national arbitration forum

 

DECISION

 

Mayflower Transit, LLC v. WebContents, Inc (www.webcontents.com)

Claim Number: FA1103001377711

 

PARTIES

Complainant is Mayflower Transit, LLC (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA.  Respondent is WebContents, Inc (www.webcontents.com) (“Respondent”), Illinois, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mayflowermoving.com>, registered with DOTSTER.

 

PANEL

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.

 

James A. Carmody, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2011; the National Arbitration Forum received payment on March 14, 2011.

 

On March 14, 2011, DOTSTER confirmed by e-mail to the National Arbitration Forum that the <mayflowermoving.com> domain name is registered with DOTSTER and that Respondent is the current registrant of the name.  DOTSTER has verified that Respondent is bound by the DOTSTER 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 March 15, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 4, 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@mayflowermoving.com.  Also on March 15, 2011, 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 April 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.

 

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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <mayflowermoving.com> domain name is confusingly similar to Complainant’s MAYFLOWER mark.

 

2.    Respondent does not have any rights or legitimate interests in the <mayflowermoving.com> domain name.

 

3.    Respondent registered and used the <mayflowermoving.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Mayflower Transit, LLC, owns the MAYFLOWER mark and has continuously used the mark since 1927 in connection with its moving, transportation, and storage services.  Complainant holds numerous trademark registrations for its MAYFLOWER mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,205,728 issued August 17, 1982).  

 

Respondent, WebContents, Inc (<webcontents.com>), registered the <mayflowermoving.com> domain name on February 22, 1999.  The disputed domain name resolves to a website directory featuring third-party links, some of which directly compete with Complainant’s moving and storage business.

 

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."

 

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 the 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:

 

(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 contends that it has demonstrated its rights in the MAYFLOWER mark.  In AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007), the panel found that “Complainant has established rights in the AIM mark through its use and federal trademark registrations for purposes of Policy ¶ 4(a)(i).”  See also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).  Here, Complainant holds numerous trademark registrations for its MAYFLOWER mark with the USPTO (e.g., Reg. No. 1,205,728 issued August 17, 1982).  The Panel concludes that Complainant has established its rights in the MAYFLOWER mark according to Policy ¶ 4(a)(i). 

 

Complainant also argues that Respondent’s <mayflowermoving.com> domain name is confusingly similar to Complainant’s MAYFLOWER mark.  The disputed domain names utilizes Complainant’s mark in its entirety and only differs through the addition of the descriptive word “moving,” which relates to Complainant’s moving and transportation business, and the affixation of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that the addition of a descriptive word and a gTLD do not remove the disputed domain name from the realm of confusing similarity.  See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)); see also Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”).  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s MAYFLOWER mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.

 

Rights or Legitimate Interests

 

Complainant argues that Respondent has no rights or legitimate interests in the <mayflowermoving.com> domain name.  In Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008), the panel determined that “It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”  Here, Complainant has made a prima facie case.  Given Respondent’s failure to respond to the Complaint, the Panel may find that Respondent has impliedly admitted to having no rights and legitimate interests under Policy ¶ 4(a)(ii).  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  However, the Panel chooses to explore the record to find whether Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant asserts that Respondent is not commonly known by the <mayflowermoving.com> domain name.  Additionally, Complainant points out that it has licensed nor otherwise permitted Respondent to use the MAYFLOWER mark within the disputed domain name.  The WHOIS information provided identifies Respondent as “WebContents, Inc (<webcontents.com>),” which is not similar to the disputed domain name.  The Panel finds that Respondent is not commonly known by the <mayflowermoving.com> domain name pursuant to Policy ¶ 4(c)(ii), as nothing in the record indicates otherwise.  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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the 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).

 

Respondent uses the disputed domain name to host a directory website consisting of various third-party links, some of which directly compete with Complainant’s moving business.  Respondent likely receives click-through fees from these links.  The Panel finds that Respondent’s use of the confusingly similar disputed domain name to reroute Internet users to sites that are unrelated to Complainant, or sites that directly compete with Complainant, is not 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 Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

The Panel finds that Policy ¶ 4(a)(ii) has been met.   

 

Registration and Use in Bad Faith

 

Complainant argues that Respondent’s use of the <mayflowermoving.com> domain name disrupts its moving and transportation business.  Internet users intending to purchases Complainant’s services may find Respondent’s website and purchase similar services from one of the competing third-party links as a result.  The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain name does disrupt Complainant’s business, which constitutes bad faith use and registration under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel infers that Respondent receives click-through compensation from the previously mentioned links on the resolving website.  Internet users searching online for Complainant may find Respondent’s website and become confused as to Complainant’s sponsorship of, or association with, the website and listed links.  The likelihood of confusion is high due to Respondent’s use of Complainant’s mark within the disputed domain name.  Respondent tries to profit from this confusion through the receipt of click-through fees.  The Panel finds that such registration and use of the <mayflowermoving.com> domain name is evidence of bad faith use and registration under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”);  see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).

 

The Panel finds that Policy ¶ 4(a)(iii) has been met.

 

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

 

James A. Carmody, Esq., Panelist

Dated:  April 15, 2011

 

 

 

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