CyberActive Incorporated v. JC Fawcett / Defensive Driving School
Claim Number: FA1012001362199
Complainant is CyberActive Incorporated (“Complainant”), represented by Sharon Naim, California, USA. Respondent is JC Fawcett / Defensive Driving School (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getdefensive.org>, registered with Active-Domain.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2010; the National Arbitration Forum received payment on December 7, 2010.
On December 10, 2010, Active-Domain.com confirmed by e-mail to the National Arbitration Forum that the <getdefensive.org> domain name is registered with Active-Domain.com and that Respondent is the current registrant of the names. Active-Domain.com has verified that Respondent is bound by the Active-Domain.com 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 14, 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@getdefensive.org. Also on December 14, 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 January 4, 2011.
On January 10, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq. as Panelist.
Complainant requests that the domain name <getdefensive.org> be transferred from Respondent to Complainant.
A. Complainant alleges as follows:
CyberActive Incorporated (formerly named Naim Interactive, Incorporated) was incorporated as a subchapter S corporation in the State of California on October 25, 2000. CyberActive has been providing online traffic school and defensive driving courses for over 10 years. In the State of Texas, CyberActive has been offering defensive driving courses on the domain GetDefensive.com since 2004 (Attachment 1).
Complainant registered the domain GetDefensive.com on June 4, 2004 (Attachment 2), and has continuously owned and operated the domain since that time, establishing common law trademark rights in the name “Get Defensive.” In 2004, the Texas Education Agency (T.E.A.) approved Complainant doing business as GetDefensive.com, as an online defensive driving course provider and school (Attachment 3). Since that time, GetDefensive.com has successfully graduated over 250,000 students from its online, video and streaming video defensive driving courses, creating substantial goodwill and brand recognition among its customers and the general public.
Additionally, the domain GetDefensive.com refers thousands of customers to CyberActive’s other courses and websites across the United States, including those in the State of Oregon. GetDefensive.com had over 30,000 unique visitors to its website in November 2010 (Attachment 4), through both direct traffic and paid advertisements on Google and Bing/Yahoo (Attachment 5). By contrast, public traffic recording agencies have no data recorded for visitors to <getdefensive.org> during the same month (Attachment 6).
B. Respondent alleges as follows:
Defensive Driving School has operated in the Seattle area since 1973. They have used the tagline “Get Defensive” for advertising about becoming a defensive driver (which is a very common term for driving courses).
Respondent has been using the domain “driving-school.com” for over a decade, but the dash is often confusing to people.
Before Respondent acquired < getdefensive.org> they looked into several domain names, but the ones they would have liked were already taken including getdefensive.com.
Respondent alleges that the Claimant only operates online driving courses and caters to people who have traffic tickets and need a ticket dismissal in Texas. Anything outside of this is referred elsewhere. Respondent does not offer online courses, but only offers instructor led classes in the car and in the classroom. Anyone searching for an online course is not going to sign up with Respondent.
The Claimant offers online courses for $25. The cheapest classroom session that Respondent offers is $90. Respondent is not attempting to trick individuals who may be attempting to find the claimants site. The majority of the business obtained by the claimant is not from individuals typing the name “getdefensive.com” into a browser but is done through pay per click campaigns.
When Respondent reserved <getdefensive.org,> they had no idea what getdefensive.com even led to. Respondent is only now aware that Claimant has challenged their right to it.
Defensive Driving School has been using the term “Get Defensive” to describe its approach to teaching traffic safety, and therefore believes that they are within their rights to use this slogan.
The domain name <getdefensive.org> registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; Respondent has no rights or legitimate interests in respect of the domain name; and the domain name has been registered and is being used 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."
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 does not provide evidence of a trademark registration with a federal trademark authority. However, the Panel finds that a federal trademark registration is not required to establish rights in a mark under Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant has asserted credible common law rights in its GETDEFENSIVE.COM mark, such that the mark has acquired a secondary meaning in the minds of the public who call for the services. Complainant was incorporated on October 25, 2000 and provides online traffic school and driving courses. Complainant began offering its defensive driving courses on the website resolving from the <getdefensive.com> domain name on June 4, 2004. The Texas Education Agency approved Complainant as an online defensive driving course provider and school under its GETDEFENSIVE.COM mark.
Complainant has graduated over 250,000 students and its <getdefensive.com> domain name refers thousands of customers to Complainant’s other courses and websites across the United States. The Panel finds that, based on Complainant’s credible evidence of continuous and extensive use, Complainant has established common law rights in its GETDEFENSIVE.COM mark under Policy ¶ 4(a)(i). 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 Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Respondent’s <getdefensive.org> domain name is confusingly similar to Complainant’s GETDEFENSIVE.COM mark, as Respondent’s version merely removes the generic top-level domain (“gTLD”) “.com” from Complainant’s mark and adds the gTLD “.org.” The Panel finds that the removal of a term from Complainant’s mark and the addition of a gTLD fails to adequately distinguish the disputed domain name from Complainant’s mark. See Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks); see also 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.”).
Although the <getdefensive.org> domain name is comprised of common and descriptive terms, ,the composite term, in its integral state, conveys a separate and singular impression. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Accordingly, the Panel finds that Complainant has proved, under Policy ¶ 4(a)(i) that Respondent’s domain name of <getdefensive.org> is identical or confusingly similar to Complainant’s trademark and/or service mark of GETDEFENSIVE.COM.
Complainant must first make 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 has presented undisputed evidence that Respondent is not commonly known by the disputed domain name. Most substantially, the WHOIS information identifies the domain name registrant as “JC Fawcett / Defensive Driving School.” The Panel determines that this name is not similar to the disputed domain name and that therefore, Respondent is not commonly known by the <getdefensive.org> domain name. 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 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).
Complainant’s Attachments 7 and 12 show Respondent screenshots evidencing that the linked to website offers competing driving instruction courses. The Panel finds that Respondent’s use of the disputed domain name to offer competing services is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant 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 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.”).
Accordingly. the Panel finds that Respondent has no rights or legitimate interests in the disputed mark of <GetDefensive.org> in accordance with Policy¶ 4(a)(ii).
Complainant has presented convincing evidence through screenshots and Respondent’s advertisements on Google, Yahoo and Yellow pages (see Attachment 10) that Respondent competes with Complainant by offering similar driving courses, and thus is disrupting its business by attempting to steal customers from Complainant.
The Panel finds that Respondent’s use of the disputed domain name does constitute a disruption of Complainant’s business which 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 Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)).
As Panel is permitted to presume that Respondent commercially benefits due to the likelihood of confusion created by Respondent’s use of the <getdefensive.org> domain name, the Panel also concludes that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).
Accordingly. the Panel finds that Respondent’s conduct constitutes bad faith registration and use under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <getdefensive.org> domain name be TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Panelist
Dated: January 24, 2011
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