national arbitration forum

 

DECISION

 

Yellow Cab Company of Orlando, Inc. d/b/a Yellow Cab Company v. Desiree Valdez

Claim Number: FA1107001398790

 

PARTIES

Complainant is Yellow Cab Company of Orlando, Inc. d/b/a Yellow Cab Company ("Complainant"), represented by Jon M. Gibbs of Akerman Senterfitt, Florida, USA.  Respondent is Desiree Valdez ("Respondent"), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <theyellowcabcompany.com>, registered with ENOM, INC.

 

PANEL

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.

 

Robert T. Pfeuffer, Senior District Judge, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 14, 2011; the National Arbitration Forum received payment on July 15, 2011.

 

On July 15, 2011, ENOM, INC. confirmed by e-mail to the National Arbitration Forum that the <theyellowcabcompany.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name.  ENOM, INC. has verified that Respondent is bound by the ENOM, 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 July 18, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 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@theyellowcabcompany.com.  Also on July 18, 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.


 

A timely Response was received and determined to be complete on August 3, 2011.

 

On August 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

 

Identical or Confusingly Similar: Policy ¶ 4(a)(I).

 

A. Complainant

 Complainant claims that it has established rights in its YELLOW CAB CO. mark.  According to Complainant, Complainant has been providing ground transportation services in Central Florida since 1947 under its YELLOW CAB CO. mark.  Complainant provides evidence of its trademark registrations with the United States Patent and Trademark Office ("USPTO") for its YELLOW CAB CO. mark (e.g., Reg. No. 3,546,147 registered December 16, 2008).

 

Complainant contends that Respondent's <theyellowcabcompany.com> domain name is confusingly similar to Complainant's YELLOW CAB CO. mark.

 

Rights and Legitimate Interests: Policy ¶ 4(a)(ii).

 

Complainant argues that Respondent's business name is "Celebration Transportation" and that Respondent just recently began using the business name "The Yellow Cab Company."  Complainant asserts that there is no evidence to show that Respondent began using the "The Yellow Cab Company" name prior to registering the disputed domain name.

 

Complainant contends that Respondent's registration of the "The Yellow Cab Company" name with the state of Florida does not provide any rights to the name according to Florida registration statute that Complainant provides in the Complaint.   Complainant also argues that Respondent applied for a trademark with the USPTO only after receiving Complainant's cease-and-desist letter.

 

According to Complainant, Respondent's <theyellowcabcompany.com> domain name resolves to Respondent's web site that offers services that directly compete with Complainant's transportation services.

 

Registration and Use in Bad Faith: Policy ¶ 4(a) (iii)

 

Complainant argues that Respondent is offering competing transportation services at the web site resolving from the disputed domain name.

 

Complainant contends that Respondent registered and uses the <theyellowcabcompany.com> domain name in bad faith under Policy ¶ 4(b) (iv) because Respondent is intentionally attempting "to attract, for commercial gain, customers to its web site and to its services by creating a likelihood of confusion with [Complainant’s marks]."  Complainant argues that Respondent registered the confusingly similar domain name to attract Internet users that are searching for Complainant and commercially benefit from their confusion.

 

B. Respondent

 

Identical or Confusingly Similar: Policy ¶ 4(a) (I).

 

Respondent argues that Complainant can not demonstrate rights in the YELLOW CAB CO. mark because Complainant’s trademark registration contains a pictured vehicle with the words of Complainant's mark.  Respondent claims that Complainant has not made any claims in its registration to the exclusive use of the terms aside from with Complainant's design.

 

Respondent contends that the disputed domain name is comprised of common and generic terms and thus cannot be deemed confusingly similar to Complainant's mark.  However, this argument is not applicable under Policy ¶ 4(a)(i).

 

 Rights and Legitimate Interests: Policy ¶ 4(a) (ii)

 

Respondent does not specifically contend that it is commonly known by the <theyellowcabcompany.com> domain name, however, Respondent presents evidence of its use of the domain name and its advertisements for its new name.  Respondent claims that it began doing business under its "Celebration Transportation" name on March 11, 2010 and then began to operate under the "The Yellow Cab Company" name on January 30, 2011.  Respondent provides evidence that it registered the "The Yellow Cab Company" name with the state of Florida and purchased the domain name to reflect Respondent's new name.  Respondent alleges that it filed an application with the USPTO for the "The Yellow Cab Company" name.

 

Registration and Use in Bad Faith: Policy ¶ 4(a) (iii)

 

Respondent claims that Complainant caused the web site resolving from the <theyellowcabcompany.com> domain name to shut down, so the disputed domain name currently resolves to an inactive web site.  However, Respondent contends that it previously used the web site to market its transportation services online under its "The Yellow Cab Company" name.

 

Respondent also argues that the terms of the <theyellowcabcompany.com> domain name are common and generic, and therefore, Complainant does not have an exclusive monopoly on the terms on the Internet.

 

C. Additional Submissions

 

 No additional submissions were received from either party.

 

FINDINGS

(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.

 

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."

