Park ‘N Fly Service Corporation v. Kevin Lanzillo
Claim Number: FA1404001554365
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Kevin Lanzillo (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parknfly.net>, registered with Go China Domains, LLC.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically April 16, 2014; the National Arbitration Forum received payment April 16, 2014.
On April 16, 2014, Go China Domains, LLC confirmed by e-mail to the National Arbitration Forum that the <parknfly.net> domain name is registered with Go China Domains, LLC and that Respondent is the current registrant of the name. Go China Domains, LLC verified that Respondent is bound by the Go China Domains, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 17, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 7, 2014, 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@parknfly.net. Also on April 17, 2014, 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 April 28, 2014.
On April 29, 2014, pursuant to both parties’ requests to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Complainant has rights in the PARK ‘N FLY mark under Policy ¶ 4(a)(i).
a. Complainant founded its business in 1967 as the first off-airport parking company specifically geared toward business travelers. Complainant uses its PARK ‘N FLY mark and has done so for some 45 years.
b. Complainant owns registrations for the PARK ‘N FLY mark with the United States Patent and Trademark Office (“USPTO”).
c. The <parknfly.net> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark.
i. Respondent removed the spaces and the apostrophe from Complainant’s mark and added the generic top-level domain (“gTLD”) “.net.”
ii. Respondent admits that the <parknfly.net> domain name is “similar” to Complainant’s registered mark.
2. Respondent has no rights to or legitimate interests in the <parknfly.net> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Complainant already owns the PARK ‘N FLY mark.
ii. No evidence in the WHOIS information or elsewhere indicates that Respondent is commonly known as “ParkNFly” or “parknfly.net.”
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
i. Respondent uses the disputed domain name to display advertisements for parking and airport parking reservation services and to advertise that the infringing domain name is “for sale.” See Complainant’s Annex 7.
ii. Respondent’s use of the disputed domain name redirects Internet users to competitors of Complainant and thereby earns a referral fee.
3. Respondent registered and is using the <parknfly.net> domain name in bad faith.
a. Respondent’s disputed domain name resolves to a website prominently advertising that the disputed domain name is for sale.
b. Respondent’s competing use of the disputed domain name disrupts Complainant’s legitimate business.
c. Respondent uses the disputed domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark and Respondent’s disputed domain name.
d. Respondent knew about Complainant and Complainant’s mark when it registered the disputed domain name.
1. Respondent is a domain name investor that specializes in the acquisition of generic dictionary words. Respondent also owns <superdomains.net>, a business-oriented website to display Respondent’s domain portfolio.
2. The words “park” and “fly” are two commonly used terms that relate to airport activities. Respondent uses the letter “N” in a generic manner for the word “and.”
3. Respondent acquired parknfly.net through a GoDaddy.com domain auction.
4. Respondent explains that once a domain name is added to its GoDaddy account it is automatically parked and any relevant ads are put up on it through their “cash parking” program. Respondent claims it did not customize what is displayed on the resolving website.
5. Respondent conceded that the domain name is similar to Complainant’s protected mark.
6. Respondent offered to transfer the domain name but took no action relative to that offer.
7. The Panel notes that Respondent’s <parknfly.net> domain name was registered January 14, 2014.
The Panel finds that Respondent concedes that the domain name is “similar” to Complainant’s protected mark and the Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark.
The Panel finds that Respondent made an offer to transfer the domain name; however, since Respondent took no action of see that this offer was realized, the Panel finds that Complainant is entitled to a ruling on the merits in order to resolve the dispute between the parties.
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
The Panel finds that Respondent registered and parked the disputed domain name in bad faith for reasons set out below.
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 Complainant to 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 to or Confusingly Similar
Complainant asserts that it has rights in the PARK ‘N FLY mark under Policy ¶ 4(a)(i). Complainant contends that its business was founded in 1967 as the first off-airport parking company specifically geared toward business travelers. Complainant claims that it has used its PARK ‘N FLY mark for more than 45 years. Complainant provides evidence that it owns registrations for the PARK ‘N FLY mark with the USPTO (e.g., Reg. No. 1,111,956 registered January 23, 1979). Prior panels have traditionally concluded that providing evidence of a registration for a given mark is sufficient to establish rights in that mark under the Policy. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Since both Respondent and Complainant are located in the United States, the Panel finds that Complainant has shown rights in the PARK ‘N FLY mark under Policy ¶ 4(a)(i).
Next, Complainant asserts that Respondent’s <parknfly.net> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark. In fact, the Panel notes that Respondent admits that the <parknfly.net> domain name is similar to Complainant’s registered mark. Complainant explains that Respondent removed the spaces and the apostrophe from Complainant’s mark and added the gTLD “.net.” The Panel notes that previous panels have concluded that these variations are not sufficient to differentiate a disputed domain name from a given mark. See Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”); see also 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).”). The Panel therefore finds that Respondent’s <parknfly.net> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark under Policy ¶ 4(a)(i).
