Carey
International, Inc. d/b/a Manhattan International Limousine Network Ltd v. Alex
Kogan (successor to Sima Sandler)
Claim Number:
FA0505000486191
Complainant is Carey
International, Inc. ("Complainant"), represented by Sara L.
Edelman, of Davis & Gilbert LLP, 1740 Broadway, New York, NY
10019. Respondent is Sima Sandler
("Respondent"), represented by David J. James, 1325 Fourth
Avenue, Suite 600, Seattle, WA 98101.
The domain names
at issue are <careyglobal.com>, <careyus.com>, and <manhattanlimo.com>,
registered with Domaindiscover.
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.
Calvin A.
Hamilton as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
27, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On June 1, 2005,
Domaindiscover confirmed by e-mail to the National Arbitration Forum that the
domain names <careyglobal.com>, <careyus.com>, and <manhattanlimo.com>
are registered with Domaindiscover and that the Respondent is the current
registrant of the name. Domaindiscover
has verified that Respondent is bound by the Domaindiscover registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution
Policy (the "Policy").
On June 3, 2005,
a Notification of Complaint and Commencement of Administrative Proceeding (the
"Commencement Notification"), setting a deadline of June 23, 2004 by
which Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on
Respondent's registration as technical, administrative and billing contacts,
and to postmaster@careyglobal.com, postmaster@careyus.com, and
postmaster@manhattanlimo.com by e-mail.
A timely
electronic copy of the Response was received on July 5, 2005. However, since the hardcopy form of the
Response was not received until after the deadline for response, the National
Arbitration Forum considers the Response to be deficient and not in compliance
with ICANN Rule #5(a).
A timely
Additional Submission was received from Complainant on July 11, 2005.
No reply to
Complainant's Additional Submission was submitted by Respondent.
On July 12,
2005, pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Calvin A.
Hamilton as Panelist.
On July 20,
2005, the Panel ordered that the time period for issuing its Decision be
extended until July 29, 2005.
Complainant
requests that the domain names be transferred from Respondent to Complainant.
Respondent
requests a finding that Complainant has engaged in reverse domain name
hijacking and that the remedy requested by Complainant be denied.
A. Complainant
In relation to
Policy ¶ 4(a)(i), Complainant, Carey International, Inc., contends that
Respondent's <careyglobal.com> and <careyus.com> are
both identical and confusingly similar to Complainant's CAREY trademark and
that Respondent's <manhattanlimo.com> is also identical and
confusingly similar to both Complainant's MANHATTAN LIMOUSINE common law
trademark and its MANHATTAN INTERNATIONAL registered trademark.
In relation to
Policy ¶ 4(a)(ii), Complainant contends that Respondent has no rights or
legitimate interests in respect of <careyglobal.com>, <careyus.com>
or <manhattanlimo.com> as Respondent's domain names are not in
connection with a bona fide offering of goods or services, nor is
Respondent commonly known by this name, nor is Respondent making a legitimate
noncommercial or fair use of the domain name.
Complainant contends that Respondent is plainly using all three domain
names for the sole purpose of deceiving the public in order to gain a
commercial advantage.
In relation to
Policy 4(a)(iii), Complainant contends
that Respondent registered and is using domain names in bad faith by luring
customers who are looking for CAREY and MANHATTAN brand transportation services
and then misdirecting those customers into purchasing its own competing
services.
B. Respondent
Sima Sandler,
against whom the Complaint was initiated, filed no Response.
However, Alex
Kogan filed a Response as successor to Sima Sandler which was received by the
Forum as indicated above.
That Response
makes the following assertions:
Respondent
contends that Complainant fails to prove all three elements of the Policy
therefore failing to meet the burden of proof.
