JMN Logistics, LLC v. Tony Taylor / Tony Taylor Insurance
Claim Number: FA1303001488283
Complainant is JMN Logistics, LLC (“Complainant”), represented by Michael H. Izsak of Klar, Izsak & Stenger, LLC, Missouri, USA. Respondent is Tony Taylor / Tony Taylor Insurance (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jmnlogistics.org>, 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.
Hon. Karl v. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2013; the National Arbitration Forum received payment on March 1, 2013.
On March 6, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <jmnlogistics.org> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 2, 2013 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@jmnlogistics.org. Also on March 13, 2013, 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 April 9, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
i. Respondent has not been commonly known by the domain name <jmnlogistics.org> or “JMN Logistics.”
ii. Respondent is operating a website at the offending domain that identified JMN Logistics as a company that transports motor vehicles and further directed visitors/customers to call the company and gave a telephone number. Subsequent to the sending of the Cease & Desist letters, the website no longer identified as JMN Logistics, but instead the domain was automatically redirected to <eagleautotransport.net> and was identified as Eagle Auto Transport with the same telephone number.
i. Respondent registered the domain name primarily for the purpose of disrupting the business of its competitor, JMN Logistics, LLC.
ii. Respondent’s intent is to clearly misleadingly divert consumers from Complainant and to make commercial gain.
iii. Respondent knew or should have known of Complainant’s JMN LOGISTICS mark at the time Respondent registered <jmnlogistics.org>.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds that the Complainant is entitled to the relief requested.
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, JMN Logistics, LLC, asserts that it is in the business of arranging the transportation of motor vehicles for its clients, including but not limited to original equipment manufacturers, auction houses, rental car companies, nationwide dealers, and individual consumers. Complainant contends that since at least 2009, Complainant has operated the websites <jmnlogistics.com>, <jmnlogistics.net>, and <jmnhaul.com> as the primary websites for its online business. Complainant argues that it is the owner of trademark registrations with the USPTO for the JMN LOGISTICS mark (Reg. No. 3,502,591, registered September 16, 2008. The Panel notes that Respondent appears to reside within the United States. Accordingly, the Panel finds that Complainant’s registration of the JMN LOGISTICS mark with the USPTO sufficiently demonstrates its rights in the mark pursuant to Policy ¶4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <jmnlogistics.org> domain name is identical to a trademark or service mark in which Complainant has rights. Complainant contends that UDRP panels and panelists have upheld an almost uniform principle that a top level domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar to the trademark in which Complainant has rights. The Panel finds that the addition of a generic top-level domain (“gTLD”) is inconsequential to a Policy ¶ 4(a)(i) confusingly similar or identical analysis. See Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark). The Panel notes that Respondent removes the space between “JMN” and “LOGISTICS” in Complainant’s mark. The Panel finds that Respondent’s removal of spaces does not differentiate Respondent’s domain name from Complainant’s mark under Policy ¶ 4(a)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). Thus, the Panel concludes that Respondent’s <jmnlogistics.org> domain name is identical to Complainant’s JMN LOGISTICS mark.
Complainant has proven this element.
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.”).
Complainant asserts that Respondent has not been commonly known by the domain name <jmnlogistics.org> or “JMN Logistics.” Complainant argues that Respondent holds itself out to the public as doing business as several other entities. The Panel notes that the WHOIS information identifies “Tony Taylor / Tony Taylor Insurance” as the registrant of the disputed domain name. Therefore, the Panel determines that Respondent is not commonly known by the <jmnlogistics.org> 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).
Complainant contends that Respondent is operating a website at the offending domain that identified JMN Logistics as a company that transports motor vehicles and further directed visitors/customers to call the company and gave a telephone number. Complainant claims that subsequent to the sending of the Cease & Desist letters, the website no longer identified as JMN Logistics, but instead the domain was automatically redirected to <eagleautotransport.net> and was identified as Eagle Auto Transport with the same telephone number. Complainant argues that other than the name, the website is identical to the website that identified JMN Logistics. The Panel notes that Respondent’s disputed domain name resolves to a website that offers a competing auto transport service. The Panel finds that Respondent’s competing use of the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant has proven this element.
Complainant asserts that Respondent registered the domain name primarily for the purpose of disrupting the business of its competitor, JMN Logistics, LLC. The Panel notes that Respondent’s disputed domain name resolves to a website that offers a competing auto transport service. The Panel holds that Respondent’s use of the domain name to compete with Complainant evidences bad faith use and registration under Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Complainant contends that Respondent’s intent is to clearly misleadingly divert consumers from Complainant and to make commercial gain. The Panel notes that Respondent’s disputed domain name resolves to a website that offers a competing auto transport service. Complainant argues that the previous use of the “JMN Logistics” name at the top of the homepage, the previous use of the name “JMN Logistics” throughout the homepage and subpages and the text of the homepage and subpages, as well as the continued use of the domain name, even with the name Eagle Auto Transport denoted on the page, demonstrate that Respondent is attempting to confuse Internet users that the services described on the offending domain’s site are being offered by and further performed by Complainant. The Panel finds that Respondent’s disputed domain name is being used to divert Internet users from Complainant’s business to Respondent’s, evidencing bad faith use and registration under Policy ¶ 4(b)(iv). 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).
Complainant argues that Respondent knew or should have known of Complainant’s JMN LOGISTICS mark at the time Respondent registered <jmnlogistics.org>. Complainant asserts Respondent entered the motor vehicle transportation industry after Complainant had established its presence and thereafter competed with Complainant for a minimum of three years before registering the offending domain. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <jmnlogistics.org> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: April10, 2013
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