Free Bridge Auto Sales Inc. v.
Claim Number: FA0903001250951
PARTIES
Complainant is Free Bridge Auto Sales Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <everybodyrides.com>
(the “Domain Name”), registered with Register.com,
Inc.
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on March 6, 2009; the National Arbitration Forum received a hard
copy of the Complaint on March 6, 2009.
The Complaint named Domain Discreet as the Respondent because the
identity of the actual Respondent was, at that time, obscured by a privacy shield.
On March 10, 2009, Register.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <everybodyrides.com>
Domain Name is registered with Register.com, Inc. At the same time, Register.com, Inc. lifted
the privacy shield, disclosed that the actual registrant of the Domain Name is Larry
Ross, and amended the publicly available WHOIS data to list Mr.
On March 13, 2009, the National Arbitration Forum instructed
Complainant to amend its Complaint to list Respondent’s name and contact
information to reflect the revised WHOIS information.[1] Registrant complied with the National
Arbitration Forum instruction and submitted the requested Amended Complaint.
On March 16, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of April 6, 2009 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@everybodyrides.com by e-mail.
Respondent sent an electronic Response on April 6. The Response contained only the following,
single sentence: “I agree with the single member
selection for this case.” The National
Arbitration Forum subsequently indicated that it deemed the Response incomplete
because it did not receive a hard copy of the Response prior to the Response
deadline.[2]
On April 14, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, and in the
absence of any request by Respondent for appointment of a three-member panel, the
National Arbitration Forum appointed David H. Bernstein as Panelist.
RELIEF SOUGHT
Complainant requests that the Domain Name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The totality of Complainant’s contentions are reproduced below from the
“Actual and Factual Grounds” section of the Complaint:
“[a.] Complainant first used
the word ‘EVERYBODY RIDES’ in connection with its Automobile Dealership as
early as 1994 and it continues to use each of the aforementioned EVERYBODY
RIDES Marks since the dates of first use set forth in those registrations. Along with adding the registered symbol on
the end of each and every use of the mark EVERYBODY RIDES to let everyone know
that EVERYBODY RIDES is spoken for.
“[b.] The Respondent
registered EVERYBODYRIDES.COM May 01, 2000 three years after the mark was
filed, The respondent may not have known at the time of registration that he
was registering a pre dated trademark name and violating someone else’s mark
However on May 12, 2004 the Respondent was sent a certified cease and desist
letter from Free Bridge Auto Sales Inc. Legal Counsel making the Respondent
aware of his infringement and giving him a chance to remedy the situation by
agreeing to voluntarily transfer his registered domain name EVERYBODYRIDES.COM
over to Free Bridge Auto Sales Inc. and that he will not make improper use of
Free Bridge Auto Sales Inc. mark or any confusingly similar mark.
“Before any notice to the Respondent, the Respondent had a car
dealership web site up and it was called EVERYBODY RIDES and used the domain
name EVERYBODYRIDES.COM this in itself is a violation of the mark.
“[c.] Free Bridge Auto Sales Inc. asked the Respondent to cease and
desist along with taking down his car dealership site as it violates the
EVERYBODY RIDES mark directly along with transferring the name over to Free
Bridge Auto Sales Inc. and the Respondent refused along with telling Free
Bridge Auto Sales Inc. his plans for the domain name EVERYBODYRIDES.COM he said
that he is using it for a car dealership web site in Florida despite being told
about the registered mark and that he would offer to sell both the site and the
name to Free Bridge Auto Sales Inc. for no less than $5,000.
“With this response Free Bridge Auto Sales Inc. hired Legal Counsel
which in return sent a certified cease and desist letter to the Respondent
which is attached explaining that he is infringing upon the mark EVERYBODY
RIDES and that he is to remedy the current situation by transferring the domain
name EVERYBODYRIDES.COM to his client Free Bridge Auto Sales Inc. and that he
will not make improper use of his client’s mark or any confusingly similar
mark.
“After that the Respondent took down the car dealership site and parked it at
his current registrar Register.com along with changing his registration
info. Currently the name sits parked on
register.com In which is still infringing on the mark as the Google ad sense
content on the pages all reflect the car dealer industry.