In relation to
Policy ¶ 4(a)(i), Respondent makes no response to the arguments of Complainant
in relation to Carey. However,
Respondent contends that the domain name <manhattanlimo.com> is
not identical or confusingly similar to a mark in which Complainant has
rights. This is due to the fact that
Complainant has no registered rights in the marks MANHATTAN LIMOUSINE,
MANHATTANLIMO or MANHATTAN, nor can any common law rights be established due to
lack of evidence of secondary meaning of the mark and the fact that MANHATTAN
LIMOUSINE has no web presence.
In relation to
Policy ¶ 4(a)(ii), Respondent contends that he has rights or legitimate
interests in the domain names in accordance with Policy ¶ 5(c) as he has used
these domain names in connection with a bona fide offering of services
before receiving any notice of this dispute and any interest Complainant may
have in the terms MANHATTAN LIMOUSINE or MANHATTAN is at best weak. Respondent contends that he has also been
commonly known by the domain name since June 1, 2003.
In relation to
Policy 4(a)(iii), Respondent contends
that he has not registered or used the domain name in bad faith and that the
Complainant fails to meet the burden of proof by providing convincing evidence
to demonstrate Respondent's bad faith at the time of registration of the domain
name <manhattanlimo.com> and Respondent has not used domain names to
intentionally attempt to attract for commercial gain, Internet uses to its
websites by creating confusion with Complainant's marks.
Respondent
contends that Complainant is involved in Reverse Domain Name Hijacking by using
the Policy "in bad faith to deprive a registered domain name holder of a
domain name."
C. Additional
Submissions
Complainant
contends that Respondent has conceded Complaint's rights by not disputing
Complainant's arguments over the domain names <careyglobal.com>
and <careyus.com>.
In relation to
Policy ¶ 4(a)(i), Complainant contends that it owns sufficient trademark rights
in MANHATTAN INTERNATIONAL, MANHATTAN and MANHATTAN LIMOUSINE to challenge the
domain name <manhattanlimo.com>.
Complainant's registration of MANHATTAN INTERNATIONAL confers strong
rights in MANHATTAN INTERNATIONAL and MANHATTAN and Complainant's long use of
MANHATTAN LIMOUSINE and MANHATTAN confers strong rights in both marks. The strong nature of these trademarks means
that they do not have to be exactly identical to Respondent's
<manhattanlimo.com> domain name in order to satisfy Policy ¶ 4(a)(i).
In relation to
Policy ¶ 4(a)(ii), Complainant contends that Respondent lacks any rights or
legitimate interests in any of the domain names. Even if Respondent had used trade name <manhattanlimo.com>
for bona fide services since June 2003, such use would not have been
sufficient for the domain name to become "commonly known".
In relation to
Policy ¶ 4(a)(iii), Complainant contends from everything stated in its
Complaint and Additional Submission that Respondent has demonstrated
overwhelming bad faith in an attempt to attract customers away from
Complainant's services towards Respondent's.
Complainant
contends that it has not engaged in reverse domain name hijacking of the domain
name <manhattanlimo.com> and Respondent has failed to satisfy any
of the prima facie elements for such a claim.
The Panelist
first addresses the procedural issues of the identity of Respondent and the
timing of the Response.
ICANN Rule 1
defines "Respondent" as "the holder of a domain-name
registration against which a complaint is initiated". In Wells Fargo & Co. v. John Doe as
Holder of Domain Name, FA 362108 (Nat. Arb. Forum Dec. 30, 2004), the Panel
found that "the Policy and Rules anticipate that the 'holder' of a domain
name registration will be the individual or entity listed in the WHOIS
information." The WHOIS information is a database compiled of the actual
domain name registration information given to the respective registrars. The
WHOIS record for the disputed domain names identified Sima Sandler, not Alex
Kogan, as the holder of the domain names on June 1, 2005.
