American Safety Institute,
Inc. v. Jordan Meagar
Claim Number: FA0808001219231
PARTIES
Complainant is American Safety Institute, Inc. (“Complainant”), represented by J.
Wiley
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <floridadrivingschool.com>,
registered with Getdomainsiwant.ca.
PANEL
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.
Honorable Karl V. Fink (Ret.) as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 6, 2008; the
National Arbitration Forum received a hard copy of the Complaint on August 11, 2008.
On August 8, 2008, Getdomainsiwant.ca confirmed by e-mail to the
National Arbitration Forum that the <floridadrivingschool.com> domain
name is registered with Getdomainsiwant.ca
and that the Respondent is the current registrant of the name. Getdomainsiwant.ca
has verified that Respondent is bound by the Getdomainsiwant.ca
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 August 13, 2008, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of September 2, 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 postmaster@floridadrivingschool.com
by e-mail.
Having initially received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default on September 10, 2008.
Also on September 10, 2008, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Karl Fink
as Panelist.
On September 18, 2008, the Panel issued an Order for Additional
Submission and Extending Time for Rendering Decision, and established a new
deadline of October 2, 2008 by which Respondent could respond to the Complaint.
Respondent submitted a Response on October
2, 2008.
All submissions were considered by the Panel.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant has common law trademark rights in the mark FLORIDADRIVINGSCHOOLS.COM. Complainant is the owner and operator of the
website FLORIDADRIVINGSCHOOLS.COM which Complainant registered and began using
in April of 2000 to offer educational services, namely providing and conducting
on-line courses in the field of driving, traffic rules and traffic safety.
Consumers recognize the trademark FLORIDADRIVINGSCHOOLS.COM and
associate that name with Complainant’s services and a reputation for
quality. Complainant has invested
considerable time and effort in establishing an association between FLORIDADRIVINGSCHOOLS.COM
and its educational services over approximately 8 years.
The mark had been advertised in several phone books throughout the
years including Sprint Yellow Pages and Verizon SuperPages. Complainant is affiliated with approximately
40 different entities that have FLORIDADRIVINGSCHOOLS.COM on their respective
websites and have done so since at least December of 2000. Complainant is identified by the Florida
Department of Motor Vehicles as an authorized provider of traffic courses in
the State of
Respondent registered the domain name at issue, <floridadrivingschool.com>,
on April 7, 2008. Respondent’s domain
name differs only from Complaint’s trademark by the omission of the letter “S.”
Respondent has no rights or legitimate interests in the name <floridadrivingschool.com>.
Respondent does not use the domain name in connection with a bona fide offering of goods and
services.
There is no indication that the Respondent has been commonly known by
the domain name. Respondent’s registered
name is Jordan Meagar. A search by
administrative contact Jordan.L.Meagar@gmail.com for registered domain names
returns over 500 domain names.
There is no indication that the Respondent is making a legitimate, noncommercial
or fair use of the domain name without intent for commercial gain.
Respondent has been conducting its business in a way that is intended
to trade off of Complainant’s mark, and its use is neither bona fide offering of goods or services nor a legitimate
noncommercial or fair use of the disputed domain name.
The result of Respondent’s choice of its domain name is that viewers
seeking to consult Complainant’s website are likely to accidentally arrive at
Respondent’s website under the disputed domain name.
Respondent gave the Registrar false contact information. Providing false contact information is widely
recognized as an indication of bad faith in domain name registration.
B. Respondent
American Safety Institute is trying to claim trademark to a universally
generic and everyday-speech term such as “Florida Driving Schools.” There is no ad in the Yellow Pages for
“Floridadrivingschools.com.”
Respondent registered this domain name in the hopes of one day soon establishing
its own driving school.
In preparation for the website construction Respondent has “parked” the
domain. The parking provider,
Parked.com, has its own discretion in what ads and messages to link to. The planned offering of goods will be
Respondent has never attempted to attract users to Respondent’s website. Respondent was living in the Hyatt in
FINDINGS
For the reasons set forth below, the Panel
finds for Complainant.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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.”
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;
(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.
Complainant does not reference a
trademark registration for the mark, but the Panel finds this is not necessary
as long as Complainant can establish that the mark has acquired sufficient
secondary meaning to establish common law rights pursuant to Policy ¶
4(a)(i). See Hiatt v. Pers. Fan &
Official Site Builders : we build great sites, FA 881460 (Nat. Arb. Forum
Feb. 21, 2007) (“Registration with a trademark authority is unnecessary under
Policy ¶ 4(a)(i) in instances where a mark has gained
secondary meaning through extensive commercial use and common law rights have
been established ….”); see also Artistic
Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8,
2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration
if a complainant can establish common law rights in its mark).
