national arbitration forum

 

DECISION

 

Ryder System Inc. v. Transure Enterprise Ltd c/o Host Master

Claim Number: FA0907001274369

 

PARTIES

Complainant is Ryder System Inc. (“Complainant”), represented by Elise Kasell, of Cowan, Liebowitz & Latman, P.C., New York, USA.  Respondent is Transure Enterprise Ltd c/o Host Master (“Respondent”), Virgin Islands. 

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <ryderusedtrucksales.com>, registered with Above, 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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 16, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 20, 2009.

 

On July 20, 2009, Above, Inc. confirmed by e-mail to the National Arbitration Forum that the <ryderusedtrucksales.com> domain name is registered with Above, Inc. and that Respondent is the current registrant of the name.  Above, Inc. has verified that Respondent is bound by the Above, 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 July 23, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 12, 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@ryderusedtrucksales.com by e-mail.

 

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

 

On August 18, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant is a worldwide leader in the provision of transportation and logistics for the movement of materials. 

 

Complainant also markets a complete range of used trucks, trailers, tractors, and related vehicle parts. 

 

In conjunction with its worldwide provision of transportation services, Complainant owns numerous trademark registrations for its RYDER service mark, including that filed with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,123,006, issued July 24, 1979, renewed July 24, 1999). 

 

Respondent registered the disputed <ryderusedtrucksales.com> domain name on March 24, 2009.

 

Respondent is not commonly known by the <ryderusedtrucksales.com> domain name.

 

The disputed domain name was for a time used to resolve to a website featuring links promoting Complainant’s business competitors in the automotive industry. 

 

Currently, the <ryderusedtrucksales.com> domain name resolves to a competing commercial website at the domain name <edmunds.com>, owned by a well-known automotive enterprise which allows customers to advertise and sell used vehicles on-line. 

 

Respondent’s <ryderusedtrucksales.com> domain name is confusingly similar to Complainant’s RYDER mark.

Respondent does not have any rights or legitimate interests in the domain name <ryderusedtrucksales.com>.

 

Respondent registered and uses the contested <ryderusedtrucksales.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

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."

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant’s registrations of the RYDER service mark with the USPTO and other national and international authorities confer upon Complainant rights in the mark sufficient for the purposes of Policy ¶ 4(a)(i).  See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005): “Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’).” See also Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established a complainant’s rights in the mark under the Policy). 

 

Respondent’s <ryderusedtrucksales.com> domain name incorporates Complainant’s RYDER mark in its entirety, with the addition of the descriptive phrase “used truck sales,” which is descriptive of Complainant’s automotive sales business, and the affixation of the generic top-level domain “.com.”  These alterations fail to distinguish the disputed domain name from Complainant’s RYDER mark under the standards set out in the Policy.  Thus we conclude that Respondent’s <ryderusedtrucksales.com> domain name is confusingly similar to Complainant’s RYDER mark under Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007):

 

The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).

 

See also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish a respondent’s disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i)). 

 

Complainant has therefore satisfied Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant contends that Respondent does not have any rights or legitimate interests in the <ryderusedtrucksales.com> domain name.  Once a prima facie case has been established by Complainant, the burden shifts to Respondent to demonstrate that it has rights to or legitimate interests in the disputed domain name.  See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008):

 

It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.

 

Complainant has adequately established a prima facie case in these proceedings.  Because Respondent has failed to respond to the allegations of the Complaint, we may presume that Respondent lacks any rights to or legitimate interests in the contested <ryderusedtrucksales.com> domain name.  See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a response, a respondent failed to invoke any circumstance which could demonstrate its rights to or legitimate interests in a disputed domain name).  We will nonetheless examine the record to determine whether there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name under the criteria set out in Policy ¶ 4(c). 

 

We begin by observing that there is no dispute as to Complainant’s allegation that Respondent’s <ryderusedtrucksales.com> domain name previously resolved to a website featuring click-through links and advertisements for Complainant’s competitors in the automotive industry.  This use of the disputed domain name, presumably for Respondent’s financial gain, did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks in a domain name to send Internet users to a website which displayed links to that complainant’s competitors, was not a bona fide offering of goods or services); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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)). 

 

We also observe in the same connection that there is no dispute as to Complainant’s assertion that, currently, the disputed domain name resolves to the website located at the <edmunds.com> domain, the site of a popular automotive business where used vehicles can be advertised and sold.  This current use of the disputed domain name to divert Internet users to a competitor’s website likewise does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain pursuant to Policy ¶¶ 4(c)(i) or (iii), respectively.  See, for example, 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.

 

See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website which competed with the business of a complainant, was not a bona fide offering of goods or services).    

 

We note further that Complainant contends, and Respondent does not deny, that Respondent is not commonly known by the <ryderusedtrucksales.com> domain name.  Indeed the pertinent WHOIS information identifies the registrant of the disputed domain name as “Transure Enterprise Ltd c/o Host Master” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name.  Therefore, we conclude that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the WHOIS information, as well as other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a respondent had no rights to or legitimate interests in a disputed domain name where there was no evidence in the record indicating that that respondent was commonly known by the disputed domain). 

 

Complainant has thus satisfied Policy ¶ 4(a)(ii). 

 

Registration and Use in Bad Faith

 

Complainant asserts that Respondent has previously used the disputed domain name to resolve to a website featuring sponsored links for Complainant’s competitors, and that Respondent is currently using the disputed domain name to resolve to a competing commercial website.  Respondent does not deny these assertions.  Accordingly, and in the circumstances presented, we are satisfied that Respondent’s use of the contested <ryderusedtrucksales.com> domain name as alleged has disrupted Complainant’s business, and continues so to do, by diverting Complainant’s customers to competing automotive businesses.  Therefore, we conclude that Respondent has registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that a respondent acted in bad faith by attracting Internet users to a website that competed with a complainant’s business); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name confusingly similar to a complainant’s mark to attract Internet users to a directory website containing links to the websites of a complainant’s business competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)). 

 

Complainant also contends that Respondent’s previous and current use of the disputed domain name constitutes bad faith based on Respondent’s evident intent to attract Internet users to its web address through the use of a confusingly similar domain name, and that it does so for financial gain. We may safely presume that Respondent profits from the diversion of Internet users to the websites of Complainant’s competitors, and we thus conclude that Respondent has registered and is using the contested domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name that was confusingly similar to a complainant’s mark by offering links to third-party websites featuring services similar to those offered by that complainant); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where a respondent's use of the domain name there at issue to resolve to a website where similar services were offered to Internet users was likely to confuse the user into believing that a complainant was the source of or was sponsoring the services offered at the site). 

 

For these reasons, we find that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <ryderusedtrucksales.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

 

Terry F. Peppard, Panelist

Dated:  August 31, 2009

 

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