Megabus USA, LLC v. Ryan Zehl / Fitts Zehl
Claim Number: FA1410001582817
Complainant is Megabus USA, LLC (“Complainant”), represented by Justin S. Haddock of Fulbright & Jaworski LLP, Texas, USA. Respondent is Ryan Zehl / Fitts Zehl (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2014; the National Arbitration Forum received payment on October 1, 2014.
On October 3, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.com> domain names are 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 October 6, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 27, 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@megabusaccident.com, postmaster@megabusaccidentattorney.com, postmaster@megabusaccidentlawyer.com, and postmaster@megabuscrashlawyer.com. Also on October 6, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 25, 2014 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is an authorized licensee of the MEGABUS mark, which is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 3,027,531, registered Dec. 13, 2005). Complainant uses the MEGABUS mark and related marks in furtherance of its bus transport services. The <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.com> all incorporate the MEGABUS mark while interjecting various terms, including “accident,” “crash,” “lawyer,” and “attorney.” The names also rely on the generic top-level domain (“gTLD”) “.com.” Such alterations fail to distinguish the domain names from the mark.
Respondent lacks rights in the disputed domain names. Respondent has no relationship with Complainant, and has never been known by the disputed domain names or the MEGABUS mark. Further, Respondent is not using the disputed domain names for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the <megabusaccident.com> and <megabuscrashlawyer.com> domain names resolved to advertise and solicit legal services pertaining to Respondent’s law firm, Fitts Zehl LLP, which represents bus accident plaintiffs as part of its practice. See Compl., at Attached Ex. E. The <megabusaccidentattorney.com> and <megabusaccidentlawyer.com> domain names resolve to parked pages featuring click-through advertisements. See Compl., at Attached Ex. F. Respondent is making money off of the sale of the advertised legal services, and through click-through fees.
Respondent has engaged in bad faith use and registration. Respondent’s registration of four domain names incorporating the MEGABUS mark amounts to a pattern of bad faith. Further, Respondent is in violation of Policy ¶ 4(b)(iv) as the domain names have been used to divert Internet users to Respondent’s own website for commercial gain. Lastly, Respondent’s actual knowledge of Complainant’s rights in the MEGABUS mark indicates bad faith.
B. Respondent
Respondent failed to submit a formal response in this proceeding. However, Respondent did send an e-mail to the FORUM indicating that it was willing to transfer the disputed domain names to Complainant as the domain names were neither registered by Respondent, nor put to any use by Respondent.
Preliminary Issue: Consent to Transfer
The FORUM received an e-mail from Respondent on October 13, 2014 indicating that it was willing to transfer the <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.com> domain names to Complainant. Respondent noted that the domain names were purchased by someone else and have never been put to any use by Respondent.
While Respondent purportedly consents to transfer the disputed domain names to Complainant, after the initiation of this proceeding, the registrar placed a hold on Respondent’s account and therefore Respondent cannot transfer the disputed domain names while this proceeding is still pending. As a result, the Panel finds that in a circumstance such as this, where Respondent has not contested the transfer of the disputed domain names but instead agrees to transfer the domain names in question to Complainant, the Panel will decide to forego the traditional UDRP analysis and order an immediate transfer of the disputed domain names. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”); see also Disney Enters., Inc. v. Morales, FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial to forego the traditional UDRP analysis and order the transfer of the domain names.”).
Accordingly, for the reasons aforesaid, the Panel will order an immediate transfer of the <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.com>domain names.
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.
It is clear from the above decisions that such an analysis is not necessary where Respondent has consented to the transfer of the disputed domain names, as Respondent has done in the present case. Respondent has used these words in response to the Complaint, of which he had notice: “I just returned from a vacation and noticed that a complaint was filed by Megabus in connection with several domains. I am willing to give the domains up, as they were purchased by someone else and have never been used by us. I also have not received a copy of the “complaint.” Can you please email it to me at this address? I will not be able to respond by the deadline, so please let me know how to obtain an extension. Thanks Ryan Zehl.”
Those words can be interpreted only as an unequivocal consent by Respondent
that the disputed domain names should be transferred to Complainant. As the Panel finds that these are the facts, the Panel also finds that this is an appropriate case to apply the conclusions and reasoning in the above decisions and in other decisions to the same effect, such as Citigroup Inc. v. Texas International Property Associates- NA NA, FA0806001210904 (C) and Scores Holding Company, Inc. v. jason davison, FA1403001551756 (Nat. Arb. Forum, April 26, 2014).
Accordingly, the Panel finds that it is unnecessary and inappropriate to make any other findings of fact or law and that it should proceed forthwith to order the transfer of the disputed domain name to Complainant.
For the reasons set out above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <megabusaccident.com>, <megabusaccidentattorney.com>, <megabusaccidentlawyer.com>, and <megabuscrashlawyer.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: November 27, 2014
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