Texas Department of Transportation v. LeaseDomains.com
Claim Number: FA1202001432014
Complainant is Texas Department of Transportation (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is LeaseDomains.com (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <txdot.net>, registered with GoDaddy.com, LLC.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 28, 2012; the National Arbitration Forum received payment on February 29, 2012.
On February 29, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <txdot.net> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 March 7, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@txdot.net. Also on March 7, 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.
The National Arbitration Forum received an email from Respondent reading: “Can this domain please be IMMEDIATELY transferred to the Complainant.”
Having received no formal response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <txdot.net> domain name, the domain name at issue, is confusingly similar to Complainant’s TXDOT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding but sent the National Arbitration Forum an email reading: “Can this domain please be IMMEDIATELY transferred to the Complainant.” The Panel elects to examine the case on the merits as a default proceeding.
Complainant is the Texas Department of Transportation, which has widely used the mark TXDOT as its name since at least as early as 1991, in diverse manners customary to the relevant industry. Complainant has spent decades and millions of dollars in promoting and advertising the TXDOT mark and goods and services offered thereunder. The TXDOT mark is distinctive and famous and is exclusively associated with Complainant’s goods and services. Complainant began using and advertising the TXDOT trademark in 1991. The TXDOT
trademark was used for over 20 years before the domain name at issue was registered on August 12, 2011. As of the first use date for Complainant’s TXDOT mark, Respondent had not yet acquired any rights in or to the Domain Name. Accordingly, Complainant has a common law trademark in the TXDOT mark. Complainant has not licensed or otherwise authorized Respondent to use the TXDOT mark and Respondent is not commonly known by the domain name at issue. The <txdot.net> domain is used in connection with a web page that provides various links listed to products or services competing with those offered by Complainant. For example, some listings refer to traffic reports, highway conditions, vehicle registrations, etc. Complainant also offers information regarding traffic reports, highway conditions, and vehicle registrations, among other things. Respondent is merely using Complainant’s mark to generate click-through revenue from third party sponsors of the various links listed.
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.
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.”).
Although Complainant has not submitted any registrations for the TXDOT mark, registering a mark is not required to meet the guidelines of Policy ¶ 4(a)(i) so long as a complainant is able to establish rights under the common law. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Therefore, the Panel finds that Complainant has established its rights in the TXDOT mark under Policy ¶ 4(a)(i) even without a trademark registration.
Complainant has established rights in the TXDOT mark through continuous and ongoing use in conjunction with its business since 1991. Complainant states that it has expended millions of dollars promoting and advertising its services under the TXDOT mark, including the creation and promotion of its services at the <txdot.gov> domain name and resolving website. Complainant has submitted a legislative history which indicates that the TXDOT mark was initially created in 1991. As a result, Complainant has established its rights in the TXDOT mark under Policy ¶ 4(a)(i) using the common law. See Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum Sept. 7, 2002) (finding that the complainant established common law rights in the mark through continuous use of the mark since 1995 for the purpose of Policy ¶ 4(a)(i)).
Respondent’s disputed domain name is identical to Complainant’s TXDOT mark. The disputed domain name includes the entire mark, merely adding the generic top-level domain (“gTLD”) “.net.” Adding a gTLD to Complainant’s mark fails to differentiate the disputed domain name from Complainant’s TXDOT mark, thereby making the two identical under Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Ohno, FA 511463 (Nat. Arb. Forum Aug. 23, 2005) (holding that the <reebok.net> domain name was identical to the complainant’s REEBOK mark because it fully incorporates the mark and merely adds a generic top-level domain); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the respondent’s <honeywell.net> domain name to be identical to the complainant’s HONEYWELL mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “LeaseDomains.com.” No evidence has been submitted to support a finding that Respondent is commonly known by the disputed domain name. Based upon the available evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was 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). Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a website offering links to unrelated third-party businesses. The Panel infers that Respondent generates revenue by collecting click-through fees for each Internet user diverted to the linked sites. Respondent is not engaging in a bona fide offering of goods or services Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent is attempting to gain commercially from the disputed domain name, demonstrating bad faith registration and use. The disputed domain name resolves to a website offering links to unrelated third parties, and the Panel finds that Respondent presumably generates revenue from the website by collecting click-through fees from the linked sites. Thus, the Panel concludes that Respondent has registered and is using the disputed domain name for its own commercial gain, demonstrating bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name to display links to various third-party websites demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <txdot.net> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 10, 2012
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