Park ‘N Fly Service Corporation v. James Neir, DOLLAR
Claim Number: FA1501001602744
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is James Neir, DOLLAR (“Respondent”), represented by Leslie C. Ruiter of Stokes Lawrence, P.S., Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <airportparknfly.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 30, 2015; the Forum received payment on January 30, 2015.
On February 2, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <airportparknfly.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 February 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 24, 2015 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@airportparknfly.com. Also on February 4, 2015, 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 on February 24, 2015.
A timely Additional Submission was received from Complainant on February 27, 2015.
A timely Additional Submission was received from Respondent on March 4, 2015.
On March 4, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dr. Katalin Szamosi as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant argues that under Policy ¶ 4(a)(i) Respondent’s <airportparknfly.com> domain name is identical to Complainant’s PARK ‘N FLY marks. In support of this, Complainant asserts that:
· the marks are registered with the United States Patent and Trademark Office ("USPTO"), PARK ‘N FLY Reg. No. 1,111,956, PARK ‘N FLY PLUS & Design . No. 2,649,212, PARK ‘N FLY & Design Reg. No. 2,666,170, PARK ‘N FLY NETWORK & Design Reg. No 3,094,310;
· the domain name incorporates the mark, less the space and apostrophe, and adds the generic top-level domain (“gTLD”) “.com,” as well as the related term “airport”.
2. Complainant argues that Respondent has no rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). In support of this, Complainant asserts that
· there is no evidence in the WHOIS information that Respondent is commonly known as “ParkNFly” or by the <airportparknfly.com> name;
· Respondent is using the disputed domain name to advertise its own airport parking and reservation services;
· Respondent’s competitive use of the disputed domain is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
3. Complainant argues that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii). In support of this Complainant contends that
· Respondent is using the <airportparknfly.com> domain name to offer directly competitive services, which disrupts Complainant’s business;
· Respondent’s efforts to trade off consumer recognition of Complainant in pursuit of commercial gain are indicative of bad faith.
B. Respondent
1. Respondent's arguments can be summarized as follows,
· the disputed domain is used in conjunction with a website offering parking and transportation services, which have been provided since 1969;
· it lists the group of companies (Dollar Park and Fly, Dollar Development co, Park N Fly and UPark N Fly) with which it is affiliated with, (hereinafter DOLLAR companies);
· DOLLAR companies own the Washington State Trademark registration for PARK N FLY (Reg. No. 56,918, registered may 22, 2014) ;
· DOLLAR companies hold comparable state registrations for the likes of PARK SHUTTLE AND FLY, and PARK AND FLY in Washington and Oregon;
· DOLLAR companies commenced their Washington and Oregon airport parking services before Complainant registered its marks;
· DOLLAR companies has a litigious history with Complainant;
· DOLLAR companies has legitimate rights in the disputed domain name as it is used in connection with a bona fide business which was purchased in 1999, and used to offer parking and transportation services to customers at Seattle-Tacoma and Portland International Airports;
· the disputed domain name is a combination of generic words;
· DOLLAR companies did not register the disputed domain name in bad faith;
· DOLLAR companies used the mark in good faith since before Complainant registered its marks.
C. Additional Submissions
1. Complainant’s asserts the followings in its Additional Submission:
· there is no evidence that Respondent has any relationship with Dollar Development Co.;
· even if there is a relationship between Respondent and Dollar Park and Fly Inc, Respondent is enjoined from using the PARK ‘N FLY mark in connection with parking services in Oregon;
· Respondent’s use of the disputed domain name in connection with parking services in Oregon cannot amount to a bona fide offering of goods or services as Respondent is enjoined from using PARK ‘N FLY for parking services in the state;
· if Respondent and Dollar Park and Fly Inc. are in fact related entities, Respondent has acted in bad faith by using the disputed domain name in connection with parking services in Oregon as Dollar Park and Fly Inc. is enjoined from doing so pursuant to a court order.
· the PARK ‘N FLY mark cannot be deemed generic. Issues concerning trademark validity are not within the purview of the UDRP.
Respondent’s asserts the followings in his Additional Submission that
· nothing in Complaint’s materials refutes Respondent’s evidence of their long-term, continuous use of the PARK N FLY mark in Washington State, and the domain name <airportparknfly.com> and other related domain names in conjunction with bone fide business operations;
· submitted evidence confirms that Mr. Neir is a long-term employee of DOLLAR companies;
· Mr. Neir registered and serves as the contact person of the domain name at dispute;
· Mr. Neir’s procurement and registration of the domain name is the ordinary scope of his employment.
Complainant is the owner of the USPTO registrations PARK ‘N FLY Reg. No. 1,111,956, PARK ‘N FLY PLUS & Design No. 2,649,212, PARK ‘N FLY & Design Reg. No. 2,666,170, PARK ‘N FLY NETWORK & Design Reg. No 3,094,310.
DOLLAR companies are the owner of the Washington State Trademark registrations for PARK N FLY Reg. No. 56,918, PARK SHUTTLE AND FLY Reg. No. 53454, PARK AND FLY Reg. No. 50517 and Oregon State Trademark registrations for DOLLAR PARK & FLY Reg. No. 40961, PARK AND FLY Reg. No. 40963.
