Green Flag Limited v. herethereandeverywhere, inc
Claim Number: FA1005001325481
Complainant is Green
Flag Limited (“Complainant”), represented by James A. Thomas, of Troutman Sanders LLP,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com>, registered with DIRECTNIC, LTD.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2010.
On May 19, 2010, DIRECTNIC, LTD confirmed by e-mail to the National Arbitration Forum that the <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names are registered with DIRECTNIC, LTD and that Respondent is the current registrant of the names. DIRECTNIC, LTD has verified that Respondent is bound by the DIRECTNIC, LTD 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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 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@greenflagcars.com, postmaster@greenflagcarrentals.com, postmaster@greenflagcarentals.com, and postmaster@greenflagcarental.com. Also on May 24, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names are confusingly similar to Complainant’s GREEN FLAG mark.
2. Respondent does not have any rights or legitimate interests in the <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com> and <greenflagcarental.com> domain names.
3. Respondent registered and used the <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Green Flag Limited, is a recovery service for stranded motorists, offering vehicle breakdown insurance, roadside assistance and vehicle repair. Complainant owns numerous trademark registrations for the GREEN FLAG mark, including with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,467,163 issued February 19, 1993), the European Union Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 000,861,955 issued December 16, 1999) and the trademark authorities of fourteen other countries worldwide.
Respondent, herethereandeverywhere, inc, registered the <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names on April 7, 2010. All of the disputed domain names resolve to a website purportedly offering car rentals and making prominent use of a “green flag cars” heading and a green flag logo very similar to that of Complainant.
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.
Complainant owns numerous trademark registrations for the GREEN FLAG mark, including with the UKIPO (e.g., Reg. No. 1,467,163 issued February 19, 1993), the OHIM (e.g., Reg. No. 000,861,955 issued December 16, 1999) and the trademark authorities of fourteen other countries worldwide. The Panel finds that such widespread trademark registration provides substantial evidence of Complainant’s rights in the GREEN FLAG pursuant to Policy ¶ 4(a)(i), even when the mark is not registered in the country where Respondent lives or operates. See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Complainant alleges that Respondent’s <greenflagcars.com>, <greenflagcarrentals.com>,
<greenflagcarentals.com>, and <greenflagcarental.com>
domain names are confusingly similar to Complainant’s GREEN FLAG mark because
each disputed domain begins with Complainant’s mark and then adds the generic
top-level domain (“gTLD”) “.com” and one or more of the following generic or
descriptive terms: “cars,” “car,”
“rentals,” “rental,” or a misspelled version of “car” lacking the final letter
“r.” The Panel finds that adding terms
like “car,” which are descriptive of Complainant’s business, or generic terms
like “rental” does not sufficiently distinguish the disputed domain names from
Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Am. Express Co. v. Buy Now, FA 318783
(Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain
names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX
marks. Each disputed domain name
contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds
nondistinctive, descriptive and generic terms, some of which describe
Complainant’s business.”); see also
Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding
that the respondent’s domain names were confusingly similar to Complainant’s
GOOGLE mark where the respondent merely added common terms such as “buy” or
“gear” to the end). The Panel also finds
that the presence of the gTLD “.com” is irrelevant to the analysis of confusing
similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA
914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a
gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that Respondent’s <greenflagcars.com>, <greenflagcarrentals.com>,
<greenflagcarentals.com>, and <greenflagcarental.com>
domain names are confusingly similar to Complainant’s GREEN FLAG according to
Policy ¶ 4(a)(i).
The Panel finds
Policy ¶ 4(a)(i) has been satisfied.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain names. According to Policy ¶ 4(a)(ii), Complainant must only present a prima facie case before the burden then shifts to Respondent to demonstrate its rights and legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case in these proceedings. As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks rights and legitimate interests in the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Talk City, Inc. v. Robertson, D2009-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”). The Panel, however, elects to consider the evidence presented in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent is not commonly known by the disputed domain names, concluding that Respondent accordingly lacks rights and legitimate interests. The Panel finds that the WHOIS information for the disputed domain names lists the registrants as “herethereandeverywhere, inc,” which is evidence that Respondent is not commonly known by the disputed domain names. The WHOIS information, combined with the lack of any further evidence showing that Respondent is commonly known by the disputed domain names and the absence of any authorization from Complainant for Respondent to use its mark in the disputed domain names, is sufficient for the Panel to conclude under Policy ¶ 4(c)(ii) that Respondent does not possess rights and legitimate interests in the disputed domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(i) based on the WHOIS information and other evidence in the record).
Respondent’s <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names resolve to Respondent’s website purportedly offering car rental services under the heading “green flag cars.” Complainant argues that Respondent’s use of Complainant’s GREEN FLAG mark to redirect Internet users to Respondents’ site instead of Complainant’s does not grant Respondent rights and legitimate interests in the disputed domain names. The Panel finds that using Complainant’s mark with the intent to divert Complainant’s intending customers to Respondent’s site for commercial gain is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant argues that Respondent’s resolving website
purportedly offers car rental services, which are services in the same
automotive service industry as Complainant and thus competing with
Complainant. As Respondent is trading
off Complainant’s well-known mark in its business as an industry competitor
offering similar and thereby disrupting Complainant’s business, the Panel finds
that Respondent has acted in bad faith in registering and using the disputed
domain names according to Policy ¶ 4(b)(iii).
See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat.
Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to
divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of
bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also
Complainant alleges that Respondent uses the <greenflagcars.com>, <greenflagcarrentals.com>,
<greenflagcarentals.com>, and <greenflagcarental.com>
domain names to redirect Internet users to Respondent’s own website for
commercial gain as it purportedly offers car rental services. Complainant argues that Respondent’s
prominent use of the “green flag cars” heading on the website creates confusion
among Internet users as to Respondent’s affiliation with Complainant and,
combined with Complainant’s mark in the disputed domain names, is intended to
attract Complainant’s customers to Respondent’s site. The Panel finds that registering disputed
domain names with the intent to attract Internet users for commercial gain by
creating confusion reveals bad faith registration and use under Policy ¶
4(b)(iv). See World Wrestling
Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24,
2001) (concluding that the respondent registered and used the
<wwfauction.com> domain name in bad faith because the name resolved to a
commercial website that the complainant’s customers were likely to confuse with
the source of the complainant’s products, especially because of the
respondent’s prominent use of the complainant’s logo on the site); see also Perot Sys. Corp. v. Perot.net,
FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain
name in question is obviously connected with the complainant’s well-known
marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds 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 <greenflagcars.com>, <greenflagcarrentals.com>, <greenflagcarentals.com>, and <greenflagcarental.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 2, 2010
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