“Furthermore during the process of when the car dealership site was up
many of Free Bridge Auto Sales Inc. clients were going to the Respondent’s web
site assuming that EVERYBODYRIDES.COM is their web site as they own the mark
and also use it heavily in marketing and promotions and the first thing that
comes to mind when you see, read or hear a Free Bridge Auto Sales Inc. ad is
EVERYBODY RIDES. And the first and most
popular domain extension that is searched on the Internet is .COM.”
B. Respondent
As noted above, Respondent did not submit a substantive response;
instead, Respondent merely sent an e-mail stating only: “I agree with the single member
selection for this case.” Because
Respondent did not respond on the merits, the Panel considers the Respondent to
be in default. Accordingly, the Panel is
entitled to accept all reasonable factual allegations set forth in the
Complaint as true unless the evidence is clearly contradictory. See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (holding that without an adequate timely filed response, 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.”).
FINDINGS
The Panel finds (based on the limited record in this proceeding, and solely for purposes of this proceeding) that Complainant has demonstrated rights in the EVERYBODY RIDES mark, that the Domain Name is confusingly similar to the EVERYBODY RIDES mark, that Respondent lacks a legitimate interest in the Domain Name, and that the Respondent has used the Domain Name in bad faith. However, the Panel finds that the Complainant has failed to demonstrate that Respondent registered the Domain Name in bad faith.
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 the 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 has established trademark rights in the EVERYBODY RIDES
mark. Complainant’s EVERYBODY RIDES
trademark has been registered with the United States Patent and Trademark
Office (the “USPTO”) since 1997. For
the purposes of the Policy, absent compelling evidence demonstrating that the
registration is invalid, registration of the mark with the USPTO is sufficient
to establish rights in the mark. See Elec. Commerce Media v.
The Domain
Name is identical to Complainant’s mark.
The only differences between the mark and the Domain Name are the gTLD and
the space, both of which are without legal significance in determining identity
or similarity under the Policy. See mVisible Tech., Inc. v. Navigation
Catalyst Sys., Inc., D2007-1141 (WIPO Nov. 30, 2007); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr.
22, 2000); see also J.P. Morgan & Co.
Inc. & Morgan Guar. Trust Co. of
Complainant has the burden to prove that the
Respondent lacks rights or legitimate interests in the Domain Name. However, “the threshold for making such a
showing is quite low, since it is difficult to produce evidence to support a
negative statement.” Starwood Hotels & Resorts Worldwide v.
Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005).
Complainant alleges that the Respondent
previously hosted a car dealership website at the site to which the Domain Name
resolved, in direct competition with Complainant’s business, and that Respondent’s
use of the Domain Name in this way caused confusion amongst Complainant’s
potential consumers. To the extent the
services offered by Respondent constituted trademark infringement, the offering
of goods and services by Respondent would not be deemed bona fide pursuant to Paragraph 4(c)(i) of the Policy. Schouten
Indus. B.V. & Schouten Prod. B.V. v. Canadian Soylife Health
Once a complainant has made a prima facie showing that a respondent
lacks rights to or legitimate interests in a domain name, the burden shifts to
the respondent to show that it has rights or legitimate interests in the domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000); see also Document Tech., Inc. v. Int’l
Elec. Communications, Inc., D2000-0270 (WIPO June 6, 2000). Because Respondent has not responded on the
merits, it has failed to rebut Complainant’s prima facie showing. Accordingly,
on this admittedly thin record, Complainant has sustained its burden of proving
that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has thus satisfied the
requirement of paragraph 4(a)(ii) of the Policy.
Paragraph 4(b) of the Policy states that any
of the following circumstances, in particular but without limitation, will be
considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the
[respondent] registered or acquired the domain name 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, or to a
competitor of that complainant, for valuable consideration in excess of
[respondent’s] documented out-of-pocket costs directly related to the domain
name; or
(ii) [respondent] registered the domain name
in order to prevent the owner of the trademark or service mark from reflecting
the mark in a corresponding domain name, provided that [respondent] has engaged
in a pattern of such conduct; or
(iii) [respondent] registered the domain name
primarily for the purpose of disrupting the business of a competitor; or
(iv) by
using the domain name, [respondent] intentionally attempted to attract, for the
purpose of commercial gain, Internet users to [respondent’s] website or other
on-line location, by creating a likelihood of confusion with the complainant’s
mark as to the source, sponsorship, affiliation, or endorsement of
[respondent’s] web site or location or of a product or service on [respondent’s]
web site location.
