Junk My Car, LLC v Doron
Hanan
Claim Number: FA1005001324192
PARTIES
Complainant is Junk My Car, LLC (“Complainant”), represented by Fred
H. Perkins, of Morrison Cohen LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <junkmycarusa.com>, registered with Wild West
Domains, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Richard Hill as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 11, 2010.
On May 12, 2010, Wild West Domains, Inc. confirmed by e-mail to
the National Arbitration Forum that the <junkmycarusa.com> domain name is
registered with Wild West Domains, Inc.
and that the 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 May 21, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of June 10, 2010 by which Respondent could file a Response
to the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
postmaster@junkmycarusa.com. Also on May
21, 2010, the Written Notice of the Complaint, notifying Respondent of
the email addresses served and the deadline for a Response,
was transmitted to Respondent via post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts.
A timely Response was received and determined to be complete on June 3, 2010.
Complainant’s Additional Submission was received on June 10, 2010 after
the deadline for submissions. The Panel
finds Complainant’s submission does not comply with Supplemental Rule 7.
On June 11, 2010, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard Hill as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant alleges that it registered the domain name
<junkmycar.com> on June 11, 2004, and has been using it since then to
advertise its business, which is the removal of motor vehicles. Thus the Complainant has common law rights in
the mark JUNK MY CAR. In addition to its
common law rights, the Complainant has also obtained US trademark registrations
for the mark JUNK MY CAR.
According to the Complainant, the disputed domain name was registered
on October 22, 2009, and is being used by the Respondent to promote a vehicle
removal business active in the south of
The Complainant states that the disputed domain name is confusingly
similar to its mark, in the sense of the Policy, and cites UDRP precedents to
that effect.
The Complainant alleges that, in response to a cease and desist letter
sent in April 2009, the Respondent offered to sell the disputed domain name to
the Complainant for US $3000. The
Complainant refused that offer.
According to the Complainant, use of the disputed domain name to offer
junk car removal services in direct competition with the Complainant’s
established car removal service is neither a bona fide offering of goods and
services pursuant to Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Complainant cites UDRP cases to support
this position.
Further, says the Complainant, in Junk My Car LLC v. Cherizol, NAF
Case No. FA1245300 (March 18, 2009), where the services offered by the
Respondent are identical to those offered by Complainant, but Respondent’s
services are restricted to one state or smaller geographical region, “it is
clear that Respondent has no rights or legitimate interest in respect to the
domain name as Respondent is trading off on Complainant’s services by
admittedly reaping the financial benefits of customers who go to Respondent’s
site mistakenly believing them to be Complainant’s site.” Accordingly, Respondent here is trading off of
Complainant’s good will by reaping the financial benefits of customers who go
to Respondent’s site mistakenly believing it to be the Complainant’s site. Thus, the element of lack of legitimate rights
in Respondent’s domain under Policy ¶ 4(a)(ii) is
established.
The Complainant alleges that the Respondent must have intended or
expected that Internet users seeking to find the Complainant’s website <junkmycar.com>
would encounter the Respondents’ website instead, confusing those users into
thinking that the entity operating the website at the disputed domain name was
somehow associated with the Complainant. The mere addition of “
Additionally, says the Complainant, the Respondent’s bad faith is
evidenced in its demand for payment of $3000 in order to relinquish its
intentionally misleading domain name.
B. Respondent
The Respondent alleges that the
purpose of the disputed domain name is solely to have a present location on the
web for a company which is incorporated in the state of
The Respondent states that he took certain precautions in order to avoid confusion with the Complainant, such as using a different layout and “look and feel” for his web site; offering vehicle removal only for a fee, and not for free, as does the Complainant; offering the services himself, as opposed to through franchisees, as does the Complainant.
Thus, says the Respondent, there is no confusing similarity.
Further, says the Respondent, the dollar amount spent on truck decals, website maintenance, advertising, and employee uniforms alone exceeds the amount which was requested for transfer of the disputed domain name. That is, the amount requested was not in excess of out-of-pocket costs.
The Respondent concludes by stating:
The sole intention when purchasing
the disputed domain name was to attract consumers which are inquiring about
junking their cars. The ultimate goal is
to create a foundation based on the key phrase which is used in all the major
search engines when inquiring about junk car removal and not in any way to
derive short term financial gain. Therefore
this domain was purchased in good faith and is being performed under good
business practice.
C. Additional Submissions
In its Additional Submission, the Complainant notes that the Respondent
admits that he was aware of the existence of the Complaint’s web site when he
registered the disputed domain name. The
Respondent further acknowledges that when registering his domain and creating
the website, he knew consumers might be confused between the two names.
According to the Complainant, the Respondent’s sole defense is to
suggest that there are differences in content of the two websites sufficient to
overcome the confusion caused by the nearly identical web domain names. Even assuming that these arguments have any
relevance, they fail to eliminate the likelihood of confusion. The Respondent offers substantially similar
(even if not completely identical) services in the same business—namely,
removal of unwanted cars. Second, the
geographical distinction is insufficient to insulate the Respondent from a
finding of confusing similarity. In
fact, the Respondent’s addition of the generic term “USA”—which would suggest a
national presence—belies the notion that the Respondent truly intended through
its web domain name to convey to consumers that it was only a regional,
Florida-based company.
