Junk My Car, LLC v Doron Hanan
Claim Number: FA1005001324192
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.
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.
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 firstname.lastname@example.org. 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
The Complainant has common law and registered trademark rights for the term JUNK MY CAR.
Both parties offer vehicle removal
services. The Complainant operates
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.
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
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.
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.
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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