As stated above,
the Response was submitted in representation of Alex Kogan as successor to Sima
Sandler. In that Response, it was stated, in Annex C, points 12 and 13, that
the administrative and technical contacts for the disputed domain names have
been changed recently, that the new contact is Alex Kogan, that Alex Kogan is a
cousin of Alexander Sandler, that Alexander Sandler is the person with control
over the disputed domain names and that Alexander Sandler is the father of Sima
Sandler. No evidence other than Annex C, a non-party declaration by Alexander
Sandler, has been provided to support these claims.
In its
Additional Submission, Complainant challenged the admissibility of the
aforementioned declaration but cites a UDRP Panel Decision that does not
establish the precedence Complainant wishes to rely on. The question of Alex
Kogan's standing in this Dispute, however, has not been challenged by
Complainant and is therefore deemed to have ius standi. In Imperial
Coll. of Science, Tech. & Medicine v. Webweaver Media Constr.,
D2000-1146 (WIPO Nov. 22, 2000), a third party, who filed a Response, had the
rights and legitimate interests of the respondent considered, particularly
because the complainant raised no objection to the claimed interest of the
respondent as beneficial owner of the domain name at issue and to the
submission of a Response to the Complaint on that basis.
In these unique
circumstances, the Panel has performed a WHOIS Lookup. The results of that
search are as follows:
As last updated
on June 24, 2005, the Registrant of the domains <careyus.com> and <careyglobal.com>,
registered through DomainDiscover, is Alex Kogan, 98 Gonta Street, Vinnitsa,
Ukraine 28600, UA. This address is not the same as the one stated in the
Response in the section Respondent Information.
The domain <manhattanlimo.com>
is no longer registered through DomainDiscover. A wider WHOIS search revealed
that <manhattanlimo.com> is registered with Registrar, NETWORK
SOLUTIONS, LLC., and was updated on June 10, 2005.
Although this
information was available to Complainant prior to submitting their Additional
Submission, they made no contentions in this respect.
Additionally,
Complainant has made no directions to the Panel about the admissibility of the
Response given that the hardcopy form of the Response was not received until
after the deadline for response and thus not conforming to ICANN Rule #5(a). A
timely electronic copy of the Response was received and Complainant has had
full opportunity to submit an additional submission in response to the Response
and has not been prejudiced in any way by the untimely reception of the
hardcopy form of the Response.
For these
reasons, the Panel, exercising its discretion, determines to consider the
untimely Response in ruling on this matter. See Telstra Corp. v. Chu,
D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the
lateness of the response is solely in the discretion of the Panelist); see
also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb.
Forum Oct. 17, 2003) (finding that where the respondent submitted a timely
response electronically, but failed to submit a hard copy of the response on
time, "[t]he Panel is of the view that given the technical nature of the
breach and the need to resolve the real dispute between the parties that this
submission should be allowed and given due weight"); see also
University of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding
that the Panel may consider the response which was one day late and received
before Panelist was appointed); see also Strum v. Nordic Net Exch. AB,
FA 102843 (Nat. Arb. Forum Feb. 21, 2002), (finding that declaring a response
inadmissible because of formal deficiencies would be an extreme remedy not
consistent with the basic principles of due process).
Turning to the
substantive issues of the present proceeding, Complainant owns and operates a
leading chauffeured services company. Complainant started its chauffeured
services in 1921 when founder J.P. Carey established the first limousine
company. Complainant has a global service network having started offering its
services internationally in 1977. In
this period of time, Complainant registered its CAREY mark with governments in
25 countries, the earliest of which appears to date from 1978 registered with
the U.S. Patent and Trademark Office ("USPTO") and uses their CAREY
name and mark to identify its goods and services. Complainant also holds numerous registrations of domain names
incorporating the CAREY trademark such as <careyusa.com>,
<careyeurope.com> and <careynewyork.com>. Complainant also claims to own "Manhattan International
Limousine Network Ltd.". This
company was incorporated in New York in 1978 and is the owner of the service
marks MANHATTAN INTERNATIONAL registered June 22, 1999 and September 1, 1999,
for the service of transportation of passengers and goods by limousines and
other vehicles. Complainant also claims to have a common law trademark of
MANHATTAN LIMOUSINE since, during its twenty-seven years of operations, the
general public have come to know the aforementioned enterprise by its
abbreviated form of MANHATTAN LIMOUSINE or MANHATTAN and that enjoys rights
over MANHATTAN and MANHATTAN LIMOUSINE.
