Yellow Cab Company of Orlando, Inc. d/b/a Yellow Cab Company v. claudy millen
Claim Number: FA1109001407817
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 claudy millen (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yellowtaxiorlandocab.com>, registered with Register.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 16, 2011; the National Arbitration Forum received payment on September 16, 2011.
On September 19, 2011, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <yellowtaxiorlandocab.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 September 20, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 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@yellowtaxiorlandocab.com. Also on September 20, 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 October 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <yellowtaxiorlandocab.com> domain name is confusingly similar to Complainant’s YELLOW CAB CO. mark.
2. Respondent does not have any rights or legitimate interests in the <yellowtaxiorlandocab.com> domain name.
3. Respondent registered and used the <yellowtaxiorlandocab.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Yellow Cab Company of Orlando, Inc. d/b/a Yellow Cab Company, provides transportation services within the Central Florida area. Complainant claims rights in the YELLOW CAB CO. mark based on its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,546,147 registered December 16, 2008).
Respondent, claudy millen, registered the disputed domain name on April 6, 2009. The disputed domain name resolves to the website for a competing taxi cab service.
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 rights in the YELLOW CAB CO. mark under Policy ¶ 4(a)(i). Previous panels have determined that registration of a mark with a trademark authority is sufficient to confer rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Complainant provides evidence of registration with the USPTO. The Panel finds this sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Additionally, the fact that Complainant has registered a stylized mark does not change the analysis under Policy ¶ 4(a)(i). See Roux Labs., Inc. v. Sheldeez Beauty Salon, D2005-0799 (WIPO Sept. 30, 2005) (“The fact that Complainant’s stylized mark incorporates a distinctive design element is irrelevant to this analysis. Since a domain name can only consist of alphanumeric text, design elements are ignored when considering this element.”).
Complainant argues that Respondent’s <yellowtaxiorlandocab.com> domain name is confusingly similar to Complainant’s YELLOW CAB CO. mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name incorporates Complainant’s mark, leaving out the corporate identifier “CO.” and adding the descriptive term “taxi,” and the geographic identifier “orlando”, as well as the generic top-level domain (“gTLD”) “.com”. The omission of the term “CO.” is not enough to defeat a claim of confusing similarity. See Wellness Int’l Network, LTD v. Apostolics.com, FA 96189 (Nat. Arb. Forum Jan. 16, 2001) (finding that the domain name <wellness-international.com> is confusingly similar to the complainant’s WELLNESS INTERNATIONAL NETWORK). Moreover, the terms “taxi” and “orlando” do not distinguish the disputed domain name, as “taxi” is a generic term with an obvious connection to Complainant’s business, while “orlando” is a geographic identifier. See 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).”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Finally, the affixation of a gTLD, and the omission of spaces between the terms of the mark cannot defeat a confusingly similar claim. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant bears the initial burden of presenting a prima facie case. Once Complainant has satisfied this requirement, the burden then shifts to Respondent to produce a Response countering Complainant’s claims. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“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.”). Respondent in this case has failed to satisfy its burden, which some panels have construed as evidence that Respondent lacks rights or legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). The immediate Panel, however, will continue to examine the record to determine whether such rights or legitimate interests exist.
Complainant contends that Respondent is not commonly known by the <yellowtaxiorlandocab.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies Respondent as “claudy millen”, which the Panel finds to bear no resemblance to the disputed domain name. Additionally, Complainant asserts that it has not licensed or otherwise authorized Respondent’s registration of the disputed domain name. Without a Response or any other evidence tending to show that Respondent is in fact commonly known by the disputed domain name, the Panel must conclude that Respondent is not commonly known by the <yellowtaxiorlandocab.com> domain name for the purposes of Policy ¶ 4(c)(ii). 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further contends that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name resolves to the website for a competing taxi cab service. Previous panels have found that the operation of a competing business at a confusingly similar domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute 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 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)). The Panel holds that Respondent’s use of the disputed domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Previous panels have found the operation of a competing business at a confusingly similar domain name to constitute disruption. See Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under 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)). The Panel concludes that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii), as Respondent is operating a directly competing taxi cab and transportation business through the domain name.
Complainant also alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Through the use of a confusingly similar domain name, Respondent hopes to create confusion as to Complainant’s affiliation with the Respondent’s business. Respondent hopes this confusion will lead some customers to visit its website and ultimately purchase services from Respondent rather than from Complainant. The Panel finds that this commercial gain that Respondent realizes at the expense of Complainant constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent and the complainant were in the same line of business and the respondent was using a domain name confusingly similar to the complainant’s FITNESS WAREHOUSE mark to attract Internet users to its <efitnesswarehouse.com> domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been 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 <yellowtaxiorlandocab.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 31, 2011
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