MSP Airport Taxi LLC v. Raymond Gordner
Claim Number: FA1702001719043
Complainant is MSP Airport Taxi LLC (“Complainant”), represented by Vytas M. Rimas, Minnesota, USA. Respondent is Raymond Gordner (“Respondent”), North Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mspairporttaxi.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.
Luz Helena Villamil-Jimenez, Panelist.
Complainant submitted a Complaint to the Forum electronically on February 25, 2017; the Forum received payment on February 24, 2017.
On February 27, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <mspairporttaxi.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 28, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 20, 2017 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@mspairporttaxi.com. Also on February 28, 2017, 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 March 20, 2017.
On March 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Luz Helena Villamil- Jimenez 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
Complainant, MSP Airport Taxi LLC, claims that it was the holder of the domain name <mspairporttaxi.com> which was created by Mr. Abdinasir Budul, owner of complainant.
Complainant informs that the domain name <mspairporttaxi.com> was registered on December 12, 2005, and continued in force until December 12, 2015. The domain was used in connection with taxi and transportation services until the date it expired. The expiration of the domain name was unintentional, and took place because the auto-renewal failed due to the expiration of the credit card that was on file with the Registrar GoDaddy. Complainant adds that GoDaddy attempted to contact him by email, but was unable do so because Complainant’s email that was based on the domain name that was no longer operational due to the expiration of the domain.
Complainant also asserts that in January, 2016 he began having troubles with the emails, and was contacted by the Minneapolis-St. Paul Airport badge office who informed that emails were being returned apparently due to an address error. Complainant then checked its website and ascertained that it was down. Afterwards, Complainant was informed by GoDaddy that the domain name was acquired by another party.
Once the domain <mspairporttaxi.com> expired, Complainant’s owner Mr. Budul emailed to and discussed by telephone with Respondent Mr. Rymond Gordner a brief history of Complainant’s use of the domain <mspairporttaxi.com>. Complainant requested that Respondent return the domain name back to Complainant and offered to pay for any associated costs. On February 28, 2016, Respondent sent an email to Complainant stating that the offered “$40.00 is not going to do the trick.” Respondent further stated that he was “open to alternatives either cash or partnering deals that have consistent payouts.”
According to Complainant, the domain www.mspairporttaxi.com, which was renewed by its new Registrant in December, 2016, redirects to the website www.gopherstatetaxi.com, which is the webpage of a taxi company located in the Minneapolis and St. Paul, Minnesota metropolitan area, and is a direct competitor of Complainant.
Lastly, Complainant contends that Respondent is listed as the owner of the domain name lakenormanairporttaxi.com. The website www.lakenormanairporttaxi.com purports to show recommended airport taxis in other select cities outside of Lake Norman, North Carolina, which allows a visitor to the website to click- through Minneapolis MN Airport Taxi that automatically redirects and diverts the user to the website www.gopherstatetaxi.com, which is a direct competitor of Complainant.
B. Respondent
Respondent states that Complainant “does not make his case because the name is not unique and is made up of key search terms.”
Respondent also contends that Complainant allowed the disputed domain to expire, and that anyway he could just as easily be served using www.mspairporttaxi.net , which he owns.
Respondent also mentions that Complainant has been without a website by his own hand for over 15 months, and that it took him over 2 months to realize that his site had disappeared from the web. Moreover, Respondent asserts that he has the same right as anyone else to own and profit from the domains that he purchases, and that he has future plans for the domain and it's sister domains that he already owns such as minneapolisstpaulairporttaxi.com and stpaulairportaxi.com.
Lastly, Respondent mentions that he has the right to forward it to anyone he wants and has done so to help keep it in the search engines eye.
It is clear for the Panel that both parties agree in that the domain name <mspairporttaxi.com> is a domain name that used to be registered by Complainant; that it expired in December, 2015, and that Respondent registered it as soon as he ascertained that the mentioned domain had expired. It is also clear, from Respondent’s statements, that he is using the domain under dispute in the manner mentioned by Complainant, inasmuch as Respondent claims he has the right to use his domain in any manner he wishes, since he is entitled “to own and profit from the domains that I purchase” and “I have the right to forward it to anyone I want and have done so to help keep it in the search engines eye”.
The foregoing means that Respondent does not deny any of the assertions of Complainant in its Complaint.
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.
There is no doubt as regards the fact that the domain name to which the dispute refers is identical to the name MSP AIRPORT TAXI LLC which turns out to be the name of the entity who filed the Complaint. Now, the bottom line in this point relies on whether Complainant has common law rights over the trademark MSP AIRPORT TAXI LLC that entitles it to obtain a favorable decision and, therefore, the transfer of the domain under dispute. Let us elaborate a little bit around trademarks:
A trademark is a sign (a word, a design, or a combination of both) used in commerce to identify products or services in the market in order to individualize them from the same or similar products or services of competitors in the market. Generally speaking, trademarks are registered in order to secure exclusive rights thereon. However, in countries like the United States (country of origin and residence of the parties to this process) it is imperative to use trademarks in order to obtain and maintain rights and, in addition, the applicable regulations provide for common law rights over trademarks, which arise from actual and continued use of a mark. Common law rights may allow the common law user to successfully challenge a registration or application, and also the usage thereof by a non-authorized third party.
