faith.
Respondent has not submitted a Response in this proceeding.
Complainant owns numerous registered trademarks with the United States Patent and Trademark Office (“USPTO”) for the U-HAUL mark (e.g., Reg. Nos. 746,034; 786,156; 795,733; and 893,891). Complainant also has trademarks that contain variations of the U-HAUL mark, which are all registered with the USPTO. These trademarks include the marks U-HAUL MOVING AND STORAGE (Reg. No. 1,085,695) and U-HAUL MOVING CENTER (Reg. No. 2,262,059).
The U-HAUL mark and related marks are used in connection with the rental of moving equipment and storage space, and the rental and sale of related goods. Complainant has used these marks for its moving and storage business since the 1940s. Since the inception of Complainant’s business as a local do-it-yourself moving company, Complainant has expanded to more than 16,000 locations in the United States and Canada.
Complainant has spent a large amount of time, effort, and money to develop its business and the reputation of the U-HAUL mark throughout the years. Because of Complainant’s business successes and promotional efforts, the U-HAUL mark has gained a substantial amount of goodwill for Complainant, as customers readily associate the U-HAUL mark with Complainant’s services.
Complainant conducts online business at <u-haul.com>. At the corresponding website, Complainant receives equipment reservations from customers, provides store location information, and quotes rental rates.
Respondent registered the <uhaul-moving.com> and <uhaulmoving.net> domain names on December 20, 2001. Respondent has yet to develop a website in connection with the domain names. In response to Complainant’s cease and desist order, Respondent stated that its plans were to use the domain names for a website that provides a search engine for moving companies and suppliers. Respondent would provide a listing of Complainant’s companies at its intended website.
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 mark through registration with the USPTO and continuous use of the mark since the 1940s.
Respondent’s <uhaul-moving.com> and <uhaulmoving.net> domain names are confusingly similar to Complainant’s U-HAUL mark because the addition of “-moving” and “moving” does not create a distinguishable mark capable of overcoming a confusingly similar analysis under Policy ¶ 4(a)(i). The term “moving” is not only a common word but it refers to the services Complainant offers. In a domain name, the addition of an industry related word to Complainant’s mark does not distinguish the domain name from the mark. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Marriott Int’l v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that the Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark).
Furthermore, the absence of the hyphen from U-HAUL in the domain names and the hyphenated addition of “moving” to Complainant’s U-HAUL mark fails to create a separate and distinct mark. The omission or addition of hyphens to a mark have no impact on the confusingly similar analysis. See Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen”).
In addition, the generic top-level domains “.com” and “.net” are of no consequence when determining whether Respondent’s domain names are confusingly similar. Thus, the Panel finds that Respondent’s <uhaul-moving.com> and <uhaulmoving.net> domain names are confusingly similar to Complainant’s U-HAUL mark. See 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); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that “the addition of the generic top-level domain name ‘.com’ is . . . without legal significance since use of a generic top-level domain is required of domain name registrants”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent did not submit a Response to Complainant’s Submission. Because Complainant asserts that Respondent has no rights or legitimate interests in the domain names and Respondent did not answer Complainant’s assertions, it may be presumed that Respondent has no such rights or legitimate interests in the domain names. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).
Furthermore, in light of Respondent’s failure to respond, the Panel is permitted to draw all reasonable inferences in favor of Complainant. See 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”).
Complainant notes that Respondent’s planned use of the domain names is to create a search engine website to facilitate searches targeted for moving companies and suppliers. Respondent intends to include a variety of Complainant’s competitors in the search engine. Respondent would, presumably, offer the search engine website for a cost, most likely at the expense of the companies listed at the search engine. Also, Respondent notified Complainant that it planned to generate revenue from the website from banner advertisements. The use of Complainant’s mark to provide services for competitors and generate revenue from the services does not represent a connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (finding that “unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services”); see also Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Kosmea Pty Ltd. v. Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no rights in the domain name where Respondent has an intention to divert consumers of Complainant’s products to Respondent’s site by using Complainant’s mark).
The level of notoriety the U-HAUL mark enjoys and Complainant’s substantial use and development of the mark since the 1940s creates a presumption that Respondent cannot be commonly known by the mark or any similar variation thereof. Respondent is known to this Panel as either Nir Steel or Saferoads America; Respondent is not referred to by either of the domain names. Therefore, Respondent has no legitimate rights or interests in the domain names pursuant to Policy ¶ 4(c)(ii). See Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark).
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the domain names; thus, Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The bad faith circumstances listed in Policy ¶ 4(b) are used to guide a Panel when determining the bad faith issue, but are “without limitation.” Hence, the Panel is permitted to look at the totality of circumstances of the case in order to determine whether Complainant registered and used the domain name in bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”).
As previously stated, Respondent’s domain names contain Complainant’s mark along with a term, “moving,” that bears a relation with Complainant’s business. The circumstances surrounding the registration creates a presumption that Respondent was aware of Complainant’s use and rights in the U-HAUL mark. Furthermore, Complainant’s U-HAUL mark has achieved a level of fame and notoriety that should have put Respondent on notice of Complainant’s interests in the mark. Therefore, Respondent’s registration of the domain names, despite at least constructive notice of Complainant’s rights, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted bad faith).
Additionally, Respondent’s stated purpose of developing a search engine dedicated to moving and supply businesses would create consumer confusion as to Complainant’s sponsorship, Complainant’s mark is used in the domain name and the services Respondent plans to offer relate to Complainant’s business. Respondent also plans to create revenue by placing banner advertisements on the website. Therefore, Respondent’s planned commercial website that would create source confusion represents bad faith use pursuant to Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the Respondent directed Internet users seeking the Complainant’s site to its own website for commercial gain); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site).
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 shall be hereby GRANTED.
Accordingly, it is Ordered that the domain names <uhaul-moving.com> and <uhaulmoving.net> be TRANSFERRED from Respondent to Complainant.
James A. Crary, Panelist
Dated: August 12, 2002
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