Mayflower Transit, LLC v. Mayflower Logistics Inc
Claim Number: FA1106001392783
Complainant is Mayflower Transit, LLC (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Mayflower Logistics Inc (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mayflowerlogistics.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 10, 2011.
On June 9, 2011, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <mayflowerlogistics.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the names. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@mayflowerlogistics.com. Also on June 13, 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 July 11, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <mayflowerlogistics.com> domain name is confusingly similar to Complainant’s MAYFLOWER mark.
2. Respondent does not have any rights or legitimate interests in the <mayflowerlogistics.com> domain name.
3. Respondent registered and used the <mayflowerlogistics.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding. Although Respondent copied the Forum with an email sent to Complainant, the Panel has determined that this did not constitute a Response within the meaning of the Policy. Accordingly, this case was decided as if it were a default proceeding.
Complainant, Mayflower Transit, LLC, is a large provider of transportation and logistic services. Complainant owns a wide array of trademark registrations for the MAYFLOWER mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,209,037 issued September 14, 1982). Complainant uses the mark as its brand name in the road transport and logistical services industry.
Respondent, Mayflower Logistics Inc, registered the disputed domain name on August 28, 2009. The disputed domain name resolves to a site offering transportation and logistic services which compete directly with Complainant’s 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 claims that it has rights in the MAYFLOWER mark based upon its trademark registrations held with the USPTO. Prior panels have determined that registering a mark with the USPTO grants the registrant defendable rights in the registered mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Therefore, the Panel finds that Complainant has established its rights in the MAYFLOWER mark under Policy ¶ 4(a)(i) by registering it with the USPTO (e.g., Reg. No. 1,209,037 issued September 14, 1982).
Complainant also claims Respondent’s disputed domain name is confusingly similar to its own MAYFLOWER mark. The disputed domain name includes the entire mark while adding the generic top-level domain (“gTLD”) “.com” and a term descriptive of Complainant’s business, “logistics.” The Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s MAYFLOWER mark under Policy ¶ 4(a)(i) because the differences between the two are too trifling as to adequately differentiate one from the other. 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.”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Under Policy ¶ 4(a)(ii), Complainant may shift the burden of proof to Respondent if it is able to make a prima facie case showing Respondent’s apparent lack of rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has met its prima facie burden and that the onus now lies with Respondent to establish its rights or legitimate interests in the disputed domain name. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Respondent has failed to file a response in this action allowing the Panel to assume it lacks rights or legitimate interests in the disputed domain name. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will examine the entire record before making a determination regarding Respondent’s rights or legitimate interests in the disputed domain name according to the factors listed in Policy ¶ 4(c).
Complainant maintains that Respondent is not commonly known by the disputed domain name. Respondent has offered no evidence to support a finding that it is commonly known by the disputed domain name. The WHOIS information appears to indicate a relationship between Respondent and the disputed domain name. However, no other information on record supports the WHOIS information. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).
Respondent has the opportunity to establish legitimate interests or rights in the disputed domain name if the Panel finds that it is engaging in a bona fide offering of goods or services or making a legitimate noncommercial or fair use. Complainant contends Respondent is not doing so and as such does not have rights or legitimate interests in the disputed domain name. Respondent’s disputed domain name resolves to a site offering services which directly compete with Complainant in the transportation and logistics industry. The Panel finds that using the disputed domain name to offer competing services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant also contends that Respondent’s offer to sell is further evidence of its lack of rights or legitimate interests in the disputed domain name. Complainant has furnised evidence outlining Respondent’s willingness to sell the disputed domain name for $25,000. The Panel finds that Respondent’s attempt to sell the disputed domain name to Complainant is affirmative evidence of Respondent’s lack of rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”); see also Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”)
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant offers submissions indicating Respondent’s willingness to sell the disputed domain name to Complainant and alleges that the offer to sell provides affirmative evidence of bad faith registration and use. The evidence on record shows that Respondent solicited an offer to sell the disputed domain name and then refused a $500 offer from Complainant. Respondent countered with a price of $25,000. Complainant claims that the exorbitant amount offered by Respondent is further evidence of bad faith registration and use. The Panel finds that Respondent’s offer to sell is far in excess of the costs associated with registering a domain name and as such is evidence of bad faith registration and use under Policy ¶ 4(b)(i). See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).
Complainant argues that Respondent is disrupting its business through the use of the disputed domain name. Respondent’s disputed domain name resolves to its own commercial site where it offers services that compete with Complainant’s own service offerings. Internet users diverted to Respondent’s website may purchase services from Respondent instead of Complainant. The Panel finds offering competing services from the disputed domain name is further evidence of Respondent’s bad faith registration and use pursuant to 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)).
Complainant also argues that Responden is gaining commercially from the operation of the disputed domain name constituting bad faith registration and use. Respondent’s disputed domain name resolves to a site where it offers logistics services in direct competition with Complainant’s own offerings. Respondent presumably receives some type of remuneration for the sale of these services. The Panel finds Respondent is gaining commercially from the sale of competing services by confusing Internet users into believing that Complainant is somehow affiliated with the disputed domain name; and as such, has registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mayflowerlogistics.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 12, 2011
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