The foregoing leads to analyze whether the company MSP AIRPORT TAXI LLC can derive common law trademark rights from the trademark MSP AIRPORT TAXI from the usage made of this name, usage that, on the other hand, was duly proven by Complainant with his Complaint. No doubt, in the event that anyone tried to register in the United States the mark MSP AIRPORT TAXI LLC in connection with transportation services and taxi services, it is more than likely the company MSP AIRPORT TAXI LLC could successfully lodge an opposition on the grounds of the risk of confusion of any such trademark with its name, to a point where consumers could assume that a trademark registration for MSP AIRPORT TAXI LLC covering transportation services is owned by Complainant, and therefore no trademark could be registered in Class 39 (the Class that covers transportation services) identical or even similar to the name MSP AIRPORT TAXI by someone other than MSP AIRPORT TAXI LLC.
That said, the Panel finds: (i) that Complainant has asserted common law trademark rights in its name MSP AIRPORT TAXI LLC; (ii) that the Rules do not require that the Complainant's trademark be registered before a government authority or agency for such a right to exist, and (iii) that the name “MSP AIRPORT TAXI LLC” has sufficient secondary association with Complainant. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Having decided that Complainant has common law trademark rights in its name, the next consideration to make is whether the domain name <mspairporttaxi.com> is identical or confusingly similar with Complainant’s name. Indeed, the second level domain name in <mspairporttaxi.com> is identical to Complainant’s name since the suffix .com should not be taken into account in order to determine the similar condition of the names. Therefore, the Panel finds that the requirement of the Policy paragraph 4(a)(i) is satisfied.
The second aspect to determine in the present case is whether Respondent has rights or legitimate interests on the domain name <mspairporttaxi.com>. To start, it is imperative to recall that the mentioned domain name was registered by Respondent immediately upon expiration of the existing registration for the domain <mspairporttaxi.com> on December 12, 2015. The WhoIs report concerning the disputed domain submitted by Complainant demonstrates that the domain appears as having been created December 12, 2005 by Respondent, and in force until December 12, 2019. In other words, Respondent registered the domain in his name so fast, that according to every WhoIs searched, there has been no break in continuity as regards the ownership of the domain inasmuch as it appears as having been owned by Respondent since December 12, 2005. This fact, as seen before, is not true, since Respondent accepted that he registered the disputed domain after 12 December, 2015 once it expired in the hands of MSP Airport Taxi LLC.
The Panel notes that Raymond Gordner is currently listed as the registrant of record for the disputed domain name, and the record is devoid of any evidence to indicate that Respondent is either commonly known as the disputed domain name or in possession of licensing rights. Where such a void exists, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
In fact, what is evident and duly demonstrated in the present case is that Respondent is engaged in transportation services (i.e. services that relate with Complainant’s main business), since he himself asserted that he has “future plans for the domain and it's sister domains that I already own such as minneapolisstpaulairporttaxi.com and stpaulairportaxi.com”. In turn, as to who is known by the MSP Airport Taxi LLC name it is also a fact that it is Complainant. This means that, in an indisputable manner, the one who has rights and legitimate interest on the domain <mspairporttaxi.com> is Complainant.
In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(ii) is satisfied.
Panel considers that registering the domain name <mspairporttaxi.com> in the name of someone other than MSP Airport Taxi LLC, is in itself a bad faith registration. There is no doubt that Respondent decided to register the domain in his name to obtain a considerable benefit by leasing it to a direct competitor of Complainant, a fact that was not denied by Respondent. No good faith can be found on this behavior, and on the contrary it evidences a practice that goes against all the rules of competition. Let the Panel quote some of the statements made by Respondent in his response:
- I have as much right as anyone to own and profit from the domains that I purchase.
- I have future plans for the domain and it's sister domains that I already own such as minneapolisstpaulairporttaxi.com and stpaulairportaxi.com.
- I have the right to forward it to anyone I want and have done so to help keep it in the search engines eye.
As the Panel sees it, Respondent is completely informed of Complainant’s activities and domains, since he even stated that “he could just as easily be served using www.mspairporttaxi.net , which he owns.” Considering that Respondent is also the owner of the domain www.lakenormanirporttaxi.com which identifies a website that provides pre-arranged airport transportation, and that he did not deny that he has leased the domain subject of the present case to a direct competitor of the Complainant, this behavior, instead of demonstrating good faith usage of the domain, demonstrates that the disputed domain was registered and is being used in bad faith.
In light of the foregoing considerations, the Panel finds that the requirement of the Policy paragraph 4(a)(iii) is met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <mspairporttaxi.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jimenez, Panelist
Dated: April 13, 2017
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