PODS Enterprises, Inc. v. Barry H
Claim Number: FA1108001403208
Complainant is PODS Enterprises, Inc. (“Complainant”), represented by Aaron Parker of PODS Enterprises, Inc., Florida, USA. Respondent is Barry H (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <podsny.com>, registered with GoDaddy.com, 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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 12, 2011; the National Arbitration Forum received payment on August 25, 2011.
On August 23, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <podsny.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@podsny.com. Also on August 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondnet.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <podsny.com> domain name is confusingly similar to Complainant’s PODS mark.
2. Respondent does not have any rights or legitimate interests in the <podsny.com> domain name.
3. Respondent registered and used the <podsny.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, PODS Enterprises, Inc., is in the mobile moving and storage industry. Complainant’s wholly-owned subsidiary, PODS of New York, LLC, operates a PODS mobile moving and storage container business in Long Island, New York. Complainant owns multiple trademark registrations for the PODS mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 2,365,848 registered July 11, 2000 &
Reg. No. 3,011,459 registered November 1, 2005.
Respondent, Barry H, registered the <podsny.com> domain name on March 7, 2005. The disputed domain name resolves to a website providing information about a competing storage services company, NY Container.
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.
The Panel finds that Complainant’s USPTO trademark registrations establish that it has rights in the PODS mark for purposes of Policy ¶ 4(a)(i). In Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007), and UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), past panels determined that a USPTO trademark registration supported the conclusion that a complainant had rights in its registered mark.
Respondent’s <podsny.com> domain name is confusingly similar to Complainant’s PODS mark because it merely combines the mark with the geographic abbreviation “ny” and the generic top-level domain (“gTLD”) “.com.” Panels have previously found in Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004), and InfoSpace, Inc. v. domains Asia Ventures, FA 198909 (Nat. Arb. Forum Nov. 10, 2003), that adding geographic terms or abbreviations, such as “uk,” to a complainant’s mark does not differentiate the disputed domain name from the mark. The presence of a gTLD has also repeatedly been determined to be irrelevant and without effect under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Accordingly, the Panel holds that Respondent’s <podsny.com> domain name is confusingly similar to Complainant’s PODS mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Before Complainant can shift the burden to prove rights and legitimate interests to Respondent, Policy ¶ 4(a)(ii) demands that Complainant present a prima facie case. Although Complainant has satisfied that requirement, Respondent failed to meet its obligation under the Policy because it has not provided any Response or evidence contradicting Complainant’s allegations. The Panel therefore infers that Complainant’s allegations are true and that Respondent does not possess rights and legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); 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 which could demonstrate any rights or legitimate interests in the domain name). The Panel will review the remainder of the record against the requirements of Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the <podsny.com> domain name, and that Respondent acted as the agent for another company, NY Container and Trailer, Inc., in registering the disputed domain name. There is no evidence supporting that Respondent is commonly known by the disputed domain name, especially if Respondent is associated with a company operating under a different name. The WHOIS information for the <podsny.com> domain name supports Complainant’s allegations as it identifies the registrant as “Barry H” and shows no nominal link between Respondent and the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain name and does not possess rights and legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Complainant contends that Respondent uses the <podsny.com> domain name to advertise, promote, and provide information on a competing mobile storage company, NY Container & Trailer, Inc. In using Complainant’s PODS mark to refer consumers to a competing company, the Panel determines that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <podsny.com> domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii) is satisfied.
Complainant asserts that Respondent registered the <podsny.com> domain name on behalf of NY Container & Trailer, Inc., a competing mobile container storage company. Previous cases, such as Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), and DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), have found that when a registrant is a competitor of complainant and registers a domain name containing complainant’s mark, the registration and use of the disputed domain name is, in bad faith, intended to disrupt Complainant’s business. The Panel finds that consumers seeking Complainant may be diverted to Respondent’s competing website via the disputed domain name, constituting Respondent’s registration and use of the <podsny.com> domain name in bad faith under Policy ¶ 4(b)(iii).
Respondent registered the <podsny.com> domain name intentionally to take advantage of the goodwill and value of Complainant’s PODS mark, attracting Complainant’s customers. Respondent’s efforts to attract and confuse Internet users for Respondent’s own profit indicates bad faith registration and use according to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant also alleges that Respondent had actual knowledge of Complainant’s PODS mark at the time Respondent registered the <podsny.com> domain name. Complainant states that at the bottom of the resolving website, Respondent identifies the PODS trademark and states that the trademark is a registered trademark of Complainant, indicating that Respondent has full knowledge of Complainant’s mark, evidence of bad faith under Policy ¶ 4(a)(iii). See Radio & Records, Inc. v. Nat’l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (“The Panel also finds that there are reasonable grounds to infer that Respondent had actual notice of Complainant’s rights in the mark as well.”); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
The Panel finds that Policy ¶ 4(a)(iii) is satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <podsny.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 28, 2011
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