United Van Lines, LLC v. Simo Elbaz
Claim Number: FA1112001422040
Complainant is United Van Lines, LLC (“Complainant”), represented by Darren B. Cohen of Reed Smith LLP, New York, USA. Respondent is Simo Elbaz (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wwwunitedvanlines.com>, registered with 1 & 1 Internet AG.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2011; the National Arbitration Forum received payment on January 4, 2012.
On January 5, 2012, 1 & 1 Internet AG confirmed by e-mail to the National Arbitration Forum that the <wwwunitedvanlines.com> domain name is registered with 1 & 1 Internet AG and that Respondent is the current registrant of the name. 1 & 1 Internet AG has verified that Respondent is bound by the 1 & 1 Internet AG 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 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 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@wwwunitedvanlines.com. Also on January 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 31, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <wwwunitedvanlines.com> domain name is confusingly similar to Complainant’s UNITED mark.
2. Respondent does not have any rights or legitimate interests in the <wwwunitedvanlines.com> domain name.
3. Respondent registered and used the <wwwunitedvanlines.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, United Van Lines, is the owner of the UNITED mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,064,658 registered April 26, 1977). Complainant’s company specializes in the moving and transportation field by providing services to agents worldwide. Complainant runs their business and marketing through their website <unitedvanlines.com> as well as other “united”- combinative domains.
Respondent, Simo Elbaz, registered the <wwwunitedvanlines.com> domain name on October 3, 2002. The disputed domain name resolves to a website under the heading “Movers Van Lines” which provides a search engine that matches those in need of personal/residential moving with competing moving and storage companies.
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 owns registered trademarks with the USPTO for its UNITED mark (e.g., Reg. No. 1,064,658 registered April 26, 1977). The Panel finds that Complainant has established rights in the UNITED mark pursuant to Policy ¶4(a)(i) through its trademark registrations with the USPTO. See 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); see also 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).”).
Complainant argues that Respondent’s <wwwunitedvanlines.com> domain name is confusingly similar to Complainant’s UNITED mark because the disputed domain name merely adds the prefix “www” to the registered mark without the standard period separating that prefix from the rest of the domain name. See Register.com Inc. v. House, FA 167970 (Nat. Arb. Forum Aug. 22, 2003) (finding the prefix “www” followed by the trademark with no period separating them did not distinguish the mark and was confusingly similar); see also Amazon.com, Inc. v. J J Domains, FA 514939 (Nat. Arb. Forum Sept. 2, 2005) (“. . . Respondent’s <www-amazon.com> domain name is confusingly similar to Complainant’s AMAZON.COM mark, as the domain name merely adds the prefix “www-” to Complainant’s AMAZON.COM mark. Such changes are not enough to overcome the confusingly similar aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).”). The Panel also argues Respondent’s disputed domain name is confusingly similar to Complainants mark because it features Complainant’s UNITED mark in its entirety and adds the descriptive terms “van” and “lines”. See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Additionally, the Panel concludes that the addition of a generic top-level domain, such as the gTLD “.com” found in the disputed domain name, is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel holds that Respondent’s <wwwunitedvanlines.com> domain name is confusingly similar to Complainant’s UNITED mark for the purposes of Policy ¶ 4(a)(i).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(i).
Policy ¶ 4(a)(ii) states that Complainant bears the burden of presenting a prima facie case against Respondent before Complainant can shift the burden of proving rights and legitimate interests in the disputed domain name to Respondent. Here, the Panel determines that Complainant has adequately satisfied this obligation. Respondent has offered nothing in response, however, and has failed to contest Complainant’s allegations in any way or offer any counter evidence. The Panel may assume that Respondent does not have rights or legitimate interest in the disputed domain name as a result of Respondent’s failure to respond to the Complaint. The Panel will nevertheless consider the evidence presented against the Policy ¶ 4(c) factors to make an independent determination regarding Respondent’s right and 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)); see also 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.”).
Complainant argues that Respondent is not commonly known by the <wwwunitedvanlines.com> domain name. According to the WHOIS information for Respondent, there is no connection between Respondent and the <wwwunitedvanlines.com> domain name or Complainant’s UNITED mark. Complainant has also not authorized Respondent to use the UNITED mark for any purpose. Thus, the Panel finds no evidence that Respondent is commonly known by the <wwwunitedvanlines.com> domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also 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).
Complainant argues that Respondent is using the domain name to redirect Internet users to a website featuring a search engine providing users with competing moving company service quotes. Respondent is also not conducting any valid business activities under the UNITED mark. The Panel finds that the use of the disputed domain name to intentionally divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit, as well as Respondent’s lack of any valid business activities under the UNITED mark, does 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 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 Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).
The Panel concludes that Complainant has proven Policy ¶ 4(a)(ii).
Respondent’s disputed domain name resolves to a website that contains a search engine that allows Internet users to input their information and provides information regarding third-party competitors with Complainant’s business. It is clear that this activity disrupts Complainant’s business, as Internet users desiring Complainant’s services will be directed to sites featuring competing products. The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors shows bad faith registration and use under 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 S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent).
Complainant argues that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iv) by intentionally attempting to attract, for commercial gain, internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark. The Panel agrees with Complainant and finds that Respondent acts in bad faith under Policy ¶ 4(b)(iv) when attracting consumers and financially profiting by creating a likelihood of confusion with Complainant’s mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds the elements of Policy ¶ 4(a)(iii) have been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <wwwunitedvanlines.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 13, 2012
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