Amerifleet Transportation, Inc. v. Advantage Auto
Claim Number: FA0804001176639
Complainant is Amerifleet Transportation, Inc. (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <amerifleetsales.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2008; the National Arbitration Forum received a hard copy of the Complaint on April 8, 2008.
On April 9, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <amerifleetsales.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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").
10, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of April
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 May 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
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 <amerifleetsales.com> domain name is confusingly similar to Complainant’s AMERIFLEET mark.
2. Respondent does not have any rights or legitimate interests in the <amerifleetsales.com> domain name.
3. Respondent registered and used the <amerifleetsales.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant provides professional driveaway and truck
carrier transportation services to the corporate fleet and leasing
industry. Complainant registered the
AMERIFLEET mark with the United States Patent and Trademark Office (“USPTO”) on
March 7, 2006 (Reg. No. 3,065, 954).
Complainant has used the AMERIFLEET mark continuously in commerce since
1998. Complainant now has office
locations in five states and many storage facilities across the
Respondent registered the <amerifleetsales.com> domain name on July 2, 2007. The disputed domain name resolves to a password-protected website that features the AMERIFLEET mark in its title graphics and solicits personal information from Internet visitors.
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.
The Panel finds that Complainant has established rights in the AMERIFLEET mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”).
Complainant contends that Respondent’s <amerifleetsales.com> domain name is confusingly similar to its AMERIFLEET mark. The <amerifleetsales.com> domain name differs from Complainant’s mark in three ways: (1) the term “sales” has been added to the end of the mark; and (2) the generic top-level domain (“gTLD”) “.com” has been added. Addition of a generic word that merely describes the business purpose of the complainant does not reduce or eliminate the possibility that a domain name combining a mark and the generic word will confuse Internet visitors. Therefore, the Panel finds that these changes do not minimize or eliminate the resulting likelihood of confusion, and so Respondent’s disputed domain name is not sufficiently distinguished from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Space Imaging LLC v. Brownell, 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 Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <amerifleetsales.com> domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. 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).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Complainant contends that Respondent is not commonly known by the <amerifleetsales.com> domain name nor have they ever been the owner or licensee of the AMERIFLEET mark. The WHOIS record for the disputed domain name lists Respondent as “Advantage Auto Sales of Wichita Falls d/b/a Amerifleet” Respondent holds itself out as doing business as “Amerifleet,” but there is no affirmative evidence that Respondent is actually doing business on behalf of Complainant. In fact, Respondent has failed to show any evidence contrary to Complainant’s contentions, which compels the Panel to find that Respondent is not commonly known as <amerifleetsales.com> pursuant to Policy ¶ 4(c)(ii). See 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.”); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent maintains a website at <amerifleetsales.com> that uses Complainant’s mark to pass itself off as Complainant’s own website. Complainant contends that Respondent is using a password protection device in an apparent attempt at “phishing” - obtaining personal information from Internet visitors who think they have accessed Complainant’s website. The Panel finds that Respondent’s use of the domain name <amerifleetsales.com> to pass itself off as Complainant’s website and to “phish” for personal information is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under 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 Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“‘Phishing’ involves the use of e-mails, pop-ups or other methods to trick Internet users into revealing credit cards, passwords, social security numbers and other personal information to the ‘phishers’ who intend to use such information for fraudulent purposes.”); see also Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the disputed
domain name to divert Internet visitors to Respondent’s website that resolves
from the disputed domain name, through the confusion caused by the similarity
between the AMERIFLEET mark and the <amerifleetsales.com>
domain name. Respondent’s
website features Complainant’s AMERIFLEET mark in an apparent attempt to pass
itself off as Complainant’s own website and profit from the confusion of
visitors who believe they are doing business with Complainant. The Panel finds that Respondent’s use of the
disputed domain name is an attempt to gain commercially through the likelihood
of confusion with Complainant’s mark, which is evidence of registration and use
in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant also contends that Respondent is gaining commercially through “phishing” for the confidential personal information of Internet visitors who believe that they are visiting Complainant’s website. The Panel finds that this is an intentional use of the disputed domain name for commercial gain through a likelihood of confusion with Complainant’s mark, and so, pursuant to Policy ¶ 4(a)(iii), this use is also evidence of registration and use in bad faith. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that the respondent registered and used the domain name in bad faith because it redirected Internet users to a website that imitated the complainant’s website and was used to fraudulently acquire personal information from the complainant’s potential associates); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration and use).
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 <amerifleetsales.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 16, 2008
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