national arbitration forum

 

DECISION

 

Greyhound Lines, Inc. v. Ambiance Transportation

Claim Number: FA1010001354319

 

PARTIES

Complainant is Greyhound Lines, Inc. ("Complainant"), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Ambiance Transportation ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <greyhoundflorida.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.

 

Hon. Nelson A Diaz (ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2010; the National Arbitration Forum received payment on October 25, 2010.

 

On October 25, 2010, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <greyhoundflorida.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the names.  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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On October 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 15, 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@greyhoundflorida.com.  Also on October 26, 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 October 26, 2010.

 

On October 27, 2010 and November 1, 2010 Additional Submissions were received complying with Supplemental Rule 7.

 

On November 3, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Nelson A. Diaz as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

The domain name <greyhoundflorida.com> incorporates the famous GREYHOUND trademark in its entirety, adding the geographic word “Florida” which, combined with the GREYHOUND trademark clearly refers to Complainant and its services in the State of Florida, along with the most common URL “.com”. These additions do not negate confusing similarity with Complainant’s famous GREYHOUND mark. Respondent is not commonly known by the GREYHOUND Mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. The disputed domain name resolves to a site that displays the name GREYHOUND FLORIDA EXPRESS BUS with a running dog logo that is virtually identical or indistinguishable from Complainant’s registered and famous Greyhound Logo. Respondent has taken the GREYHOUND Mark without authorization in order to misleadingly and deceptively divert Internet users to its web site. At the time that Respondent registered the domain name, the GREYHOUND Mark had been in use for over 80 years and was well known or famous, and certainly familiar to countless consumers, including in Florida where Respondent is located. It is clear that Respondent was not only familiar with the GREYHOUND Mark at the time of registration of the disputed domain name, but intentionally adopted a domain name incorporating the GREYHOUND Mark in order to create an association with Complainant and its services. Respondent’s duplication of the Greyhound Logo and references to Greyhound in the small disclaimer on its website is clear evidence of Respondent’s familiarity with Complainant and its services. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights in its well-known GREYHOUND Mark is evidence of bad faith registration.

 

B. Respondent

There are numerous websites with “Greyhound” contained in the url. Examples are: <www.flgreyhound.com>, <www.floridagreyhounds.com>, <www.floridagreyhounds.com> none of which had been scrutinized in this manner. A disclaimer is on the bottom of the homepage of greyhoundflorida.com that clearly indicates we are in no affiliation with Greyhound Bus Lines, in addition, they have provided the url address for Greyhound Bus Lines.

 

C. Additional Submissions

The Complainants additional submission states:                                                                             

 

Although Respondent states that Complainant contacted them on October 13, 2010 regarding “copyright infringement”, in fact, Complainant sent a letter to Respondent dated October 5, 2010 by Federal Express, a copy of which is attached hereto as Exhibit A.  The letter was delivered to Respondent on October 6, 2010 and signed by “Tom” at the front desk. See Exhibit B. This letter clearly objects to the domain name <greyhoundflorida.com> and demands a voluntary transfer of the domain name to avoid the filing of a complaint under the UDRP. A follow up email was sent to Respondent on October 13, 2010, again attaching the letter of October 5, 2010 and noting that no response had been received. A copy of the email exchange between Complainant’s counsel and Respondent is attached hereto as Exhibit C. In the Response, Respondent states that they removed the infringing dog logo from their website on October 15, 2010; however, as shown on the date stamp on Exhibit F to the Complaint, the dog logo continued to appear on <greyhoundflorida.com> as late as October 22, 2010.

 

Respondent’s willingness to “entertain a financial offer for the transfer of the domain name” is not justification for Respondent’s registration and use of a domain name that includes Complainant’s famous GREYHOUND trademark. Indeed, this is further evidence of Respondent’s bad faith. See Policy ¶ 4(b)(1).                                    

 

The websites that are referred to by Respondent are irrelevant to this proceeding. The first listed domain, <flgreyhound.com> is not even a registered domain name and the second and third (which are identical) are owned by a greyhound pet organization in Florida. See Exhibit D attached hereto.                                                           

 

The use of a disclaimer at the bottom of the home page on Respondent’s website is not sufficient to avoid a likelihood of confusion as more fully set forth on page 5 of the Complaint.

