Montway, Inc. d/b/a Montway Auto Transport v. Jordan Cretella
Claim Number: FA1209001462303
Complainant is Montway, Inc. d/b/a Montway Auto Transport (“Complainant”), represented by Michael D. Adams of Mayer Brown LLP, Illinois, USA. Respondent is Jordan Cretella (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <montway-movers.com>, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 11, 2012; the National Arbitration Forum received payment on September 12, 2012.
On September 14, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <montway-movers.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. 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 September 19, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@montway-movers.com. Also on September 19, 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 October 16, 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:
1. Respondent’s <montway-movers.com> domain name, the domain name at issue, is confusingly similar to Complainant’s MONTWAY AUTO TRANSPORT mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a shipping and delivery services provider specializing in the pickup, transportation, and delivery of automobiles and has offered its services across the United States under the name “MONTWAY,” and other trademarks since 2007. Complainant owns a trademark registration with the United States Patent and Trademark Office ("USPTO") for the MONTWAY AUTO TRANSPORT mark (Reg. No. 4,138,319 registered May 8, 2012). Respondent registered the <montway-movers.com> domain name on August 16, 2012. Respondent’s domain name resolves to website that contains a direct copy of a website owned by “Premier Logistics, Ltd.,” substituting “Premier Logistics, Ltd.,” for “Montway Movers.” Respondent is attempting to hold itself out as an automobile mover under the MONTWAY name and mark through its fraudulent use of “Premier Logistics, Ltd.’s” information and pictures. Respondent’s <montway-movers.com> domain name is confusingly similar to Complainant’s MONTWAY AUTO TRANSPORT mark, using the dominant MONTWAY portion of the mark. Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the registrant of the domain name as “Jordan Cretella.” Respondent does not offer any legitimate goods or services through its use of the disputed domain name, but merely displays the information of a third-party company on the website, changing all references to that company to “Montway Movers” in an effort to compete with Complainant and is diverting Internet users to the directly competing automobile transportation website.
Respondent has not submitted a Response to these proceedings.
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 is a shipping and delivery services provider specializing in the pickup, transportation, and delivery of automobiles. Complainant has offered its services across the United States under the name “MONTWAY,” and other trademarks and owns a trademark registration with the USPTO for the MONTWAY AUTO TRANSPORT mark (Reg. No. 4,138,319 registered May 8, 2012). Complainant also notes that a prior UDRP has found that Complainant’s rights in the MONTWAY AUTO TRANSPORT mark date back to July 1, 2007. Montway, Inc. d/b/a Montway Auto Transport v. Triton Logic, LLC c/o Auto Transporters Direct, FA 1448066 (Nat. Arb. Forum July 21, 2012). Accordingly, Complainant has effectively established its rights in the MONTWAY AUTO TRANSPORT mark under 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)).
Respondent’s <montway-movers.com> domain name is confusingly similar to Complainant’s MONTWAY AUTO TRANSPORT mark, using the dominant MONTWAY portion of the mark. The disputed domain name removes the AUTO TRANSPORT portion of Complainant’s mark while it adds a hyphen and the descriptive term “movers,” as well as the generic top-level domain (“gTLD”) “.com.” Based upon these observations, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
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.”).
Respondent does not have rights or legitimate interests in the <montway-movers.com> domain name that Respondent registered on August 16, 2012. First, Respondent is not commonly known by the disputed domain name as the WHOIS information identifies the registrant of the domain name as “Jordan Cretella.” Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii), based upon the WHOIS information and other available evidence in the record. 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).
Further, Respondent’s disputed domain name resolves to website that contains a direct copy of a website owned by third-party “Premier Logistics, Ltd.,” substituting “Premier Logistics, Ltd.,” on the website for “Montway Movers.” Clearly, Respondent is attempting to hold itself out as an automobile mover under the MONTWAY name and mark through its fraudulent use of “Premier Logistics, Ltd.’s” information and pictures. Respondent does not offer any legitimate goods or services through its use of the disputed domain name, but merely displays the information of a third-party company on the website, changing all references to that company to “Montway Movers” in an effort to compete with Complainant. The Panel finds that Respondent is not using the disputed domain name for 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
As noted above, Respondent has wholly copied the website of a third-party, only changing all reference to that company in the commentary to “Montway Movers,” in order to advertise directly competing automobile moving services. The Panel finds that such competing use of the disputed domain name may disrupt Complainant’s business. Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
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 <montway-movers.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: October 25, 2012
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