Montway, Inc. d/b/a Montway Auto Transport v. Triton Logic, LLC c/o Auto Transporters Direct
Claim Number: FA1206001448066
Complainant is Montway, Inc. d/b/a Montway Auto Transport (“Complainant”), represented by Michael D. Adams of Mayer Brown LLP, Illinois, USA. Respondent is Triton Logic, LLC c/o Auto Transporters Direct (“Respondent”), Montana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montwayautotransport.com>, registered with Enom, Inc.
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 June 11, 2012; the National Arbitration Forum received payment on June 11, 2012.
On June 14, 2012, Enom, Inc confirmed by e-mail to the National Arbitration Forum that the <montwayautotransport.com> domain name is registered with Enom, Inc and that Respondent is the current registrant of the name. Enom, Inc has verified that Respondent is bound by the Enom, 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 June 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 9, 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@montwayautotransport.com. Also on June 18, 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 July 17, 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:
Respondent’s <montwayautotransport.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MONTWAY AUTO TRANSPORT mark.
Respondent does not have any rights or legitimate interests in the domain name at issue.
Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding, however, in an email to the Forum, Respondent claims without proof to have sold its entire interest in the disputed domain name in November 2011. The Panel elects to treat this as a default proceeding.
Complainant provides automobile shipping and delivery services under the MONTWAY AUTO TRANSPORT mark and owns a trademark registration with the United States Patent and Trademark and Office (“USPTO”) for the MONTWAY AUTO TRANSPORT mark (Reg. No. 4,138,319 filed September 1, 2011, registered May 8, 2012). Complainant has used the MONTWAY AUTO TRANSPORT mark in commerce at least as early as July 1, 2007 and registered the <montway.com> domain name on June 4, 2007. The disputed domain name resolves to a website purporting to offer automobile transport and shipping services, but once a visitor enters his information, he is bombarded by e-mails from various competing automobile transport companies. Respondent commercially benefits from the operation of its website and Respondent, or its purported transferee, offered to sell the disputed domain name to Complainant for $5,000. Respondent has recently registered multiple domain names bearing variations of Complainant’s mark and registered the disputed domain name on July 17, 2011.
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.”).
Complainant has presented evidence of its registration of the MONTWAY AUTO TRANSPORT mark with the USPTO (Reg. No. 4,138,319 filed September 1, 2011, registered May 8, 2012). Complainant’s registration of the MONTWAY AUTO TRANSPORT mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i), dating back to Complainant’s September 1, 2011 filing date. See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
Complainant has used the MONTWAY AUTO TRANSPORT mark in commerce at least as early as July 1, 2007, registering the <montway.com> domain name on June 4, 2007. Complainant has expended “considerable time and resources in the promotion and advertising” of its mark. The Panel finds that Complainant has demonstrated that its MONTWAY AUTO TRANSPORT mark has achieved sufficient secondary meaning to confer common law rights in the mark under Policy ¶ 4(a)(i) dating back to July 1, 2007. See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning).
The <montwayautotransport.com> domain name is identical to its MONTWAY AUTO TRANSPORT mark for the purposes of Policy ¶ 4(a)(i). The disputed domain name includes Complainant’s mark, deleting the spaces between words, and adding the generic top-level domain (“gTLD”) “.com.” Neither of these alterations to Complainant’s mark is sufficient to create a distinct, non-infringing domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). The <montwayautotransport.com> domain name is identical to Complainant’s MONTWAY AUTO TRANSPORT mark for the purposes of Policy ¶ 4(a)(i).
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.”).
The WHOIS information lists Respondent as “Triton Logic, LLC c/o Auto Transporters Direct. This name does not indicate any use of the “Montway” name. Any similarity between “Triton Logic, LLC c/o Auto Transporters Direct” and the <montwayautotransport.com> domain name is too remote to support a finding that Respondent is in fact commonly known by the disputed domain as envisioned by Policy ¶ 4(c)(ii). Respondent has failed to satisfy its burden of producing a Response in this matter, leaving no evidence in the record that would refute Complainant’s assertion that Respondent is not commonly known by the <montwayautotransport.com> domain name. Accordingly, Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s use of the <montwayautotransport.com> domain name cannot qualify as 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 disputed domain name resolves to a website purporting to offer transport and shipping services. Once a visitor enters his information he is bombarded by e-mails from various competing automobile transport companies. Respondent’s solicitation of visitors’ contact information at an identical domain name in order to enable third-parties to offer services that compete with those offered by Complainant is 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). See 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”).
Complainant also alleges, without denial, that at one point Respondent or its purported transferee offered to sell the disputed domain name to Complainant for $5,000, a price which is not commensurate with the costs associated with obtaining the domain name. This undisputed offer for sale negates Respondent’s rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends, without opposition, that at one point Respondent or its purported transferee offered to sell the disputed domain name for more than the costs associated with obtaining the domain name and that this offer constitutes bad faith under Policy ¶ 4(b)(i). Previous panels have found bad faith where a respondent offers to sell a disputed domain name for more than its out-of-pocket costs. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name). Respondent’s registration and use of the disputed domain name for the purpose of selling the domain name evidences bad faith registration and use under Policy ¶ 4(b)(i).
Respondent’s operation of a website that offers quotes from third-party competitors, some of which even provide negative commentary on Complainant’s services, constitutes bad faith registration and use under Policy ¶ 4(b)(iv). By operating a site associated with a domain name which is identical to Complainant’s mark and purporting to offer services similar to those offered by Complainant, Respondent is creating confusion as to Complainant’s affiliation with Respondent’s website. The Panel infers that Respondent is generating a commercial gain by providing visitors’ contact information to Complainant’s competitors. Respondent’s creation of this type of confusion in order to realize a commercial gain constitutes bad faith pursuant 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).
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 <montwayautotransport.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 21, 2012
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