national arbitration forum

 

DECISION

 

McFarlane Driveway Repair, Inc. v. Peter McFarlane

Claim Number: FA1211001470876

 

PARTIES

Complainant is McFarlane Driveway Repair, Inc. (“Complainant”), represented by Richard McFarlane, New Jersey, USA.  Respondent is Peter McFarlane (“Respondent”), represented by Steven M. Honig, New Jersey, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mcfarlanedrivewayrestoration.com>, registered with Moniker.

 

PANEL

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.

 

Mark McCormick as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 12, 2012; the National Arbitration Forum received payment on November 12, 2012.

 

On November 13, 2012, Moniker confirmed by e-mail to the National Arbitration Forum that the <mcfarlanedrivewayrestoration.com> domain name are registered with Moniker and that Respondent is the current registrant of the name.  Moniker has verified that Respondent is bound by the Moniker 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 November 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 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@mcfarlanedrivewayrestoration.com.  Also on November 14, 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 November 30, 2012.

 

Complainant submitted a timely Additional Submission on December 5, 2012.

 

On December 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that it owns the McFarlane Driveway Restoration mark, which it uses in its asphalt repair business.  Complainant registered the mark in New Jersey in June 2007 as an alternate name.  It contends that the disputed domain name <mcfarlanedrivewayrestoration.com> mark is identical to its mark.  Complainant accuses Respondent of using the disputed domain name to confuse and divert Internet users and asserts Respondent makes a purely commercial use of the domain name.  It alleges that Respondent is not commonly known by the disputed domain name and merely uses it to divert Internet users to his website for commercial gain.  Complainant contends that Respondent registered and uses the domain name in bad faith.

 

B. Respondent

Respondent contends that he started his McFarlane Paving business in 1959 and incorporated McFarlane Paving, Inc. in 1968.  He accuses Complainant of competing with his business in bad faith as McFarlane Driveway Repair, Inc.  He asserts that Complainant has used various names in the past and that Respondent has legitimate rights and interests in the disputed domain name.  He accuses Complainant of using his own name to compete with and disrupt his business and to attract customers looking for Respondent’s business. 

 

C. Additional Submissions

Complainant made an additional submission that was timely under Supplemental Rule 7.  In its Additional Submission, Complainant asserts that it uses the McFarlane Driveway Restoration mark because it is similar to Complainant’s business name.  Complainant states that it has used the mark since 2007. Complainant says Respondent sold repair calls to its business in 2001 and had actual knowledge of Complainant's use of its mark..

 

FINDINGS

Complainant has used the McFarlane Driveway Restoration mark in its paving repair business since 2007 and has advertised its business under that name.  Respondent has used his McFarlane name in his paving repair business since 1959 but did not register the disputed domain name until June 10, 2012.  Respondent is not commonly known by the McFarlane Driveway Restoration mark.  Respondent had known of Complainant’s use of its mark for several years before his registration of the domain name.  The parties are related and are competitors in the paving repair business.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant’s mark and Respondent’s disputed domain name are identical except for the generic top level domain “.com.”  They are identical for purposes of Policy ¶4(a)(i).  See Croatia Airlines v. Kwen Kijong, AF-0302 (eResolution Sept. 25, 2000).  Moreover, the record establishes that through use of his mark in his business starting in 2007, Complainant established common law rights in the mark.  See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011).  Complainant has met its burden to show that the disputed domain name is confusingly similar to its mark within the meaning of Policy ¶4(a)(i).

 

Rights or Legitimate Interests

 

Complainant made a prima facie showing that Respondent lacks rights and legitimate interests in the disputed domain name.  The burden is on Respondent to show he has rights or legitimate interests in the name.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).  Respondent is not commonly known by the entire disputed domain name.  He has the right to use the name McFarlane in his domain name but not the entirety of Complainant’s mark.  See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004).  The record shows that Respondent uses the disputed domain name for commercial gain in furtherance of his competition with Complainant.  Respondent has failed to meet his burden to show he has rights or legitimate interests in the domain name.  See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006).  Complainant thus has met his burden under Policy ¶4(a)(ii).

 

Registration and Use in Bad Faith

 

The record shows that Respondent registered and uses the disputed domain name to cause confusion among consumers in an effort to attract business that otherwise may go to Complainant.  Respondent seeks to take advantage of the confusion for commercial gain.  This is why he registered and uses the domain name.  Respondent plainly knew of Complainant’s mark at the time he registered the name.  Complainant has established that Respondent registered and uses the domain name in bad faith within the meaning of Policy ¶4(a)(iii) and Policy ¶4(a)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006).

 

DECISION

Because Complainant has established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <mcfarlanedrivewayrestoration.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Mark McCormick, Panelist

Dated:  December 27, 2012

 

 

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