Respondent
acquired the disputed domain name <manhattanlimo.com> on April 1,
2002 and registered the other disputed domain names <careyus.com>
on October 5, 2004 and <careyglobal.com> on October 24, 2004. The
disputed domain names offer and advertise limousine services. The websites at <careyus.com>
and <careyglobal.com> (Complaint, Exhibit F) read "Carey Limo
International, providers of quality limousine services to New York since
1975" and "From New York to Los Angeles and Toronto to Amsterdam,
Carey Limo International has been providing best in class limousine services
since 1995. View our wide array of vehicles and rates in our service areas or
contact a Carey Limo International rep today." The website at <manhattanlimo.com>
would appear to be almost identical except the name of Carey Limo International
is substituted for "Manhattan Limousine".
Paragraph 15(a)
of the Rules for Uniform Domain Name Dispute Resolution Policy (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:
(i) the
domain name registered by the Respondent is identical or confusingly similar to
a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or
legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and
is being used in bad faith.
Domain names <careyus.com>
and <careyglobal.com>
Complainant's
numerous registrations for its CAREY mark throughout the world are sufficient
to establish Complainant's rights in the CAREY mark under the Policy 4(a)(i).
See Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar.
5, 2002) (finding that the registration of a mark is prima facie
evidence of validity, which creates a rebuttable presumption that the mark is
inherently distinctive. Respondent has
the burden of refuting this assumption.); see also Am. Online, Inc. v.
Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that
successful trademark registration with the USPTO creates a presumption of rights
in a mark).
Respondent has
failed to challenge Complainant's assertions over its rights in the CAREY mark.
The domain names
<careyus.com> and <careyglobal.com> fully incorporate
Complainant's mark adding the generic or descriptive term "global" to
the <careyglobal.com> domain name, the geographic indicator
"us" to the <careyus.com> domain name and the generic
top-level domain name ".com" to both. These minor alterations to
Complainant's registered mark are insufficient to differentiate Respondent's domain
names pursuant to Policy ¶ 4(a)(i). Moreover Complainant has already registered
the domain names <careyusa.com> and <careyeurope.com> as well as
many others combining geographic or descriptive terms with their trademark. See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also
State Farm Mutual Automobile Insurance Company v. J Lee, FA 436815 (Nat.
Arb. Forum April 21, 2005) (finding that the addition of the geographic term
"usa" to the complainant's STATE FARM mark does not remove the
respondent's <statefarmusa.com> domain name from the realm of confusingly
similar with respect to the complainant's); see also Net2phone Inc. v.
Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the
respondent's registration of the domain name <net2phone-europe.com> is
confusingly similar to the complainant's mark…"the combination of a
geographic term with the mark does not prevent a domain name from being found
confusingly similar"); see also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant's VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word
"India" to the complainant's mark).
Thus the domain
names <careyus.com> and <careyglobal.com> registered
by Respondent are confusingly similar to Complainant's CAREY mark and the Panel
finds that Complainant has satisfied Policy ¶ 4(a)(i) in relation to these
domain names.
Domain name <manhattanlimo.com>
It has been
found that "Manhattan International Limousine Network Ltd.",
incorporated in New York in 1978, owns the service mark MANHATTAN INTERNATIONAL
first registered June 22, 1999. No
evidence has been submitted to support Complainant's contentions of its
ownership of said company nor has this issue been challenged by
Respondent. On the understanding therefore
that Complainant is indeed the owner of the aforementioned company, Complainant
consequently has rights in the service mark MANHATTAN INTERNATIONAL in
accordance with Policy ¶ 4(a)(i).