 

Respondent additional submission does not seriously contest any of the allegations in the Complaint.  Respondent submission states that he is a transportation brokerage firm. They purchased GreyhoundFlorida.com to enhance one of our other popular websites floridaexpressbus.com which is what Greyhound Florida indicates. Upon receipt of the e-mail from the complainant’s counsel, they took all necessary measures to remove any possible logo that may confuse GreyhoundFlorida.com to Greyhound.com and did so diligently. Had the complainant wished to secure the name, they would have been able to purchase the domain in the same manner as Ambiance Transportation.

 

FINDINGS

Respondent has violated under ICANN Policy ¶ 4(a)(i) “confusing similarity,” Policy ¶ 4(a)(ii) “no rights or legitimate interests,” and Policy ¶ 4(a)(iii) “bad faith registration and use.”

 

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

Complainant argues that it has rights in the GREYHOUND mark by virtue of its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”):

 

Reg. No. 541,198        issued April 17, 1951;

Reg. No. 805,794        issued March 15, 1966;

Reg. No. 886,508        issued February 17, 1970; &

Reg. No. 989,213        issued July 23, 1974.

 

The Panel finds that these trademark registrations are conclusive evidence of Complainant’s rights in the GREYHOUND mark for the purposes of Policy ¶ 4(a)(i).  See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant alleges that Respondent’s <greyhoundflorida.com> domain name is confusingly similar to Complainant’s GREYHOUND mark because the disputed domain name merely combines Complainant’s mark with the geographic term “florida” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a geographic term does not alter the disputed domain sufficiently to negate confusing similarity according to Policy ¶ 4(a)(i).  See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also BPM Prods., Inc. v. Bog, FA 125814 (Nat. Arb. Forum Nov. 14, 2002) (“Respondent’s addition of “Salem” does not distinguish the domain name from Complainant’s mark because “Salem” is the city where Complainant’s Halloween festival takes place.  Therefore, “Salem” has an obvious relationship with the HAUNTED HAPPENINGS mark, and the <salemhauntedhappenings.com> domain name is confusingly similar to the mark.”).  The Panel finds that attaching the gTLD “.com” has no effect on differentiating the disputed domain name from Complainant’s mark.  See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Thus, the Panel finds that Respondent’s <greyhoundflorida.com> domain name is confusingly similar to Complainant’s GREYHOUND mark pursuant to Policy ¶ 4(a)(i). 

 

Rights or Legitimate Interests

 

Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light.  If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant contends that Respondent is neither affiliated with Complainant nor licensed by Complainant to use Complainant’s mark in the <greyhoundflorida.com> domain name.  The WHOIS information for the disputed domain name lists the registrant as “Ambiance Transportation,” a name which the Panel finds has no association with the disputed domain name.  Thus, the Panel finds that Respondent is not commonly known by the <greyhoundflorida.com> domain name and lacks rights and legitimate interests 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 WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); 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).

 

Complainant alleges that Respondent’s <greyhoundflorida.com> domain name resolves to Respondent’s commercial website offering bus service reservations and transportation services throughout Florida that compete with Complainant.  The Panel finds that using a domain name which appropriates Complainant’s mark to divert Complainant’s customers away from Complainant’s website to a commercial website of Respondent is not a bona fide offering of goods or services according to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of the complainant’s mark “as a portal to suck surfers into a site sponsored by [the respondent] hardly seems legitimate”); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).

 

Complainant asserts that Respondent’s <greyhoundflorida.com> domain name resolves to a website making prominent use of Complainant’s GREYHOUND mark in the website heading “Greyhound Florida Express Bus” and featuring Complainant’s running dog logo.  Complainant argues that Respondent is using Complainant’s GREYHOUND mark and logo in this manner in an effort to pass itself off as Complainant and benefit from Internet users who believe Respondent’s website to be associated with Complainant.  The Panel finds that attempting to pass itself off as Complainant indicates that Respondent lacks rights and legitimate interests in the disputed domain name according to Policy ¶ 4(a)(ii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).

