Yellow Checker Cab Company, Inc. d/b/a Yellow Cab Company v. sfocab.com
Claim Number: FA1010001352699
Complainant is Yellow Checker Cab Company, Inc. d/b/a Yellow Cab Company (“Complainant”), represented by Stephanie O. Sparks, of Hoge, Fenton, Jones & Appel, Inc., California, USA. Respondent is sfocab.com (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yellowcab.net>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 15, 2010.
On October 27, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <yellowcab.net> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 November 3, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 23, 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@yellowcab.net by e-mail. Also on November 3, 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 November 29, 2010, 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" 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant has been using its YELLOW CAB mark extensively in commerce since at least 1978.
Respondent, sfocab.com, registered the <yellowcab.net> domain on December 27, 2001.
The disputed domain name resolves to an inactive website which displays the message: “The Connection was reset.”
Respondent’s <yellowcab.net> domain name is identical to Complainant’s YELLOW CAB mark.
Respondent has not been authorized by Complainant to use the YELLOW CAB mark.
Respondent does not have any rights to or legitimate interests in the <yellowcab.net> domain name.
Respondent registered and uses the <yellowcab.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the domain name was registered and is being used by Respondent in bad faith.
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.
Though Complainant has not registered the YELLOW CAB mark, federal trademark registration is not required in order for Complainant to establish rights in the mark under Policy ¶ 4(a)(i). So long as Complainant can establish common law rights through proof of sufficient secondary meaning associated with its mark, federal trademark registration is not required. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant alleges, and Respondent does not deny, that Complainant uses the YELLOW CAB mark in connection with its telecommunications business in which it routes phone calls to third-party cab dispatchers,, that Complainant also operates a taxicab leasing business, that Complainant’s business has been incorporated since 1978, that Complainant holds business permits associated with the mark in numerous cities, that Complainant’s business and mark have been extensively advertised for many years through print ads, phone book listings and Internet webpages. Complainant has thus provided sufficient evidence to establish common law rights in the YELLOW CAB mark pursuant to Policy 4(a)(i) by virtue of its extensive and continuous commercial use. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that a complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership operating under that mark).
Respondent’s domain name is substantively identical to Complainant’s YELLOW CAB mark. The disputed domain name includes Complainant’s entire mark, removing the space in between the words and adding the generic top-level domain (“gTLD”) “.net.” The removal of spaces and the addition of a gTLD are insufficient to differentiate the disputed domain name from Complainant’s mark because both are required elements of a web address. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from a complainant’s mark under Policy ¶ 4(a)(i).
Therefore, the Panel finds that Respondent’s <yellowcab.net> domain name is identical to Complainant’s YELLOW CAB mark pursuant to Policy ¶ 4(a)(i).
Complainant alleges that Respondent does not have any rights to or legitimate interests in the disputed <yellowcab.net> domain name. Once Complainant has made out a prima facie case in support of its allegations under this head of the Complaint, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the contested domain. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), finding that:
complainant must first make a prima facie case that respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.
Because Respondent has failed to respond to the Complaint, we may infer that Respondent lacks rights to and legitimate interests in the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for a panel to draw adverse inferences from a respondent’s failure to reply to a complaint filed under the Policy). Nonetheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine if there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that there is no evidence in the record to indicate that Respondent is commonly known by a disputed domain name. Moreover, Complainant asserts, without objection from Respondent, that Respondent has not been authorized by Complainant to use the YELLOW CAB mark. In addition, the WHOIS information for the subject domain identifies the registrant only as “sfocab.com,” which does not resemble the contested domain. Accordingly, we conclude that Respondent has not demonstrated that it is commonly known by the contested domain name so as to have established rights in the <yellowcab.net> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was 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 a respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
We also observe that there is no dispute as to Complainant’s assertion that Respondent has failed to make an active use of the <yellowcab.net> domain name. Holding an inactive domain name does 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 Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004):
Respondent is wholly appropriating Complainant’s mark and is not using the … domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
The Panel therefore finds that Policy ¶ 4(a)(ii) is satisfied.
The examples of bad faith registration and use of domain names described in Policy ¶ 4(b) are intended to be illustrative and not exhaustive. The Panel is therefore not limited to consideration of the enumerated factors in Policy ¶ 4(b), but may consider the totality of the circumstances when conducting a Policy ¶ 4(a)(iii) analysis. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
[T]he examples [of bad faith registration and use of contested domain names set out] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.
See also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000):
The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.
Respondent has failed to make an active use of the disputed <yellowcab.net> domain name. The domain resolves to a website which displays the message: “The Connection was reset.” Respondent’s failure to make active use of the disputed domain name, which is substantively identical to Complainant’s YELLOW CAB mark, is evidence that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that that respondent registered and used the disputed domain name in bad faith).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Complainant 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 <yellowcab.net> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 13, 2010
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