Complainant registered the <floridadrivingschools.com> domain
name in April 2000, and has consistently used the domain name since then as an
identifier of its business, and to promote its traffic safety services. Complainant has been authorized to provide
these services by the Florida DMV, and evidences advertising of its company
online and in phone books. Based on this
evidence, the Panel finds that Complainant has established common law rights in
the FLORIDADRIVINGSCHOOLS.COM mark that are sufficient to satisfy Policy
¶ 4(a)(i). See
Respondent’s <floridadrivingschool.com> domain name contains the FLORIDADRIVINGSCHOOLS.COM mark in its entirety except for the removal of the “s” at the end. The Panel finds that this single change does not distinguish the disputed domain name from the mark, so the two are confusingly similar pursuant to Policy ¶ 4(a)(i). See Gary Lovemark, Robinson Textiles Inc. v. Tucker, D2007-0217 (WIPO Apr. 27, 2007) (finding that the removal of the letter “s” rendered the disputed domain name confusingly similar to the complainant’s mark pursuant to Policy ¶ 4(a)(i) because “[i]t has long been settled that adding or subtracting a single letter does not distinguish the disputed domain name from the Complainant’s mark.”); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant alleges that Respondent
is not commonly known by the <floridadrivingschool.com>
domain name since the WHOIS information identifies Respondent as “Jordan
Meagar,” and the record does not indicate Respondent conducts business under
the disputed domain name. The Panel
agrees with Complainant’s assessment and concludes that Respondent is not
commonly known by the <floridadrivingschool.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also
Respondent’s <floridadrivingschool.com> domain
name redirects Internet users to a website featuring a list of hyperlinks to
traffic safety companies that compete with Complainant’s business. The Panel presumes that Respondent profits
through this use by accruing click-through fees for each redirected Internet
user. The Panel concludes that
Respondent’s use of the <floridadrivingschool.com>
domain name constitutes 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 Expedia, Inc. v. Compaid, FA
520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of
the <expediate.com> domain name to redirect Internet users to a website
featuring links to travel services that competed with the complainant was not a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Jerry
Damson, Inc. v.
Respondent argues that he parked
the website resolving from the <floridadrivingschool.com>
domain name with Parked.com, and Parked.com is responsible for the content
posted to the website. The Panel holds
Respondent responsible for this content pursuant to Policy ¶ 4(a)(ii). See Netbooks,
Inc. v. Lionheat Publ’g, FA 1069901 (Nat. Arb. Forum Oct. 18, 2007) (“The
Panel also notes that Respondent is responsible for the content of any website
using the domain name at issue, and cannot pass that responsibility off to its
registrar or domain name service provider.”); see also StaffEx Corp. v. Pamecha, FA 1029545 (Nat. Arb. Forum Aug.
27, 2007) (“Respondent has alleged that the registrar, GoDaddy, has posted
these [competing] links for the website associated with the Domain Name. However, the Panel finds this is no excuse
and holds Respondent accountable for the content posted to the site that resolves
from the Domain Name.”).
Complainant has proven this element.
Respondent’s <floridadrivingschool.com>
domain name resolves to a website advertising competing traffic safety
services. The Panel finds that this use
is likely to disrupt Complainant’s business, and therefore constitutes bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco
Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13,
2007) (finding that the respondent registered and used the disputed domain name
in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name
resolved to a website that displayed commercial links to the websites of the
complainant’s competitors); see also David
Hall Rare Coins v.
Respondent’s <floridadrivingschool.com> domain name may also be likely to cause confusion among customers searching for Complainant’s traffic safety services. The Panel finds that Respondent is attempting to profit by earning click-through fees, and that this demonstrates Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Respondent contends under Policy ¶
4(a)(iii) that he is not responsible for the hyperlinks posted to the website
resolving from the <floridadrivingschool.com>
domain name. The Panel disagrees, and
holds Respondent responsible for this content.
The Panel therefore finds bad faith registration and use under Policy ¶
4(a)(iii) despite Respondent’s contentions on this point. See Express Scripts, Inc. v Windgather
Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (“The
Respondent contends that the advertisements in this case were ‘generated by the
parking company’. The implication is that the Respondent was not responsible
for the content of these advertisements. This may well be correct but in the
panel’s view this makes no difference. The Respondent placed the Domain Name
with a parking company in circumstances where it would have been aware that
those using the Domain Name were likely to have mistyped the complainant’s
name.”); see also St. Farm
Mutual Auto. Insr.
Complainant has proven this element.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly it is Ordered that the <floridadrivingschool.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: October 16, 2008
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