Mayflower Transit, LLC v. shay shay
Claim Number: FA1103001377722
Complainant is Mayflower Transit, LLC (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is shay shay (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mayflowerrelocation.com>, registered with Dotster, 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.
John J. Upchurch as Panelist.
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, Inc. confirmed by e-mail to the National Arbitration Forum that the <mayflowerrelocation.com> domain name is registered with Dotster, Inc. and that Respondent is the current registrant of the name. Dotster, Inc. has verified that Respondent is bound by the Dotster, 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 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@mayflowerrelocation.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 6, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mayflowerrelocation.com> domain name is confusingly similar to Complainant’s MAYFLOWER mark.
2. Respondent does not have any rights or legitimate interests in the <mayflowerrelocation.com> domain name.
3. Respondent registered and used the <mayflowerrelocation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Mayflower Transit, LLC, was established in 1927 as a provider of relocation and storage services. Complainant owns the MAYFLOWER mark and uses the mark for the promotion of its business in the moving, transportation, and storage industry. 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, shay shay, registered the <mayflowerrelocation.com> domain name on October 25, 2007. The disputed domain name resolves to a directory website which lists third-party links to websites in direct competition with Complainant’s moving and transportation business.
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.
Complainant maintains that is has demonstrated its rights in the MAYFLOWER mark. In Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005), after finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark 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 a number of trademark registrations for its MAYFLOWER mark with the USPTO (e.g., Reg. No. 1,205,728 issued August 17, 1982). The Panel finds that Complainant has established rights in the MAYFLOWER mark through its registration with a trademark authority pursuant to Policy ¶ 4(a)(i).
Complainant also maintains that Respondent’s <mayflowerrelocation.com> domain name is confusingly similar to Complainant’s MAYFLOWER mark. The disputed domain uses Complainant’s entire mark and merely adds the descriptive term “relocation,” which relates to Complainant’s moving and transportation business, and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a descriptive terms does not adequately distinguish the disputed domain name from Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that the affixation of a gTLD does not sufficiently remove the disputed domain name from the realm of confusing similarity. 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.”) Therefore, the Panel concludes that Respondent’s disputed domain name is confusingly similar to Complainant’s MAYFLOWER mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent has no rights or legitimate interests in the <mayflowerrelocation.com> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel determined that “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.” Complainant has made a prima facie showing in support of its claims against Respondent. Respondent failed to submit a response to the Complaint. The Panel may interpret this as evidence that Respondent lacks 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 will first examine the record to discover whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <mayflowerrelocation.com> domain name. The WHOIS information identifies Respondent as “shay shay,” which is not similar to the disputed domain name. Complainant additionally argues that it has not licensed nor otherwise permitted Respondent to use the MAYFLOWER mark within the disputed domain name. Given these findings, the Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); 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’s <mayflowerrelocation.com> domain name redirects Internet users to a directory website featuring third-party links to websites providing relocation services in direct competition with Complainant’s 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 users to Complainant’s competitors 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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites does not represent 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 also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent 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)).
Complainant contends that Respondent attempted to sell the disputed domain name to Complainant via letter. Respondent stated that the domain name would be for sale to the highest bidder and acknowledged its willingness to part with the domain name as Respondent had “nothing to do with the moving industry.” The Panel finds that Respondent’s offer to sell the <mayflowerrelocation.com> domain name to the highest bidder is further evidence that Respondent has no rights or legitimate interests under 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)); Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant alleges that Respondent offered to sell the disputed domain name to Complainant or to the highest bidder. In a letter to Complainant, Respondent announced the beginning of this auction process. Respondent acknowledges that “there are a lot of people in the moving industry that are interested in this domain name.” The Panel finds that Respondent’s attempt to sell the <mayflowerrelocation.com> domain name demonstrates bad faith use and registration pursuant to Policy ¶ 4(b)(i). See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); 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 asserts that Respondent’s registration and use of the <mayflowerrelocation.com> domain name disrupts its business in the moving and transportation industry. Internet users intending to purchase Complainant’s services may find Respondent’s directory website and instead purchase similar moving services from a competitor as a result. The Panel finds that such 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 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); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel infers that Respondent likely receives click-through fees from the aforementioned links. Respondent’s disputed domain name features numerous third-party links to Complainant’s competitors in the moving and transportation industry. Internet users searching online for Complainant may find Respondent’s website instead. Respondent’s use of Complainant’s MAYFLOWER mark creates a likelihood of confusion with Internet users as to Complainant’s sponsorship of, or affiliation with, the resolving website and displayed links. Respondent tries to profit from this confusion through the receipt of click-through fees. The Panel finds that this is evidence of bad faith use and registration under Policy ¶ 4(b)(iv). See 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); Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mayflowerrelocation.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: April 18, 2011
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