The domain name <manhattanlimo.com>
is not identical to the aforementioned registered composite service mark.
The analysis
does not end here. It must be considered whether the Domain Name is confusingly
similar to the MANHATTAN INTERNATIONAL mark.
Complainant asserts that consumers are likely to be confused by Respondent's
use of <manhattanlimo.com>.
Respondent argues that the Domain Name is not confusingly similar to
Complainant's mark. The Panel therefore
turns to that question.
The domain name
may not appear at first to be confusingly similar to the Complainant's
registered service mark MANHATTAN INTERNATIONAL but Complainant additionally
contends that they have common law trademark rights in MANHATTAN and MANHATTAN
LIMOUSINE in connection with its limousine and transportation-related services.
Since 1978, in the New York area, Complainant asserts to have "expended
considerable money, time and effort to grow and promote its Manhattan
transportation business…Indeed, Manhattan [International Limousine Network Ltd]
has been awarded the "World Travel Group Award" for the "Best
Chauffeur-Driven Limousine Company in the World." Complainant submitted as
evidence office materials (business card, invoice, order form, etc.) showing
the use of these terms and has shown that they are the holder of the domain
name <manlimo.com> since 1996. Complainant claims that their continuous
use of the terms MANHATTAN LIMOUSINE and MANHATTAN are sufficient to
demonstrate the marks' secondary meaning and thereby establish Complainant's
enforceable rights in these marks.
Indeed, registration
is not the only permissible source of trademark or service mark rights under
the UDRP. To quote once again the much
quoted in UDRP Panel Decisions McCarthy on Trademarks and Unfair Competition, §
25:74.2, Vol. 4 (2000), the ICANN dispute resolution policy is "broad in
scope" in that "the reference to a trademark or service mark 'in
which the complainant has rights' means that ownership of a registered mark is
not required - unregistered or common law trademark or service mark rights will
suffice" to support a domain name complaint under the policy; also see
MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British
Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting
that the UDRP "does not distinguish between registered and unregistered
trademarks and service marks in the context of abusive registration of domain
names" and applying the UDRP to "unregistered trademarks and service
marks"). Panels interpreting the UDRP have consistently held that the
Policy affords protection to those having common law trademark rights as well
as to those having rights in registered trademarks. See Cedar Trade Assocs., Inc., v. Ricks, FA 93633 (Nat.
Arb. Forum Feb. 25, 2000); see also Bennett Coleman & Co. Ltd. v.
Lafwani, D2000-0014 (WIPO Mar. 11, 2000) ("it is this reputation from
actual use which is the nub of the complaint, not the fact of registration as
trade marks.").
Many of the
cases in which common law trademark rights are asserted have involved personal
names that have, through use and publicity, acquired the distinctiveness
necessary to become trademarks or service marks: see Stam v. Cohen,
D2000-1061 (WIPO Nov. 4, 2000); see also MPL Communications Ltd. v. Hammerton,
FA 95633 (Nat. Arb. Forum Oct. 25, 2000); see also Ciccone v. Parisi,
D2000-0847 (WIPO Oct. 12, 2000); see also Estate of Francis v. Magidson Fine
Art, Inc., D2000-0673 (WIPO Sep. 27, 2000); see also Adu v. Quantum
Computer Servs. Inc., D2000-0794 (WIPO Sep. 26, 2000); see also Rattner
v. BuyThisDomainName, D2000-0402 (WIPO July 3, 2000); see also Monty and
Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000); see also
Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000); see also Winterson v.
Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not
require that the complainant have rights in a registered trademark and that it
is sufficient to show common law rights); see also Dustin N. Diamond v.
Goldberg, FA 237446 (Nat. Arb. Forum Apr. 5, 2004); see also Bibbero
Systems, Inc. v. Tseu & Assoc., FA 94416 (finding common law rights in
the mark BIBBERO as the complainant, Bibbero Systems, Inc. had developed brand
name recognition with this term by which the complainant is commonly known).
