Gentle Giant Moving Co., Inc. v. AAA Gentle
Giant Corp.
Claim Number: FA0212000137712
PARTIES
Complainant is Gentle Giant Moving Co., Inc., Somerville, MA (“Complainant”) represented by Meihuei Hu, of Adam Dash & Associates. Respondent is AAA Gentle Giant Corp., Brooklyn, NY (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <gentlegiantmoving.com>, registered with Network Solutions, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on December 23, 2002; the Forum received a hard copy of the Complaint on December 27, 2002.
On December 30, 2002, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <gentlegiantmoving.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 January 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 22, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@gentlegiantmoving.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On January 30, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the 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:
1. Respondent’s <gentlegiantmoving.com> domain name is confusingly similar to Complainant’s GENTLE GIANT MOVING COMPANY mark.
2. Respondent does not have any rights or legitimate interests in the <gentlegiantmoving.com> domain name.
3. Respondent registered and used the <gentlegiantmoving.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant
has used the GENTLE GIANT MOVING COMPANY mark since 1980 in relation to its
local, interstate and international packing, moving and storage services. Complainant registered its mark on the
Principal Register of the United States Patent and Trademark Office on December
23, 1997 (Reg. No. 2,123,585).
Complainant currently has seven offices and warehouses in Massachusetts
and Rhode Island and extends its service to all fifty states. Complainant handles over 8,000 relocations
each year. Complainant holds the
registration for <gentlegiant.com> and has used this domain name in
connection with its business since 1996.
Respondent registered the <gentlegiantmoving.com> domain name on February 25, 1999. Respondent is known as AAA Gentle Giant Corp. and operates a moving business in New York. Complainant has sent Respondent cease-and-desist letters and telephoned Respondent’s attorney, but Respondent has failed to respond. Respondent is using the disputed domain name to advertise its moving services. It also provides a phone number at the website with a recorded message informing callers that they have reached “Gentle Giant Moving Company.”
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.
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 has established rights in the GENTLE GIANT MOVING COMPANY mark through registration on the Principal Register of the United States Patent and Trademark Office as well as use in connection with its moving services since 1980.
Respondent’s <gentlegiantmoving.com> domain name is confusingly similar to Complainant’s GENTLE GIANT MOVING COMPANY mark because it incorporates Complainant’s entire mark and merely omits the word “company” at the end. The omission of a word such as “company” in the domain name does not add any distinguishing characteristics because the most distinct portion of Complainant’s mark “Gentle Giant Moving,” is still included in the domain name. Therefore the disputed domain name does not overcome a claim of confusing similarity. 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 WestJet Air Center, Inc. v. West Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to Complainant’s mark, where Complainant holds the WEST JET AIR CENTER mark).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).
Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name. When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).
Respondent’s use of the <gentlegiantmoving.com> domain name creates a likelihood of confusion as to the source and sponsorship of the services advertised on its website. Because Respondent did not submit any evidence explaining its use of “Gentle Giant Moving” instead of “AAA Gentle Giant Corp” the Panel infers that Respondent chose the name in order to create confusion. The use of another’s mark in order to create a likelihood of confusion and attract Internet traffic to a website that competes with Complainant’s business is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor is it a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name); see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website).
Respondent has not submitted any evidence establishing that it is commonly known as GENTLE GIANT MOVING or <gentlegiantmoving.com>. Thus, in light of Respondent’s failure to respond, the Panel finds that Respondent has no rights or legitimate interests in <gentlegiantmoving.com> domain name pursuant to Policy ¶ 4(c)(i). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s use of <gentlegiantmoving.com> creates a likelihood of confusion as to the source, sponsorship and affiliation of the domain name. Respondent has failed to respond and as a result has presented no evidence that establishes a legitimate purpose for the domain name. Thus, the Panel infers that Respondent registered the domain name in order to create a likelihood of confusion with Complainant’s mark for its own commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
Moreover, Respondent was on notice as to the existence of Complainant’s mark when it first registered the disputed domain name. Immediately after Respondent adopted the name “AAA Gentle Giant Corp,” Complainant sent Respondent a cease-and-desist letter that informed Respondent of Complainant’s trademark rights in GENTLE GIANT MOVING COMPANY. Therefore, when Respondent registered <gentlegiantmoving.com> it had actual knowledge of Complainant’s rights in the mark. Registration of a domain name with actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").
Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gentlegiantmoving.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: February 3, 2003
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