USABOX, Inc. v. Hakan Ozcilingir
Claim Number: FA1012001361390
Complainant is USABOX, Inc. (“Complainant”), represented by Thomas A. Kulik of Scheef & Stone LLP, Texas, USA. Respondent is Hakan Ozcilingir (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <myusabox.com>, registered with GoDaddy.com, Inc.
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.
Flip Petillion as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 1, 2010; the National Arbitration Forum received payment on December 2, 2010.
On December 3, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <myusabox.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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@myusabox.com. Also on December 13, 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 December 27, 2010.
On December 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Flip Petillion as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
USABOX, Inc. claims to be a provider of postal addresses in the United States and to offer online mail and parcel forwarding services. Complainant asserts that it has continuously used the USABOX.COM mark in several states since October 1998.
USABOX, Inc. currently is the holder of the US registered service mark USABOX.COM mark since November 28, 2000.
Complainant argues that Respondent registered the domain name <myusabox.com> and has intentionally attempted to attract, for a commercial gain, Internet users to a website by diverting Internet users searching for Complainant’s services.
Complainant contends that Respondent's domain name is confusingly similar to Complainant’s registered mark and operating name. Complainant further contends that Respondent has no rights or legitimate interests in the domain name. Finally, Complainant contends that Respondent registered and is using the domain name in bad faith.
B. Respondent
According to Respondent, the disputed domain name is not confusingly similar to Complainant’s service mark, since the “my” prefix would be used without confusion. Furthermore, Respondent argues to have legitimate rights and interests in the disputed domain name, since Respondent would use the disputed domain name in relation to a legitimate business with a bona fide offering of goods and services. Finally Respondent contends not to have registered or used the domain name in bad faith. Respondent contends that he did not registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant, that he did not engage in a pattern of conduct to prevent rightful holders from registering their marks and that there would be no intentional attraction for commercial gain of competitors’ clients, since there would not be a risk that Internet users misspell ‘usabox.com’ by typing ‘myusabox.com’ instead.
1. Complainant is the holder of the following trademark registration:
U.S. Reg. No. 2,407,889 – USABOX.COM for virtual mail box rental services, mail forwarding, and receipt and delivery of mail for others in class 39 (U.S. class 100 and 105), registered on November 28, 2000.
2. Complainant first used its trademark on October 22, 1998.
3. Respondent registered the domain name <myusabox.com> on January 8, 2008.
4. Respondent uses the domain name in connection with its offering of United States addresses that allow users to receive mail, control a virtual mailbox online, and have content shipped anywhere in the world.
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.
Complainant submits evidence of its registration of the USABOX.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,407,889 issued November 28, 2000). Complainant states that it uses its mark in connection with virtual mail box rental services, mail forwarding, and receipt and delivery of mail for others. According to the Panel, Complainant’s registration of the USABOX.COM mark with the USPTO is sufficient evidence of Complainant’s rights in the mark under Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
The Panel finds that the addition of the pronoun “my” to the entirety of Complainant’s mark renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the “domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
Respondent’s <myusabox.com> domain name is confusingly similar to Complainant’s USABOX.COM mark. Respondent’s addition of the word “my” to Complainant’s mark does not distinguish the disputed domain name from the mark. Complainant argues that the addition of the word “my” is often part of an online marketing strategy that allows individuals to personalize content in relation to products and services offered under a particular trademark. The Panel agrees with this analysis.
Respondent argues that the “my” prefix is used without confusion in many cases. However, Respondent provides no evidence whatsoever that the addition of the “my” prefix would prevent domain names from being confusingly similar. The mere co-existence of domain names only differing in the addition of the “my” prefix does not prove that such domain names cannot be confusingly similar.
Under Policy ¶ 4(a)(ii), Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.
It is established case law that it is sufficient for Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the Domain Name in order to shift the burden of proof to the Respondent. 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 submits that Respondent is not authorized by Complainant to use Complainant’s USABOX.COM mark. Additionally, the WHOIS information supplied by Complainant indicates that the registrant of the disputed domain name is “Hakan Ozcilingir.” Respondent claims to be a director of Viany, Inc. and that this company would use MYUSABOX as a business name. Nevertheless, Respondent does not submit any evidence that Viany, Inc. was using MYUSABOX as a business name prior to the registration of the disputed domain name or that he was known by that business name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name and thus lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant argues that although Respondent does currently use the disputed domain name to operate a business offering competing services identical to Complainant, this does not give Respondent rights or legitimate interests in the disputed domain name. Complainant contends that Respondent’s use of Complainant’s mark to sell competing goods does not constitute a legitimate use under the Policy. According to the Panel, Respondent’s use of the disputed domain name to offer products in competition with Complainant 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Or. State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal services and sale of law-related books under Complainant's name is not a bona fide offering of goods and services because Respondent is using a mark confusingly similar to the Complainant's to sell competing goods.”). see also Caterpillar Inc. v. Pipetech, FA0706001000030 (Nat. Arb. Forum July 17, 2007) (finding no bona fide offering of goods or services where respondent used the disputed domain name to host a website that sells products and services in competition with complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors)
Bad Faith Registration
Complainant asserts that Respondent had actual and/or constructive notice of Complainant and its rights in the mark prior to registration of the domain name. Complainant contends that Respondent had notice of Complainant’s USABOX.COM mark given Complainant’s continuous use of the mark since 1998 and Complainant’s registration of its <usabox.com> domain name on October 22, 1998. According to the Panel, the fact that Respondent is a direct competitor of Complainant shows that Respondent must have had knowledge of the trade mark. Therefore, the Panel finds that Respondent registered the disputed domain name in bad faith under 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).
Bad faith Use
Complainant contends that Respondent’s <myusabox.com> domain name disrupts Complainant’s business and constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The Panel finds that Respondent uses the disputed domain name that is confusingly similar to Complainant’s trademark to divert Complainant’s customers to Respondent’s competing business. According to the Panel, this is evidence of bad faith registration and use under 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 Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant); See also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); See also Cybertania, Inc. v. Right Mobile, Inc. Domain Manager and Right Mobile Inc. c/o Domain Manager, FA0706001015411 (Nat. Arb. Forum August 6, 2007) (finding that the registration of domain names as a means of diverting Internet users seeking complainant’s products under the ULTRAPASSWORDS.COM and MYFREEPAYSITE.COM marks away from the genuine source of these goods and services to other competing sources, constitutes bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent is trading on the value established by Complainant in its USABOX.COM mark to attract Internet users who misspell or mistype Complainant’s mark in the disputed domain name. Complainant further asserts that Respondent is deriving economic benefit from this practice, either by attracting Internet users to Respondent’s website where identical goods and services are offered, or by the receipt of compensation from the owners of other websites for delivering Internet users to those sites. Complainant contends that this behavior constitutes bad faith under Policy ¶ 4(b)(iv). According to the Panel, the difference between the USABOX.COM mark and the disputed domain name does not relate to a simple misspelling, but to a misconception of the trademark, that is due to the confusing similarity of the trademark. The Panel nevertheless finds that the use of the disputed domain name creates a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service. The fact that Respondent uses the website to competing services evidences that Respondent makes use of this confusion to intentionally attempt to attract, for commercial gain, Internet users to its web site or other on-line location. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <myusabox.com> domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: January 12, 2011
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