Respondent concedes that the disputed domain name is similar to the Complainant’s protected mark in the Response.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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 no rights to or legitimate interests in the <parknfly.net> domain name. Additionally, Complainant states that Respondent is not commonly known by the disputed domain name. Complainant claims that Respondent cannot be commonly known by the disputed domain name because Complainant already owns the PARK ‘N FLY mark. Further, Complainant contends that no evidence in the WHOIS information or elsewhere indicates that Respondent is commonly known as “ParkNFly” or “parknfly.net.” The Panel notes that the WHOIS information shows that the <parknfly.net> domain name was registered January 14, 2014, and the registrant for the domain name is listed as “Kevin Lanzillo.” The Panel further acknowledges that Respondent self-identifies as Kevin Lanzillo. The Panel notes as well that the panel’s decision in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) included findings that a respondent was not commonly known by the disputed domain name where the WHOIS information along with other information in the record gave no evidence suggesting that respondent was commonly known by the disputed domain name. The Panel, here, therefore finds that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant further states that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <parknfly.net> domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant contends that Respondent uses the <parknfly.net> domain name to display advertisements for parking and airport parking reservation services and to advertise that the infringing domain name is “for sale.” See Complainant’s Annex 7. Complainant’s Annex 7 shows some of the links displayed on the resolving website, including, “Park ‘N Fly ATL- $6.99,” “Airport Park, Ride & Fly,” “Park Free in CHS,” “Discount parking,” and “Park Sleep Fly Deals.” Complainant contends that Respondent’s use of the disputed domain name redirects Internet users to competitors of Complainant and Respondent thereby earns a referral fee. Prior panels have found that using a confusingly similar domain name to resolve to a website displaying a plethora of links that compete with complainant, does not indicate rights or legitimate interests in the disputed domain name. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)). This Panel therefore finds that Respondent’s use of the <parknfly.net> domain name does not convey rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii).
Respondent contends that it is a domain name investor that specializes in the acquisition of generic dictionary words. Respondent argues that the words “park” and “fly” are two commonly used terms that relate to airport activities. Further, Respondent states that it uses the letter “N” in a generic manner for the word “and.” The Panel does not find Respondent’s contentions persuasive; the Panel finds that Respondent failed to establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). In fact, Complainant offered sufficient proof to show registration by appropriate authorities of Complainant’s mark and Respondent’s use of the mark to compete with Complainant permits the Panel to make an inference that Respondent knew of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name using Complainant’s protected mark in this current calendar year. But See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Qwest Commc’ns Int’l v. QC Publ’g Grp., Inc., FA 286032 (Nat. Arb. Forum July 23, 2004) (stating that “Complainant’s rights in the QWEST mark are limited to its application to the tele-communications industry,” where a variety of other businesses used the mark in unrelated fields).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant asserts that Respondent registered and is using the <parknfly.net> domain name in bad faith. Complainant states that Respondent’s disputed domain name resolves to a website prominently advertising that the disputed domain name is for sale. Complainant’s Annex 7 displays the website that resolves from the disputed domain name, including the advertisement: “This domain is for sale! Click here for details.” Previous panels have concluded that a general offer to sell a disputed domain name establishes that the domain name was registered in bad faith. See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding that the attempted sale of a domain name is evidence of bad faith). This Panel therefore finds that Respondent registered and is using the <parknfly.net> domain name in bad faith under Policy ¶ 4(b)(i).
Complainant additionally contends that Respondent’s competing use of the disputed domain name disrupts Complainant’s legitimate business in bad faith. Complainant asserts that Respondent’s disputed domain name resolves to a website displaying links that compete with Complainant’s business. Complainant’s Annex 7 shows some of the links featured on Respondent’s resolving website, including “Park ‘N Fly ATL- $6.99,” and “Park Free in CHS.” Prior panels have found that displaying links that compete with a complainant’s business disrupts complainant’s business by redirecting Internet users to third-party websites. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”). This Panel likewise finds that Respondent registered and is using the <parknfly.net> domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant argues that Respondent uses the disputed domain name to intentionally attempt to attract Internet users to its website by creating a likelihood of confusion with Complainant’s mark and Respondent’s disputed domain name. The Panel notes that Complainant’s Annex 7 display’s Complainant’s registered PARK ‘N FLY mark as well as various links and advertisements relating to airport parking. Previous panels have found bad faith under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to provide links to a complainant’s competitor and presumably commercially profit therefrom using the misleading domain name. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel finds that Respondent registered and is using the <parknfly.net> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that Respondent knew about Complainant and Complainant’s mark when it registered the disputed domain name. Complainant asserts that based on its longstanding and widespread use of the PARK ‘N FLY mark in the airport parking industry, Respondent was well aware of Complainant and Complainant’s mark. While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here finds that Respondent had actual notice of Complainant's mark and thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel notes that Respondent claims that the resolving website is an automatically parked website and any relevant ads are put up on the website through the Registrar’s “cash parking program.” The Panel, however, notes the prior panel’s decision in Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) that found the disputed domain name to have been parked and the Registrant responsible for the content of the material appearing on the webpage associated with the domain name in dispute. This Panel therefore finds that Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that Respondent registered and used the disputed domain name, under an ICANN Policy analysis in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be GRANTED.
Accordingly, it is Ordered that the <parknfly.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 13, 2014
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