 

Respondent argues in its Response and Additional Submission that it includes a disclaimer on the bottom of the resolving website’s homepage that clearly indicates there is no affiliation between Respondent and Complainant.  Respondent asserts that this disclaimer even includes the URL for Complainant’s website, which further clarifies the lack of relationship and prevents any user confusion.  However, in its Complaint and Additional Submission, Complainant argues, and the Panel may find, that the presence of the disclaimer does not mitigate confusion or establish that Respondent possesses rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also NY Times Co. v. NY Internet Servs., D2000-1072 (WIPO Dec. 5, 2001) ( “Disclaimers and links directly to the authorized site do not mitigate matters. The misdirected searcher is immediately confronted with advertising that has nothing to do with The New York Times.”).

 

Complainant contends in its Additional Submission that Respondent indicated a willingness to sell the <greyhoundflorida.com> domain name to Complainant.  The Panel finds that such a willingness to sell is evidence of a lack of rights and legitimate interests according to Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). 

 

Registration and Use in Bad Faith

 

In its Additional Submission, Complainant responds to Respondent’s argument in its Response that it is “willing to entertain a financial offer for the transference of the domain to GLI.”  Complainant argues that Respondent’s willingness to transfer the <greyhoundflorida.com> domain name to Complainant in exchange for money further demonstrates its bad faith registration and use under Policy ¶ 4(b)(i).  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”); see also Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).

 

Complainant argues that the website resolving from Respondent’s <greyhoundflorida.com> domain name competes with Complainant by offering similar bus transportation services as Complainant in states and cities where Complainant operates.  The Panel finds that using Complainant’s mark in an unauthorized domain name to facilitate competition between Respondent and Complainant is intended to disrupt Complainant’s business and thus shows bad faith registration and use according to Policy ¶ 4(b)(iii).  See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where the respondent and the complainant were in the same line of business in the same market area).

 

Complainant contends that Respondent selection of the <greyhoundflorida.com> domain name incorporating Complainant’s GREYHOUND mark and Respondent’s use of Complainant’s mark and logo on the resolving website indicate Respondent’s intentions to attract Internet users by confusing and misleading them as to the source or affiliation of Respondent’s disputed domain name and resolving website.  Because the resolving website is a commercial site, offering the same types of bus transportation services as Complainant, Respondent likely intended this attraction and confusion to result in profit. The Panel finds that misappropriation of Complainant’s mark and logo designed to create confusion among Internet users for Respondent’s own financial benefit demonstrates that Respondent registered and is using the disputed domain name in bad faith for the purposes of Policy ¶ 4(b)(iv).  See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).

 

Complainant asserts that Respondent’s <greyhoundflorida.com> domain name uses Complainant’s GREYHOUND mark and the resolving website displays both Complainant’s mark and running dog logo.  Complainant argues that Respondent has arranged the disputed domain name and resolving website in this way in order to pass itself off as Complainant and profit from Internet users who may make bus reservations on Respondent’s websites, believing it to be Complainant.  The Panel finds that Respondent’s efforts to pass itself off as Complainant reveal bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed.  Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website).

 

Respondent argues in its Response and Additional Submission that it has included a disclaimer at the bottom of the resolving website in order to indicate that there is no affiliation between Complainant and Respondent and prevent confusion among Internet users.  However, Complainant alleges in its Complaint and Additional Submission, and the Panel agrees, that the presence of a disclaimer is insufficient to prevent a finding of bad faith registration and use according to Policy ¶ 4(a)(iii).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”).

 

Complainant argues that Respondent had actual and/or constructive notice of Complainant and its rights in the GREYHOUND mark prior to the registration of the <greyhoundflorida.com> domain name.  The Panel finds Respondent had actual knowledge of Complainant’s mark, the Panel finds Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).

 

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 <greyhoundflorida.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Nelson A. Diaz (ret.), Panelist

Dated:  November 6, 2010

 

 

 

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