U-Haul International, Inc. v. ALCorp. N.A.
Claim Number: FA0209000124739
Complainant is U-Haul International, Inc., Phoenix, AZ (“Complainant”) represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro, LLP. Respondent is ALCorp. N.A., Westlake Village, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com>, registered with AWRegistry Services.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2002; the Forum received a hard copy of the Complaint on September 5, 2002.
On September 6, 2002, AWRegistry Services confirmed by e-mail to the Forum that the domain names <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> are registered with AWRegistry Services and that Respondent is the current registrant of the names. AWRegistry Services verified that Respondent is bound by the AWRegistry Services 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 September 12, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 2, 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, email@example.com, firstname.lastname@example.org, email@example.com, firstname.lastname@example.org, email@example.com, and firstname.lastname@example.org 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 October 21, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.
A. Complainant’s Submission makes the following assertions:
i. Respondent’s <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> domain names are confusingly similar to Complainant’s registered U-HAUL marks.
ii. Respondent has no rights or legitimate interests in the <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> domain names.
iii. Respondent registered and used the <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant holds many registrations incorporating variations of its U-HAUL mark. Complainant registered its U-HAUL mark with the Principal Register of the United States Patent and Trademark Office (“USPTO”), U.S. Registration Numbers 746,034 and 893,891, on February 26, 1963 and June 30, 1970, respectively. Variations of Complainant’s U-HAUL mark have also been listed with the Principal Register of the USPTO.
In addition, Complainant has been using the domain <uhaul.com> since April 20, 1995. At this site, consumers make reservations, find U-HAUL locations, obtain rental rates, and access other information related to the company.
Respondent registered each of its <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> domain names on May 2, 2000. Currently, all of Respondent’s domain names resolve to a generic page informing a user that the domain is “coming soon,” followed by a series of various links and a search engine. Respondent is not licensed and is not otherwise authorized to make any use of the U-HAUL family of marks for any purpose.
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 will draw such inferences as it considers appropriate pursuant to paragraph 14(b) of the Rules.
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 to and/or Confusingly Similar
Complainant established in this proceeding that it has rights in the U-HAUL family of marks through registration with the USPTO and subsequent continuous use of the marks.
Possessing a domain name that is “confusingly similar” to a registered mark involves registering a name with characteristics that consist of mere cosmetic differences between the name and the mark. The addition of generic or slang terms or the addition of simple descriptive words to a registered trademark, especially if that mark is well known, is not a substantive enough alteration to prevent a finding of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of Complainant combined with a generic word or term); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s registered mark is sufficient to establish identical or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name <go2AOL.com> was confusingly similar to Complainant’s AOL mark).
Furthermore, as a top-level domain (such as “.com”) is required for every domain name, this addition will not have any effect on whether Respondent’s domain name is confusingly similar to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”); see also 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). Finally, the absence of a hyphen from a domain name that is confusingly similar to a trademark is inconsequential. See Chernow Communications Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"). Respondent’s elimination of the hyphen from the U-HAUL mark and the addition of “.com” after each of its domain names is inconsequential when ascertaining the existence of confusing similarity.
Additional generic words within Respondent’s domain names also fail to prevent them from being confusingly similar to Complainant’s mark. For three of the domain names, Respondent simply added the letters “em”, an abbreviated version of the word “them”. For two other domain names, the letters “it” were added instead. For some of these variations of “Uhaul -em or –it”, Respondent added additional descriptive phrases such as “4 less”, “4 cheap”, or “easy”. As a result, Respondent has created phrases such as “You haul (U-haul) them for cheap” or “You haul (U-haul) it for less”, taking advantage of Complainant’s mark to suggest some association with Complainant. In all of these domain names the dominant feature of the name remains the U-HAUL mark, slightly altered by generic and descriptive words, yet nevertheless confusingly similar to Complainant’s mark.
In the remaining two domain names, Respondent has either added the generic word “man” or the descriptive prefix “4” followed by the suffix “ing” to Complainant’s mark. Again, the dominant feature of the domain name is the U-HAUL mark, and the addition of these generic and descriptive words does not defeat a claim of confusing similarity. 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).
