Traveling Coaches, Inc. v. Lori Quinn / loriquinn.com
Claim Number: FA1112001421974
Complainant is Traveling Coaches, Inc. (“Complainant”), represented by Dyan M. House of Munck Carter, LLP, Texas, USA. Respondent is Lori Quinn / loriquinn.com (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travellingcoaches.com>, registered with Core Internet Council of Registrars.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2011; the National Arbitration Forum received payment on December 30, 2011.
On January 2, 2012, Core Internet Council of Registrars confirmed by e-mail to the National Arbitration Forum that the <travellingcoaches.com> domain name is registered with Core Internet Council of Registrars and that Respondent is the current registrant of the name. Core Internet Council of Registrars has verified that Respondent is bound by the Core Internet Council of Registrars 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 January 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 24, 2012 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@travellingcoaches.com. Also on January 4, 2012, 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.
A timely Response was received and determined to be complete on January 25, 2012.
On January 26, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the disputed domain name is confusing similar to its TRAVELING COACHES trademark.
Complainant states the Respondent is not commonly known by the domain name and instead conducts business as Lori Quinn, The LoriQuinn Group and Quinn & Associates. Complainant contends that Respondent is using the domain name to divert customers away from Complainant to the website of a competitor.
Complainant states that Respondent has registered and is using the domain name in bad faith. Complainant states the Respondent formerly worked for Complainant and was aware of Complainant’s rights in its trademark. Complainant states that Respondent’s use of the domain name is not a bona fide offering of services because Respondent is diverting customers to a competing business.
B. Respondent
Respondent
denies there is any confusing similarity because the resolving website makes
“very clear to visitors they were on the website of Lori Quinn.”
Respondent acknowledges that she was a founder of Traveling Coaches but she was forced out.
Respondent denies that she registered and used the domain name in bad faith.
Complainant has registered its TRAVELING COACHES mark with the United States Patent and Trademark Office (“USPTO”) as follows:
Reg. No. 2,060,158 registered May 6, 1997 &
Reg. No. 3,203,202 registered January 23, 2007.
Respondent registered the <travellingcoaches.com> domain name on March 17, 2007.
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.
Complainant contends that it has rights in the TRAVELING COACHES mark and has shown that it registered this mark with the USPTO:
Reg. No. 2,060,158 registered May 6, 1997 &
Reg. No. 3,203,202 registered January 23, 2007.
USPTO trademark registration establishes a complainant’s rights in a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Accordingly, the Panel determines that Complainant has rights in the TRAVELING COACHES mark for the purposes of Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <travellingcoaches.com> domain name is confusingly similar to Complainant’s TRAVELING COACHES mark because the disputed domain name consists of a variation on the spelling of Complainant’s mark, spelling “traveling” with two “l”s instead of one, removing the space between the terms, and adding the generic top-level domain (“gTLD”) “.com.” These variations do not distinguish the disputed domain name from the mark. See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the addition of the letter “c” to the complainant’s SAFLOK mark does not distinguish the <saflock.com> domain name from the mark under Policy ¶ 4(a)(i)).
Also, removing the space and adding the gTLD “.com” do not affect the confusingly similar analysis under Policy ¶ 4(a)(i). 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 therefore concludes that Respondent’s <travellingcoaches.com> domain name is confusingly similar to Complainant’s TRAVELING COACHES mark under Policy ¶ 4(a)(i).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Policy ¶ 4(c) requires Complainant to first present a prima facie case in order to shift the burden to Respondent. In the immediate case, Complainant has satisfied its burden so 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 argues that Respondent operates under the names “Lori Quinn,” “The Lori Quinn Group,” and “Quinn & Associates” and therefore is not commonly known by the <travellingcoaches.com> domain name. Complainant asserts that the WHOIS information identifies the registrant as “Lori Quinn,” which indicates no nominal relationship between Respondent and the disputed domain name. Complainant also contends that there is no evidence that Respondent uses the <travellingcoaches.com> domain name as a trade name or in any other way. Based on these allegations and evidence, the Panel holds that Respondent is not commonly known by the <travellingcoaches.com> domain name and therefore lacks rights and legitimate interests according to Policy ¶ 4(c)(ii). See 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 that it is commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Complainant alleges that Respondent uses the <travellingcoaches.com> for the sole purpose of misleadingly diverting Complainant’s customers to Respondent’s own website, which offers competing computer software training services targeted at Complainant’s market. Operating such a competitive commercial website at a domain name consisting of Complainant’s mark does not constitute a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See 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 does not constitute a bona fide offering of goods and services.”); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent uses the <travellingcoaches.com> domain name to promote its competing business offering the same software training services as Complainant. Complainant asserts that this use disrupts Complainant’s business by diverting Complainant’s intending consumers away from Complainant to Respondent’s site. Complainant also argues that Respondent was initially involved in the formation of Complainant and worked with Complainant for approximately two years. The Panel concludes that Respondent’s competition with Complainant at the disputed domain name disrupts Complainant’s business and thus evidences bad faith registration and use under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also 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).”).
Complainant alleges that Respondent had actual knowledge of Complainant’s rights in the TRAVELING COACHES mark at the time Respondent registered the <travellingcoaches.com> domain name. Complainant argues that Respondent was involved in the initial formation of Complainant back in 1995, when Complainant first started operating under the TRAVELING COACHES mark, and therefore knew of the existence of Complainant and its mark. The Panel therefore finds that Respondent had actual knowledge of Complainant’s TRAVELING COACHES mark and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder Firma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent “had actual knowledge of Complainant’s mark when registering the disputed domain name”); see also Univision Comm’cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent’s contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant’s rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travellingcoaches.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 3, 2012
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