U-Haul International, Inc. v. AK aka Art Kratka
Claim Number: FA0209000124748
Complainant is U-Haul International, Phoenix, AZ (“Complainant”) represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP. Respondent is Art Kratka AK, Hayward, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uhal.com>, registered with Innerwise, Inc.
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 P. Buchele, 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 24, 2002, Innerwise, Inc. confirmed by e-mail to the Forum that the domain name <uhal.com> is registered with Innerwise, Inc. and that Respondent is the current registrant of the name. Innerwise, Inc. has verified that Respondent is bound by the Innerwise, 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 September 24, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 14, 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 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 23, 2002 pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed James P. Buchele 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 name be transferred from Respondent to Complainant.
A. Complainant’s Submission makes the following assertions:
1. Respondent’s <uhal.com> domain name is confusingly similar to Complainant’s registered U-HAUL family of marks.
2. Respondent does not have any rights or legitimate interests in the <uhal.com> domain name.
3. Respondent registered and used the <uhal.com> domain name 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 with the Principal Register of the United States Patent and Trademark Office (“USPTO”) U.S. Reg. Nos. 746,034 and 893,891 for its U-HAUL mark 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 name <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 its <uhal.com> domain name on January 6, 2002. Currently, Respondent’s domain name resolves to a web page that is blank except for a line of text informing a user that, “uhal.com was registered with domainsnext.com”. Respondent is not licensed or 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 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 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
Complainant has established 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 mere misspelling of a registered mark in a domain name, especially if that mark is well known, is not a substantive alteration, and fails to prevent a finding of confusing similarity. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark).
Furthermore, as a generic 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 its domain name is inconsequential when ascertaining the existence of confusing similarity.
Respondent’s <uhal.com> domain name is confusingly similar to Complainant’s U-HAUL mark. Respondent has simply misspelled the word “U-Haul” by removing the hyphen, adding a “.com”, and eliminating the letter “u”. None of these insignificant variations from the U-HAUL mark prevent a finding of confusing similarity; Respondent’s domain name mimics Complainant’s well-known mark in both pronunciation and appearance. Moreover, it is a popular typo that has resulted in many Internet users accidentally arriving at Respondent’s web site, when their actual intention is to find Complainant’s <uhaul.com> web site.
Accordingly, the Panel finds that the <uhal.com> domain name is confusingly similar to Complainant’s registered mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or legitimate interests in a domain name rests initially upon Complainant. Under Policy ¶¶ 4(c)(i-iii), Respondent can rely on an offering of bona fide goods or services connected with the disputed domain name, the fact that it has been commonly known by the domain name, or that it is making a legitimate noncommercial or fair use of the domain name to demonstrate a right or legitimate interest in a domain name. If Complainant rebuts each of these elements, it has satisfied its burden by successfully addressing any of the specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore shifting the burden 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).
It is neither a bona fide offering of goods or services nor legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii) when the holder of a domain name has done nothing to utilize that name since it was registered. See 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 the Complaint and had made no use of the domain name in question). The registration is even less legitimate if the domain was registered for the purpose of selling it for profit. See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by Complainant); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name suggests it has no legitimate use). In the present dispute, Respondent has done nothing to develop its domain name other than to add the text “uhal.com was registered with domainsnext.com.” Moreover, Respondent approached Complainant in an attempt to either sell its domain name registration to Complainant, or redirect users to Complainant’s web site for a large fee. Respondent is not using its domain name, and by its conduct, has shown that it is only interested in using the domain in order to sell its rights to Complainant. By submitting these facts to the Panel, Complainant has shown that Respondent is not making a bona fide offering of goods or services by maintaining an empty web site, nor is it fairly using its domain for legitimate noncommercial uses by offering to sell its confusingly similar domain name registration to Complainant.
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. 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.
Once a complainant has successfully presented its prima facie case illustrating a respondent’s lack of rights or legitimate interests in its domain name, the burden of demonstrating rights and legitimate interests in the domain name shifts to the respondent. Respondent submitted nothing to the Panel in response to the Complaint. In these circumstances Respondent’s failure to affirmatively demonstrate any rights or legitimate interests in its domain name results 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 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).
Accordingly, the Panel finds that Respondent does not have any rights or legitimate interests in its domain name under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
A registered trademark listed with the Principal Register of the USPTO operates as constructive notice of the existence of the mark. It is evidence that a domain has been registered and used in bad faith when a Respondent registers a domain name that is confusingly similar to a trademark despite actual or constructive notice of the mark. 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 world-wide prominence of the mark and thus Respondent registered the domain name in bad faith).
Similarly, Policy ¶ 4(b)(i) enunciates an example of bad faith use and registration when dealing with a popular mark. The Policy states that when the circumstances surrounding the registration of a domain name indicate that the domain was, “acquired…primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark…for valuable consideration in excess of [Respondent’s] out-of-pocket costs,” bad faith use and registration is evidenced. Obtaining a domain name that is confusingly similar to a registered mark in order to earn a profit from the sale of that domain name registration is a sign of bad faith registration and use. See Dollar Rent A Car Sys. Inc. v. Jongho, FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated bad faith by registering the domain name with the intent to transfer it to Complainant for $3,000, an amount in excess of its out of pocket costs); see also Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name). Failure to utilize a domain name, coupled with an offer for sale, is even stronger evidence of bad faith. See Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
In this dispute, Respondent registered <uhal.com> decades after Complaint registered its mark with the USPTO. Since its registration of the domain name over 10 months ago, Respondent has not taken any steps to develop a web site associated with the domain name. What Respondent has done is initiate contact with Complainant in an attempt to sell or transfer its rights in the domain name for amounts in excess of its out-of-pocket expenses. After an initial offer to transfer the domain name for $3,500, or to redirect its site to Complainant’s site for $1,500, Respondent attempted to negotiate for a price no lower than $1,000. In response to a letter from Complainant demanding transfer of the domain name and notifying Respondent that its domain name infringed on a registered trademark, Respondent again responded with a counteroffer, this time for $900.
From its initial offer and throughout its subsequent offers, Respondent repeatedly requested that Complainant pay far more than the cost of registration for the domain name. As Respondent has done nothing to develop the domain name, and has no maintenance costs associated with the domain name, even its most modest sale offer is excessive so as to evidence bad faith. The fact that the web site has been passively held for over 10 months also evidences that Respondent’s sole reason for registering the domain name was to profit by sale or transfer of its rights to Complainant. In light of Respondent’s failure to respond in these proceedings, Complainant has shown sufficient evidence for the Panel to conclude that Respondent acquired <uhal.com> in order to transfer or sell the domain name registration to Complainant for profit. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).
Accordingly, the Panel finds that Respondent both registered and used its <uhal.com> domain name 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 <uhal.com> domain name be TRANSFERRED from Respondent to Complainant.
James P. Buchele, Panelist
Dated: October 25, 2002
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