Mears
Destination Services, Inc. v. Armand Romero
Claim
Number: FA0302000146234
Complainant is
Mears Destination Services, Inc., Orlando, FL (“Complainant”) represented
by Carolyn M. Salzmann, of Akerman Senterfitt. Respondent is
Armand Romero a/k/a Mearstowncar.com, Kissimmee, FL (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <mearstowncar.com>, registered with Network
Solutions, 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. Crary as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on February 20, 2003; the Forum received a hard copy of the
Complaint on February 24, 2003.
On
February 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum
that the domain name <mearstowncar.com> is registered with Network
Solutions, Inc. and that Respondent is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN's Uniform Domain
Name Dispute Resolution Policy (the "Policy").
On
March 4, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
March 24, 2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@mearstowncar.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
March 31, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Crary as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <mearstowncar.com>
domain name is confusingly similar to Complainant’s MEARS and MEARS TOWN CAR
SERVICE marks.
2. Respondent does not have any rights or
legitimate interests in the <mearstowncar.com> domain name.
3. Respondent registered and used the <mearstowncar.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant has
used the MEARS mark in relation to its transportation services in Central
Florida since 1939. Complainant’s
transportation services include airport shuttle, charter and luxury
transportation. The luxury
transportation services featured by Complainant are Lincoln Towncars. Complainant’s drivers meet customers at the
baggage claim of the airport, escort them to a Towncar and transport them to
their resort, office or home.
Complainant owns and operates Central Florida’s largest fleet of luxury
Towncars, and is the largest provider of such a service in Central Florida.
Complainant
has registered its MEARS (Reg. No. 2,290,724) and MEARS TOWN CAR SERVICE (Reg.
No. 2,290,708) with the United States Patent and Trademark Office. Complainant also holds numerous registered
marks that are variations on the MEARS mark including MEARS TRANSPORTATION
GROUP (Reg. No. 2,290,710); MEARS LUXURY LIMOUSINES (Reg. No. 2,290,707); and
MEARS DESTINATION SERVICES (Reg. No. 2,290,724).
Respondent,
Armand Romero, is domiciled in Florida and is employed by Complainant’s main
competitor, Associated Transportation of Florida, Inc.(“Associated”).
Respondent registered the <mearstowncar.com> domain name on August
14, 2002. Respondent is using the disputed
domain name to display a website similar to the website Associated uses to
advertise its services at <atflorida.net>. When contacted by Complainant’s attorney, Respondent offered to
sell the <mearstowncar.com> domain name to Complainant, although
it did not name a price.
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.
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 has
established that it has rights in the MEARS and MEARS TOWN CAR SERVICE marks
through registration with the United States Patent and Trademark Office and use
in relation to its transportation services since 1939.
Respondent’s
<mearstowncar.com> domain name is confusingly similar to
Complainant’s MEARS and MEARS TOWN CAR SERVICE marks because it incorporates
the entirety of Complainant’s MEARS mark and merely omits the word “service”
from Complainant’s MEARS TOWN CAR SERVICE mark. The omission of a descriptive word in Complainant’s mark within a
domain name does not create a distinct mark capable of overcoming a claim of
confusing similarity pursuant to Policy ¶ 4(a)(i). See Microsoft Corp.
v. Montrose Corp., D2000-1568
(WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be
confusingly similar even though the mark MICROSOFT is abbreviated); see also
Down East Enter. Inc. v. Countywide
Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain
name <downeastmagazine.com> confusingly similar to Complainant’s common
law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000)
(finding that the domain name <asprey.com> is confusingly similar to the
Complainant’s “Asprey & Garrard” and “Miss Asprey” marks).
Accordingly, the
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Thus, the Panel is permitted to accept all reasonable allegations
and inferences in the Complaint as true.
See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA
95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant 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”).
Moreover,
Respondent has failed to invoke any circumstances that could demonstrate rights
and legitimate interests in the domain name.
When Complainant asserts a prima facie case against Respondent,
the burden of proof shifts to Respondent to show that it has rights or
legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO
Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no
rights or legitimate interests with respect to the domain, the burden shifts to
Respondent to provide credible evidence that substantiates its claim of rights
and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
Respondent has failed to invoke any circumstance that could demonstrate any
rights or legitimate interests in the domain name).
Respondent is an
employee of Complainant’s main competitor, Associated Transportation of Florida
Inc. Respondent is using the <mearstowncar.com>
domain name to host a website that looks similar to Respondent’s employer’s
website. Based on the existence of
Respondent’s relationship with Complainant’s competitor and the appearance of
the website at the disputed domain name, the Panel infers that Respondent is
using the domain name to divert Internet traffic to a website that promotes
Complainant’s competitor. This type of
use is not considered to be a bona fide offering of goods or services pursuant
to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website); see
also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interests based on the fact that the domain
names bear no relationship to the business of Respondent and that Respondent
would only legitimately choose to use Complainant’s mark in a domain name if
Respondent was seeking to create an impression that the two businesses were
affiliated); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be
unconscionable to find a bona fide offering of services in a respondent’s
operation of web-site using a domain name which is confusingly similar to the
Complainant’s mark and for the same business”).
Respondent is
known to this Panel as Armand Romero.
Furthermore, Respondent works for Complainant’s main competitor. There is no evidence on record refuting
these two facts nor is there any evidence that suggests Respondent is commonly
known as MEARS TOWN CAR or <mearstowncar.com>. Thus, the Panel finds that Respondent has
not established that it has rights or legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii).
See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail").
Accordingly, the
Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent works
for Complainant’s main competitor and lives in the region of Florida where
Complainant operates. From this
information the Panel infers that Respondent was on notice of Complainant’s
MEARS and MEARS TOWN CAR SERVICE marks when it registered the <mearstowncar.com>
domain name. Registration of an
infringing domain name despite actual knowledge of Complainant’s rights is
evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of
bad faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Entrepreneur
Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse").
Respondent
offered to sell the domain name to Complainant. The Panel infers that Respondent registered the domain name with
the intent of selling it to Complainant because Respondent could have no
fathomable legitimate use for the <mearstowncar.com> domain name.
Registration of a domain name with the intent of selling it to Complainant is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Pocatello Idaho Auditorium Dist. v.
CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002)
("[w]hat makes an offer to sell a domain [name] bad faith is some
accompanying evidence that the domain name was registered because of its value
that is in some way dependent on the trademark of another, and then an offer to
sell it to the trademark owner or a competitor of the trademark owner"); see
also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000)
(finding that “general offers to sell the domain name, even if no certain price
is demanded, are evidence of bad faith”); see also Pavillion Agency, Inc. v. Greenhouse Agency
Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so
obviously connected with the Complainants that the use or registration by
anyone other than Complainants suggests ‘opportunistic bad faith’”); see
also Sony Kabushiki Kaisha v. Inja,
Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use
where it is “inconceivable that the respondent could make any active use of the
disputed domain names without creating a false impression of association with
the Complainant”).
Thus, the Panel
finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <mearstowncar.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Crary, Panelist
Dated:
April 4, 2003
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