The Complainant states that the Respondent fails to establish that he was
commonly known by the disputed domain name, particularly in light of the long
use and fame of the Complainant’s trademark. Further, the Respondent admits that he is offering
comparable services (removal of unwanted cars) and that he is attempting to attract
customers by using the Complainant’s JUNK MY CAR mark.
Further, says the Complainant, the Respondent in his Response admits
that he intended or expected Internet users to reach his site when searching
for the Complainant’s JUNK MY CAR mark.
According to the Complainant, the Respondent’s admissions are more than
sufficient to establish that the Respondent’s intent was to create a site which
trades off of the Complainant’s marks, that he has no rights or legitimate
interests in the disputed domain name, and that he registered and is using the
disputed domain name in bad faith in the sense of the Policy.
Further says the Complainant, the Respondent’s bad faith is further
evidenced by his demand for payment of $3,000 to sell and transfer his
misleading domain name. There is no question
that the $3,000 amount demanded was unreasonable and obviously and admittedly greater
than the Respondent’s legitimate out-of-pocket expenses in registering the
domain name and activating the website. The
Respondent does not deny making the demand, and instead attempts to “justify”
that price by citing other irrelevant costs, including unrelated branding costs
associated with his infringing use of the Complainant’s mark. The Respondent offers no submissions to
document such expenses or to demonstrate how they were related to the registration
and activation of the website.
FINDINGS
The Complainant has common law and registered
trademark rights for the term JUNK MY CAR.
Both parties offer vehicle removal
services. The Complainant operates
throughout the
The disputed domain name is confusingly
similar to the Complainant’s mark and does not include a specification of the
geographic area in which the Respondent offers his services, namely
The Respondent
registered the disputed domain name well after the Complainant’s mark and is
using it to point to a website offering services that compete with those
offered by the Complainant.
The Complainant did
not authorize or license the Respondent to use the Complainant’s mark.
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 a 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.
However, before dealing with the substantive issues, the Panel must
deal with a procedural issue. The Complainant submitted an Additional Submission after the deadline for
submissions had passed, so it has been deemed deficient by the National
Arbitration Forum pursuant to Supplemental Rule 7. The Panel may accordingly determine what
amount of weight, if any, should be given to Complainant’s deficient Additional
Submission. In the present case, the
Panel has decided to admit the Complainant’s deficient Additional Submission. See
Bd. of Governors of the Univ. of Alberta
v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that a panel may consider
a response which was one day late, and received before a panelist was appointed
and any consideration made).
The Complainant asserts (and
provides evidence to that effect) that it has rights in the JUNK MY CAR mark
through its registration of the mark with the United States Patent and
Trademark Office (“USPTO”). This is
sufficient to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark
registration adequately demonstrates a complainant’s rights in a mark under
Policy ¶ 4(a)(i)); see
also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007)
(holding that “[t]his trademark registration [with the USPTO] establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
The Complainant correctly points out that the disputed
domain name is identical to its mark, except for the addition of the geographic
term “
Thus the Panel finds that the disputed domain name is
confusingly similar to the Complainant’s mark under Policy ¶ 4(a)(i).
The Respondent has not contested the Complainant’s allegation that the Respondent is not commonly known by the disputed domain name. There is no evidence before the Panel to indicate that the Respondent is commonly known by the disputed domain name pursuant to 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The Complainant contends that the Respondent is not using its disputed domain name for a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use. The Complainant contends that the Respondent’s website resolving from the disputed domain name offers vehicle removal services which compete with Complainant’s vehicle removal services. The evidence presented by the Complainant supports these allegations, and they have not been denied by the Respondent.
The Panel therefore finds that the Respondent’s use of the disputed domain name does not provide Internet users with a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)); see also 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.”).
Further, the Panel finds that finds that the Respondent deliberately registered the disputed domain name in order to make a commercial gain from a likelihood of confusion (see below). This cannot be considered to be a legitimate use under the Policy.
The Panel finds
that the Complainant has satisfied its burden of proof for this element of the
Policy, and that the Respondent does not have rights or legitimate interests in
the disputed domain name.
The Complainant alleges that the Respondent’s disputed domain name may confuse Internet users seeking the Complainant as to the affiliation or sponsorship of the resolving website. The Complainant argues that the Respondent profits from this likelihood of confusion between the disputed domain name and Complainant’s mark. The evidence presented by the Complainant supports these allegations.
Further, the
Respondent has not presented any plausible explanation for his addition of the
geographical term “
The Panel finds that the Respondent deliberately registered the disputed domain name in order to make a commercial gain from a likelihood of confusion. This is evidence of bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds
that the Complainant has satisfied its burden of proof for this element of the
Policy and that the Respondent registered and is using the disputed domain name
in bad faith, in the sense of the Policy.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <junkmycarusa.com> domain name be TRANSFERRED
from Respondent to Complainant.
Richard Hill, Panelist
Dated: June 16, 2010
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