BestTransport.com, Inc. v. Andrey Korshenskiy
Claim Number: FA0903001252315
Complainant is BestTransport.com, Inc. (“Complainant”), represented by Robert
J. Morgan, of Porter Wright Morris & Arthur LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carrierdesk.com>, registered with Wild West Domains, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 16, 2009.
On March 13, 2009, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <carrierdesk.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 8, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <carrierdesk.com> domain name is identical to Complainant’s CARRIERDESK mark.
2. Respondent does not have any rights or legitimate interests in the <carrierdesk.com> domain name.
3. Respondent registered and used the <carrierdesk.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, BestTransport.com, Inc., is a well-known provider of transportation management systems. Complainant has used its CARRIERDESK mark in connection with the online sales of its transportation management system products since June 2008. Since that time, Complainant has continuously used its CARRIERDESK mark, has expended over $100,000 in promotion of its product bearing its mark, and has received approximately three million hits a day on its website. Complainant previously held the disputed domain name and used it in connection with its online product sales. Complainant also holds several other domain names in connection with its business.
The WHOIS information reflects that the disputed domain name was created on December 31, 2007. Respondent acquired the <carrierdesk.com> domain name after Complainant’s registration of the disputed domain name lapsed on February 16, 2009. The disputed domain name resolves to a website that is a replica of Complainant’s website.
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 draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows 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.”).
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.
Preliminary Issue: Relevant Date of Respondent’s Registration
The WHOIS information reflects that the disputed domain name
was created on December 31, 2007; however, Complainant contends Respondent did
not acquire the disputed domain name until Complainant inadvertently allowed
its registration of the disputed domain name to lapse on February 16,
2009. The Panel finds the relevant date
Respondent registered the disputed domain name for the purposes of the Policy
is February 16, 2009. See The Ass’n of Junior Leagues Int’l
Inc. v. This Domain Name My Be For
In order for a complainant to establish that it has rights in a mark, a federal trademark is unnecessary provided the complainant can show common law rights in the mark through secondary meaning. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)).
Complainant began selling its transportation management
system under the CARRIERDESK mark online in June 2008, has continuously used
this mark since then, has expended more than $100,000 in promotion of this product,
and has obtained millions of unique visitors to its websites. Complainant holds other domain names bearing
its CARRIERDESK mark. The Panel finds
that Complainant has sufficiently established secondary meaning, and thus,
common law rights in its CARRIERDESK mark under Policy ¶ 4(a)(i) prior to
Respondent’s acquisition of the disputed domain name. See
Respondent’s <carrierdesk.com> domain name contains Complainant’s entire mark and merely adds the generic top-level domain (“gTLD”), “.com.” The Panel finds that the mere addition of a gTLD to Complainant’s mark does not distinguish the disputed domain name from Complainant’s mark, and thus, the <carrierdesk.com> domain name is identical to Complainant’s CARRIERDESK mark under Policy ¶ 4(a)(i). See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that the respondent’s <treeforms.com> domain name is identical to the complainant’s TREEFORMS mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
At the outset, Complainant must make a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to Respondent and Respondent must establish that it has rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has sufficiently made its prima facie showing under Policy ¶ 4(a)(ii). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
domain name resolves to a website that is a replica of Complainant’s
website. The Panel finds that Respondent
has attempted to pass itself off as Complainant, and thus, has not created a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Kmart
Furthermore, Respondent is listed in the WHOIS information as “Andrey Korshenskiy,” which does not indicate that Respondent is commonly known by the <carrierdesk.com> domain name. Respondent has not offered any evidence to indicate otherwise. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent is using the confusingly similar <carrierdesk.com> domain name to pass itself off as a source of Complainant’s products, and thus this is evidence of bad faith registration and use under Policy ¶ 4(b)(iv) because Respondent is trading off the goodwill surrounding Complainant’s mark. See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant); see also Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <carrierdesk.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 30, 2009
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