Roehl Transport,Inc. v. Ready Asset / Ni How
Claim Number: FA1306001504799
Complainant is Roehl Transport,Inc. (“Complainant”), represented by Steven P/ Lipowski of Ruder Ware, L.L.S.C., Wisconsin, USA. Respondent is Ready Asset / Ni How (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <roehltransport.com> registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2013; the National Arbitration Forum received payment on June 18, 2013.
On June 14, 2013, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <roehltransport.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@roehltransport.com. Also on June 21, 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 July 15, 2103, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following allegations:
i. Complainant owns the ROEHL HONOR PROGRAM mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,459,978 filed May 16, 2007; registered July 8, 2008).
ii. Complainant has used its service marks ROEHL and ROEHL TRANSPORTATION on a common law basis since 1962.
iii. Complainant uses the marks in connection with commercial truck driving and transportation services, and to recruit drivers to its business. Complainant offers its services to customers throughout the United States. Complainant has achieved a high degree of name recognition through its marketing efforts, business practices, and commitment to customer service.
i. Policy ¶ 4(a)(i)
1. The domain <roehltransport.com> is confusingly similar to Complainant’s ROEHL and ROEHL TRANSPORTATION marks as it is comprised of Complainant’s mark with the mere addition of a generic top-level domain (“gTLD”), and the deletion of the space between terms in the ROEHL TRANSPORT mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent has no right or legitimate interest in the disputed domain. Complainant has not licensed or otherwise permitted Respondent’s use of its marks.
2. The disputed domain resolves to a page that provides links to competitors of Complainant and involves services, as well as employment opportunities in the trucking and transportation industry.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s promotion of Complainant’s competitors disrupts Complainant’s business, providing evidence of Respondent’s bad faith.
2. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in commercial truck driving , transportation and related services
2. Complainant has used the ROEHL and ROEHL TRANSPORTATION marks since 1962 in connection with its commercial truck driving transportation and related services and to recruit drivers to its business and has established common law trademark rights in those marks.
3. Respondent registered the <roehltransport.com> domain name on May 18, 1999.
4. The disputed domain resolves to a page that provides links to the websites of competitors of Complainant and offers services a well as employment opportunities in the trucking and transportation industry.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant submits that it owns the ROEHL HONOR PROGRAM mark through its trademark registration with the USPTO (e.g., Reg. No. 3,459,978 filed May 16, 2007; registered July 8, 2008). The Panel notes that Respondent registered the disputed domain name on May 18, 1999, well in advance of Complainant’s USPTO registration. However, previous panels have found that a complainant does not need to own a valid trademark registration in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). Instead, a complainant may establish its rights in the mark through common law rights. See 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).
Complainant submits that it has been using ROEHL and ROEHL TRANSPORTATION marks since 1962 in connection with commercial truck driving and transportation services, and to recruit drivers to its business. In support of that submission, Complainant has shown that it started business in 1962 and has steadily grown until it is now a prominent company engaged in the transportation industry. Thus the two marks have been widely in use and have clearly identified the source of Complainant’s services over the years. Complainant offers its services to customers throughout the United States and has achieved a high degree of name recognition through its marketing efforts, business practices, and commitment to customer service. Previous panels have found that complainants can establish a common law trademark through evidence of continuous use of the mark such as Complainant has established. For example, in Quality Custom Cabinetry, Inc. v. Cabinet Wholesalers, Inc., the panel found that the complainant established common law rights in the mark for the purposes of Policy ¶ 4(a)(i) through complainant’s continuous use of the mark since 1995. See FA 115349 (Nat. Arb. Forum Sept. 7, 2002). On the basis of the evidence submitted and accepted by the Panel, including evidence that Complainant has clearly used the marks since 1962, Complainant has established common law rights in the ROEHL and ROEHL TRANSPORTATION marks under Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain names are identical or confusingly similar to Complainant’s ROEHL or ROEHL TRANSPORTATION marks. Complainant argues the <roehltransport.com> domain name is confusingly similar to both of Complainant’s ROEHL and ROEHL TRANSPORTATION marks. The Panel agrees, but it is only necessary to make that finding with respect to one of the marks for the purposes of this decision. The Panel notes that the disputed domain name is comprised of Complainant’s ROEHL TRANSPORTATION mark in its entirety with the mere addition of the gTLD “.com,” the deletion of the space between terms in the ROEHL TRANSPORT mark and the use in the domain name of the word “transport” instead of the word “transportation”. Previous panels have determined that the deletion of the space between a complainant’s two-word mark and the addition of a gTLD do not sufficiently distinguish the disputed domain name from the mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). Taking all of these matters into account, the Panel finds that the <roehltransport.com> domain name is confusingly similar to Complainant’s ROEHL TRANSPORT mark for the purposes of Policy ¶ 4(a)(i). That is so because the word “ transport” is not identical to the word “transportation”, but is so similar to it that it makes the domain name confusingly similar to the mark.
Accordingly, Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s ROEHL TRANSPORTATION common law trademark and to use it in its domain name, merely using the word “transport” instead of the word “transportation” , thereby suggesting that the domain name is a domain name of Complainant and that it will lead to a website of Complainant;
(b) Respondent has then used the disputed domain name so that it resolves to a page that provides links to competitors of Complainant and offers services a well as employment opportunities in the trucking and transportation industry;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no right or legitimate interest in the disputed domain. Complainant contends it has not licensed or otherwise permitted Respondent’s use of its mark. The Panel notes that the WHOIS information lists Respondent as “Ready Asset / Ni How.” The Panel further notes that Respondent has failed to submit a Response to rebut Complainant’s contention. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain pursuant to Policy ¶ 4(a)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark);
(e) Complainant further contends that the disputed domain resolves to a page that provides links to competitors of Complainant and involves services a well as employment opportunities in the trucking and transportation industry. Previous panels have generally found that domain names that resolve to websites that display links to third parties, including a complainant’s competitors, do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). The Panel finds that Respondent’s use of the disputed domain to display links to third-party websites does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Accordingly, Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s promotion of links to Complainant’s competitors disrupts Complainant’s business, providing evidence of bad faith. Complainant includes Exhibits (D-L) showing that the resolving page includes links to both Complainant’s pages as well as pages belonging to Complainant’s competitors, as well as a job placement websites. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”). The Panel finds evidence of bad faith registration and use under Policy ¶ 4(b)(iii) based on Respondent’s provision of links to Complainant’s competitors at the resolving website.
Secondly, Complainant argues Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website. Complainant contends Respondent’s efforts constitute bad faith. Complainant includes exhibits showing that the resolving page includes links to both Complainant’s pages, pages belonging to Complainant’s competitors, and job placement websites. The Panel infers that Respondent commercially benefits from these links through click-through or affiliation fees. The Panel finds that Respondent’s registration and use of the confusingly similar <roehltransport.com> domain name in order to gain commercially from Complainant’s fame and notoriety is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Thirdly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the ROEHL TRANSPORTATION mark and in view of the conduct that Respondent has engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Accordingly, Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <roehltransport.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 18, 2013
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