The domain name <airportparknfly.com> was registered on June 23, 1999. From the WHOIS information it could be established that Respondent was acting on behalf of the DOLLAR companies.
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.
The Panel finds that Complainant’s registrations for PARK ‘N FLY with the USPTO adequately demonstrates Complainant’s 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 argues that the <airportparknfly.com> domain name is confusingly similar to the PARK ‘N FLY mark. Complainant claims the domain name incorporates the mark, less the space and apostrophe, and adds the generic top-level domain (“gTLD”) “.com,” as well as the related term “airport.” Complainant notes that the added term “airport” only serves to increase the likelihood of confusion as Complainant’s services rely on and are located near airports.
Panel notes that prior panels have concluded that the presence of a gTLD, the omission of spacing, and the omission of punctuation such as an apostrophe, are inconsequential alterations under the confusing similarity analysis. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Further, prior panels have determined that the addition of a generic or descriptive term to an otherwise incorporated mark fails to negate confusing similarity. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); Dr. Ing. h.c. F. Porsche AG v. Anderson, D2004-0312 (WIPO July 2, 2004) (finding the <porschesales.com> domain name to be confusingly similar where the respondent added the generic term “sales” to the complainant’s PORSCHE mark).
Accordingly, Panel finds that the <airportparknfly.com> domain name is confusingly similar to the PARK ‘N FLY mark pursuant to Policy ¶ 4(a)(i).
Panel notes that while Respondent contends that the <airportparknfly.com> domain name is comprised of common and generic/descriptive terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
As to the second 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).
Respondent has proven that Mr. Neir is an employee - serves only as a contact for the domain name - of Dollar companies which has been offering parking and transportation services since 1969 under names similar to the one now in dispute. The United States District Court, District of Oregon determined DOLLAR companies could not use the “Park and Fly” term in connection with its Portland affiliate, however the injunction did not prohibit the use of the words with an addition word in between, such as ‘Park, Shuttle & Fly.”
From the submitted documents it could be established that DOLLAR companies are the owner of numerous Washington and Oregon State trademarks protecting the “PARK AND FLY” and “PARK, SHUTTLE & FLY” terms.
Furthermore based on the submitted evidence the Panel finds Respondent is commonly known by the PARK AND FLY moniker, rebutting Complainant’s assertion under Policy ¶ 4(c)(ii) that Respondent is commonly not known by this name. See VeriSign Inc. v. VeneSign C.A., D2000-0303 (WIPO June 28, 2000) (finding that the respondent has rights and a legitimate interest in the domain name since the domain name reflects the respondent’s company name); K2r Produkte AG v. Trigano, D2000-0622 (WIPO Aug. 23, 2000) (finding that the respondent had rights and legitimate interests in the domain name <k2r.com> where he registered the domain name for a website in connection with his mother’s store, "KIRK ET ROSIE RICH").
From the submitted documents it could be established that the domain name in dispute was registered in 1999, and the standing use thereof was not in question. Therefore Panel finds Respondent’s long-standing efforts to provide parking and transportation services near airports constitutes a bona fide offering of services as envisioned by Policy ¶ 4(c)(i). See Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (finding that the respondent’s operation of a bona fide business of online prop rentals for over two years was evidence that the respondent had rights or legitimate interests in the disputed domain name).
Furthermore the Panel considers that Respondent’s longstanding use of the domain for similar services as Complainant, without objection for as long as 15 years from Complainant should be considered on the merits - with the note that laches on its own is not a defense under the Policy, See Meat & Livestock Comm’n v. Pearce, D2003-0645 (WIPO Oct. 27, 2003) (“Although laches is not a defense in itself under the Policy, the absence of any complaint over a long period of time in which domain names are in active use can suggest that such use does not give rise to a serious problem.”).
On
the basis of the above, the Panel finds that Complainant failed to present a
prima facie case that Respondent has no rights or legitimate interest in the
domain name, whereasRespondent was able to submit evidence in support of that it
is commonly known by the domain name and his bona fideoffering of goods
and services thereby successfully demonstrated that his use of the disputed
domain name falls under the exemptions in section 4(c)(i) and (ii) of the UDRP.
See Compagnie Generale des Matieres Nucleaires v. Greenpeace International,
Case No. D2001-0376 (May 14, 2001) ("Proving that the respondent
has no rights or legitimate interests in respect of the Domain Name requires
the romplainant to prove a negative. For the purpose of this sub paragraph,
however, it is sufficient for the complainant to show a prima facie case and
the burden of proof is then shifted on to the shoulders of the respondent. In
those circumstances, the common approach is for respondents to seek to bring
themselves within one of the examples of paragraph 4(c) or put forward some
other reason why they can fairly be said to have a relevant right or legitimate
interest in respect of the domain name in question.").
Panel remarks that the assessment of the possible breach of the judgment made by the United States District Court, District of Oregon by Respondent is not subject of the proceedings pursuant to Policy and Respondent demonstrated that their use of the disputed domain name falls under the exemptions in section 4(c)(i) and (ii) of the UDRP.
The Panel concludes that Complainant failed to present a prima facie case that Respondent has no rights or legitimate interest in the domain name pursuant to Policy ¶ 4(a)(ii), therefore Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <airportparknfly.com> domain name REMAIN WITH Respondent.
Dr. Katalin Szamosi, Panelist
Dated: March 18, .2015
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