There is evidence
in the record (albeit without much detail or any documentary support) of bad
faith use of the Domain Name. The use of
the Domain Name for a parking page with competitive pay-per-click advertising
is sufficient to establish bad faith use. See Asian World of Martial Arts Inc. v.
Such evidence is lacking in this case. It is true that Complainant registered its
trademark prior to Respondent’s registration of the Domain Name, that Respondent
hails from the same state as Complainant, and that Respondent has a business in
the same field. But, Complainant has
submitted no evidence beyond those assertions to support a finding that Respondent
likely knew of Complainant’s mark at the time it registered the Domain
Name. For example, Complainant claims
that it advertised heavily using the mark, but it has not alleged when, where,
or how it ran these advertisements, including whether it ran any of those advertisements
prior to Respondent’s registration of the Domain Name.
To the contrary, Complainant concedes that Respondent
“may not have known at the time of the registration [of the Domain Name] that
he was registering a pre-dated trademark name and violating someone else’s
trademark.” That concession is fatal to
Complainant’s claim; by acknowledging that Respondent may not have had the
requisite knowledge at the time of the registration, coupled with the absence
of any substantial evidence from Complainant to suggest that Respondent did in
fact have such knowledge, Complaint has shown that it cannot prove, by a preponderance
of the evidence, that Respondent registered the Domain Name in bad faith (that
is, with knowledge of Complainant’s trademark and with a bad faith intention to
cybersquat, infringe, dilute, or otherwise take unfair advantage of
Complainant’s trademark). See Starwood Hotels & Resorts Worldwide
v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005); see also Substance Abuse Mgmt., Inc. v.
Screen Actors Modesl (sic) Int’l, Inc., D2001-0782 (WIPO Aug. 14, 2001).
Because of the unusually thin record in this
case and the limitations inherent in the UDRP process, it is important to note
that the Panel is not making any conclusive findings regarding the good or bad
faith of Respondent’s registration of this Domain Name. It is possible that Respondent innocently
registered the Domain Name because it appeared to be a good mark or slogan for
his car dealership services; it also is possible that Respondent was aware of
Complainant’s mark in May 2000 and that such knowledge led it to register the <everybodyrides.com> Domain Name. However, the burden is on Complainant to
prove that this is a case of abusive cybersquatting and Complainant has failed
to sustain that burden in this case.
DECISION
Having failed to establish all three elements required under the ICANN
Policy, the Panel concludes that relief shall be DENIED.
Dated: April 28, 2009
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National
Arbitration Forum
[1] The Panel does not agree that an Amended Complaint is required in these circumstances. Rather, because Complainant properly named the registrant as it was listed in the WHOIS record, Complainant should have the right, if it prefers, to proceed against the named privacy shield. The Panel believes the better practice when a registrar lifts a privacy shield in response to a provider’s request for registrar verification is to notify the Complainant of the new information and give the Complainant the option to amend its complaint (without a requirement). Because Complainant here amended the Complaint without objection, the Panel will simply proceed to decide this dispute on the basis of the Amended Complaint.
[2] The Panel does not agree that a timely electronic response should be deemed incomplete if a respondent fails to provide the dispute resolution provider with a hard copy of the response by the response deadline. Rather, where an electronic version of a response was timely received and there is no prejudice to the complainant, a panel should accept and consider the response even where a hard copy was not received by the response deadline. See Intermap Tech. Corp. v. Salvage Elec. Inc., FA 201130 (Nat. Arb. Forum Dec. 14, 2003); see also Kent House Ltd. v. RN, WebReg, FA 244527 (Nat. Arb. Forum May 4, 2004) (accepting and considering response where the response was timely submitted electronically, but not submitted in hard copy by the response deadline).