Accordingly, the Panel finds that the domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Once a Complainant has successfully presented a prima facie case illustrating Respondent’s lack of rights or legitimate interests in the disputed domain name, the burden of demonstrating such rights and legitimate interests in the domain name shifts to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).
A Complainant can meet this burden by successfully addressing any claims Respondent could make under Policy ¶¶ 4(c)(i-iii) in its defense. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by Complainant and in the absence of any submissions from Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”).
Complainant shows in its submission that Respondent is using its domain names in connection with neither bona fide offerings of goods or services nor legitimate noncommercial or fair uses, both examples of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). Respondent’s domain names have not been legitimately used since their registration on May 2, 2000, and contain no information other than links to other competing websites. See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links to other websites, is not a legitimate use of the domain names); see also Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website). Furthermore, Complainant has not licensed Respondent to use its mark and can find no data supporting the proposition that Respondent is commonly known by the domain name—in fact, due to the general popularity of the U-HAUL mark, it is doubtful that any entity could be commonly known by Complainant’s mark other than Complainant and its authorized representatives. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (as Complainant has held rights to U-HAUL for nearly forty years, it is difficult to imagine that another entity could possibly be known by any of the domain names in dispute other than Complainant); see also Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark). These showings by Complainant, following the criteria outlined in Policy ¶¶ 4(c)(i-iii) successfully address any claims Respondent could make under the Policy, thus adequately meeting its burden of demonstrating Respondent’s lack of rights and legitimate interest in the domain name.
In these circumstances, Respondent’s use of its domain names to refer Internet users to competitors of Complainant, coupled with its inability to affirmatively demonstrate any rights or legitimate interests in the domain names, can only result in a finding for Complainant. See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise); see also Boeing Co. v. Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate interests where Respondent has advanced no basis on which the Panel could conclude that it has a right or legitimate interest in the domain names, and no use of the domain names has been established); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where Respondent failed to submit a Response to Complaint and had made no use of the domain name in question).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the Policy lists four circumstances that may constitute evidence of bad faith registration and use, the circumstances described therein are not exhaustive, but are rather merely illustrative of situations clearly defining bad faith registration and use. 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 Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in ¶4(b), does not mean that the domain names at issue were not registered in and are not being used in bad faith”). One example of bad faith registration and use not enumerated in the Policy is the concept of “passively holding” a domain, especially one that is confusingly similar to a registered mark.
A well-known, registered trademark operates as constructive notice of the existence of the mark. It is evidence that a domain name has been registered and used in bad faith when Respondent registers a domain name that is confusingly similar to a trademark, especially one listed with the Principal Register of the USPTO. See U-Haul Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002) (because of the fame attained by Complainant’s mark, it can be presumed that Respondent knew of U-HAUL before registering the disputed domain names); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).
Furthermore, passive holding of a domain name, without any further justification or demonstrable preparations for use, infers bad faith use and registration of the domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith); See also Mondich & Am. Vintage Wine Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that Respondent’s failure to develop its website in a two year period raises the inference of registration in bad faith).
Respondent used the U-HAUL registered mark in its domain names, either despite or because of the mark’s fame and status, actions that evidence bad faith registration. In addition, Respondent has made no use of its domain names since its registration of those domain names on May 2, 2000. It has passively held the domain names for over two years. Together, these two principles underscore the fact that when Respondent registered the confusingly similar domain names and subsequently failed to develop those domains, Respondent exhibited bad faith use and registration. The facts in this dispute support no other conclusion. See TV Globo Ltda v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) Respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) Respondent failed to develop the site). In light of the fact that Respondent has made no submission to the contrary, it is acceptable to infer bad faith use on behalf of Respondent with regards to their passively held domain names.
Accordingly, the Panel finds that Respondent both registered and used its domain names in bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <uhaulem.com>, <uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>, <uhauliteasy.com>, <uhaulman.com>, and <4uhauling.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 4, 2002.
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