national arbitration forum

 

DECISION

 

DDOL, Ltd. v. Venkat Rao

Claim Number: FA0811001235723

 

PARTIES

Complainant is DDOL, Ltd. (“Complainant”), represented by Paul Van Slyke, of Locke Lord Bissell & Liddell LLP, Texas, USA.  Respondent is Venkat Rao (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 24, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 25, 2008.

 

On December 4, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names.  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").

 

On December 9, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 29, 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@houston-defensivedriving.com, postmaster@dallas-defensivedriving.com, postmaster@austin-defensivedriving.com, postmaster@texas-defensivedriving-online.com, postmaster@defensivedrivingus.com and postmaster@texas-defensivedriving-courses.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 5, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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.

 

On January 8, 2009, Respondent requested an extension for filing an answer to the Complaint.  An extension was granted giving Respondent until January 12, 2009 to file a Response.

 

On January 12, 2009, the Response was filed electronically.  The hard copy of the Response was received by the National Arbitration Forum on January 13, 2009.  The Response was not timely filed in accordance with ICANN Rule 5.  The Panel reviewed the Response and has chosen to consider the Response in its Decision.

 

An Additional Submission was submitted by Complainant on January 20, 2009 and was determined to be deficient.  The Panel has chosen to consider this Additional Submission in its Decision.

 

An Additional Submission was submitted by Respondent on January 26, 2009.  The Panel has chosen not to consider this Additional Submission.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A.  Complainant makes the following assertions:

 

Respondent’s <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names are confusingly similar to Complainant’s DEFENSIVEDRIVING.COM mark.

 

Respondent does not have any rights or legitimate interests in the <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names.

 

Respondent registered and used the <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names in bad faith.

 

B.     Respondent

 

Respondent asserts that he is the brother of a managing partner of I DRIVE SAFELY, LLC, which is a Delaware limited liability company.  Respondent is also an employee of a related company, Ed Ventures e-Learning Pvt Ltd, and is authorized to register domain names for clients, including I DRIVE SAFELY LLC.  Respondent argues that I DRIVE SAFELY, LLC is a licensed driving safety/defensive driving course providing online education for more than 10 years in multiple states, including Texas, where it received licensure in 2001.

 

Respondent asserts that it has rights and legitimate interests in the disputed domain names as its marketing strategy focuses on registering descriptive, generic, or geographically descriptive domain names.  Respondent argues that the disputed domain names merely represent the common use of “defensive driving,” and that it has not sought to use Complainant’s trademark for its competitive business.

 

Respondent also argues that Complainant lacks exclusive rights in the phrase “defensive driving,” and that it has not prevented Complainant from obtaining its domain name. 

 

FINDINGS

Complainant, DDOL, Ltd., has operated a series of defensive driving courses and testing services since February 20, 2000.  Complainant offers this education through online, video, DVD, streaming, and television formats.  Complainant registered its DEFENSIVEDRIVING.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,010,932 issued November 1, 2005, filed May 20, 2004).  Complainant also owns the <defensivedriving.com.com> domain name for use in its operations.

 

Respondent registered the disputed domain names on their respective dates: <houston-defensivedriving.com> (August 31, 2005), <dallas-defensivedriving.com> (August 31, 2005), <austin-defensivedriving.com> (August 31, 2005), <texas-defensivedriving-online.com> (December 6, 2004), <defensivedrivingus.com> (January 18, 2005) and <texas-defensivedriving-courses.com> (December 6, 2004).  The disputed domain names resolve to the same website at the <idrivesafely.com> domain name, which is operated by a direct competitor of Complainant.

 

DISCUSSION

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.”

 

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.

 

Identical and/or Confusingly Similar

 

Respondent has submitted evidence of its registration of the DEFENSIVEDRIVING.COM mark with the USPTO.  The Panel finds that Complainant has sufficient rights in the mark that date back to the mark’s filing date under Policy ¶ 4(a)(i).  See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also J. C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 U.S.P.Q. 435 (C.C.P.A. 1965) (registration on the Principal Register is prima facie proof of continual use of the mark, dating back to the filing date of the application for registration).

 

Respondent’s <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names include Complainant’s DEFENSIVEDRIVING.COM mark.  All but the <defensivedrivingus.com> domain name contain hyphens, which are irrelevant under a Policy ¶ 4(a)(i) analysis.  See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent’s domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”).  Moreover, each disputed domain name contains a generic word such as “online” or “courses”—both of which fairly describe Complainant’s activities—and/or geographical indicators such as “houston,” “dallas,” “austin,” “texas,” or “us.”  The Panel also finds that the use of generic words and/or geographic qualifiers fail to create meaningful distinctions.  See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity  with regard to Policy ¶ 4(a)(i).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geographic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)).  Therefore, the Panel finds that the instant disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain names.  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), thus shifting the burden of proof to Respondent.  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).

 

Complainant argues that Respondent is not commonly known by the disputed domain names, and that Respondent instead operates a competing business under the name “Idrivesafely.”  The Panel finds that Complainant’s assertions are bolstered by the fact that Respondent is listed in the WHOIS registration information as “Venkat Rao.”  Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip’t as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute).

 

Respondent’s disputed domain names resolve to websites that invariably lead Internet users to Respondent’s true website at the <idrivesafely.com> domain name.  The Panel finds that Respondent is clearly using the confusingly similar disputed domain names to commercially gain by deceptively diverting Complainant’s potential customers to Respondent’s competing business.  The Panel therefore finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).

 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

 

Registration and Use in Bad Faith

 

In the instant dispute, the Panel notes that Respondent has created a textbook disruption of Complainant’s business.  Respondent has diverted Internet users seeking Complainant’s educational services to a directly competing website.  Respondent therefore has clearly registered and continues to use the disputed domain names in bad faith under Policy ¶ 4(b)(iii).  See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to Complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).

 

Moreover, Respondent has undoubtedly intended to commercially gain from this diversion of Internet users through the confusingly similar disputed domain names, given Respondent’s directly competing business.  Respondent has therefore created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain names and resolving websites.  This constitutes evidence that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).  See 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); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).

 

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

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 <houston-defensivedriving.com>, <dallas-defensivedriving.com>, <austin-defensivedriving.com>, <texas-defensivedriving-online.com>, <defensivedrivingus.com> and <texas-defensivedriving-courses.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  January 26, 2009

 

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