 

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

 

The Panel finds that Complainant's evidence of trademark registrations with the USPTO are sufficient to establish that Complainant owns rights in its YELLOW CAB CO. mark under Policy ¶ 4(a)(i). See 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); 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). While the mark registered with the USPTO contains a stylized vehicle with the words of the mark, the Panel concludes that such a design does not matter under Policy ¶ 4(a)(i) because design elements cannot be captured in a domain name. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) ("The fact that Complainant's marks incorporate distinctive design elements is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element."); see also Commerce LLC v. Hatcher, FA 105749 (Nat. Arb. Forum Apr. 9, 2002) ("Moreover, the design elements of Complainant's mark cannot be captured in a domain name and thus are considered irrelevant for the purposes of this analysis.").

 

Complainant contends that Respondent's <theyellowcabcompany.com> domain name is confusingly similar to Complainant's YELLOW CAB CO. mark. The Panel finds that the disputed domain name does not include the spaces found in Complainant's mark or the abbreviated term "CO.," but also adds the generic terms "the" and "company" and the generic top-level domain ("gTLD") ".com." The Panel determines that the removal of spaces and a term of the mark fails to sufficiently distinguish the disputed domain name from Complainant's mark. See U. S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) ("Elimination of punctuation and the space between the words of Complainant's mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i)."); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (holding that "the Domain Name is confusingly similar to Complainant's 'TESCO PERSONAL FINANCE' mark in that it merely omits the descriptive term 'personal.'"). The Panel finds that the addition of generic terms and the gTLD fails to remove the disputed domain name from the realm of confusing similarity. See Warner Bros. Entm't Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term "collection" to Complainant's HARRY POTTER mark failed to distinguish the domain name from the mark); 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."). Therefore, the Panel concludes that Respondent's <theyellowcabcompany.com> domain name is confusingly similar to Complainant's YELLOW CAB CO. mark pursuant to Policy ¶ (a) (i).

 

While Respondent contends that the <theyellowcabcompany.com> domain name is comprised of common and generic terms and as such cannot be found to be confusingly similar to Complainant's mark, the Panel finds that such a determination is not necessary under Policy ¶ (a) (i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant's mark. See Precious Puppies of Plorida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10,2007) (examining Respondent's generic terms arguments only under Policy 1l4(a) (ii) and Policy 1l4(a) (iii) and not under Policy 1l4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent's disputed domain name was identical to complainant's mark under Policy 1l4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights and Legitimate Interests: Policy ¶ 4(a) (ii).

 

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 does not explicitly allege that Respondent is not commonly known by the <theyellowcabcompany.com> domain name. However, the WHOIS information identifies the domain name registrant as "Desiree Valdez," which the Panel determines is not similar to the disputed domain name. Complainant argues that Respondent's business name is "Celebration Transportation" and that Respondent just recently began using the business name "The Yellow Cab Company." Complainant asserts that there is no evidence to show that Respondent began using the "The Yellow Cab Company" name prior to registering the disputed domain name. Complainant contends that Respondent's registration of the "The Yellow Cab Company" name with the state of Florida does not provide any rights to the name according to Florida registration statute that Complainant provides in the Complaint. Similarly, Complainant argues that Respondent applied for a trademark with the USPTO only after receiving Complainant's cease-and-desist letter. Therefore, the Panel finds that Respondent is not commonly known by the <theyellowcabcompany.com> domain name. See M. Shanken Commc'ns v. WORLDTRAVELERSONLINECOM, 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); see also 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).

 

According to Complainant, Respondent's <theyellowcabcompany.com> domain name resolves to Respondent's web site which offers services that directly compete with Complainant's transportation services. The Panel finds that Respondent's use of the disputed domain name to provide directly 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 under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) ("Respondent's registration and use of the <qayaol.com> domain name with the intent to divert Internet users to Respondent's web site suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a) (ii)."); 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 do not constitute a bona fide offering of goods and services.").

 

Registration and Use in Bad Faith: Policy ¶ 4(a) (iii)

 

Complainant argues that Respondent is offering competing transportation services at the web site resolving from the disputed domain name. While Complainant does not allege bad faith registration and use under Policy 4(b)(iii), the Panel concludes that Respondent has registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See 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 web site supported a finding that respondent registered and used the domain name to disrupt the complainant's business under Policy ¶ 4(b)(iii)); see also DatingDirect.com LId. 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).").

 

Complainant does contend that Respondent registered and uses the <theyellowcabcompany.com> domain name in bad faith under Policy ¶ 4(b) (iv) because Respondent is intentionally attempting "to attract, for commercial gain, customers to its web site and to its services by creating a likelihood of confusion with [Complainant's marks]." Complainant argues that Respondent registered the confusingly similar domain name to attract Internet users that are searching for Complainant and commercially benefit from their confusion. The Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) ("the Panel finds the respondent is appropriating the complainant's mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)."); see also AOL LLG v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b) (iv) because the respondent as commercially gaining from the likelihood of confusion between the complainant's AIM mark and the competing instant messaging products and services advertised on the respondent's web site which resolved from the disputed domain name).

 

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

 

 

ROBERT. T. PFEUFFER, Senior District Judge, Panelist

Dated:  August 17, 2011

 

 

 

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