Just as in the
above cited cases, Complainant may enjoy common law trademark rights in
MANHATTAN if that service name has acquired a "secondary meaning".
Secondary meaning means that although a name (whether a personal name or a
product or service name) or a design is not a registered mark, the public has
come to associate that name or design with a particular person or company or
goods or services. Secondary meaning is defined as "the consuming public's
understanding that the mark, when used in context, refers not to what the
descriptive word ordinarily describes, but to the particular business that the
mark is meant to identify." Secondary meaning therefore refers to the
manner in which a consumer identifies a specific business or a business's
reputation by a particular trademark. By secondary meaning, one is referring to
the capacity of a mark in the relevant consumer marketplace to identify and
distinguish a particular business or source.
Initially, the
Panel accepts Complainant's contentions that MANHATTAN is the dominant portion
of its registered mark MANHATTAN INTERNATIONAL. Furthermore, the Panel accepts
Complainant's contentions that in the relevant consumer marketplace, that is,
the transportation sector, through long and exclusive use, MANHATTAN serves to
identify the source of the services and to distinguish the services of
Complainant and of Complainant's subsidiary company from those of others. It
was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging
Corp., D2002-0383 (WIPO July 17, 2002), "although the phrase may be
descriptive, it is entitled to protection as a mark based on 20 years of use.
As a result of that long use, there is a presumption that the mark has acquired
distinctiveness, and Respondent has presented no evidence to rebut that
presumption". See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum
Mar. 10, 2000) (finding that the complainant has common law rights in the mark
"fishtech" which it has used since 1982).
Respondent
contends that "Manhattan limo" is a combination of a generic
description of services offered by Complainant, Respondent and many other
businesses, together with a geographic designation of where those services are
provided. Although these are common terms, in the context of the transportation
sector and particularly chauffeured services, MANHATTAN is no longer a purely
descriptive term and it is reasonable that an ordinary user would expect to
find Complainant or Complainant's subsidiary company at a website that resolves
from the domain name <manhattanlimo.com>. Moreover the content of
the website that currently resolves from that domain name is not of a nature to
distinguish Respondent's services from those of Complainant's.
Additionally,
with specific regard to "limo," it is well established that the
addition of a generic or descriptive term to an otherwise strong trademark does
not necessarily eliminate or even reduce the risk of confusion between the mark
and domain name at issue. Indeed several previous panels have concluded that a
domain name incorporating both a mark and a term referring to the goods or
services sold under that mark may actually be more confusing than a domain name
incorporating the mark alone. See
Am. Online, No. D2000-1606 ("[t]he addition of a word like
"net," which is a basic term in the IT vocabulary, strengthens the
impression that the domain name is associated with or controlled by ICQ");
see also State Farm Mut. Auto. Ins. Co. v. All Phase Builders, FA 99608
(Nat. Arb. Forum, Oct. 11, 2001) (finding confusing similarity between STATE
FARM and <statefarm-claims.com>); see also Magnum Piering, Inc. v.
Mudjackers, D2000-1525 (WIPO, Jan. 29, 2001) (concluding that the addition
of terms like PIER increased the likelihood of confusion because the
complainant's mark was in the field of piering services); see also Advance
Magazine Publishers Inc. v. Buy This Domain, D2002-0803 (WIPO Nov. 1, 2002)
("if anything, the inclusion of 'mag' may tend to heighten Internet users'
confusion in differentiating between" <vougemag.com> and the VOGUE
mark"); see also Gerber Prod. Co. v. Cybertexx.com, FA 257646 (Nat.
Arb. Forum June 15, 2004) ("The addition of the generic terms 'baby' and
'foods' to Complainant's GERBER mark only increases the likelihood of
confusion, as Complainant is primarily known for its baby food
products.").
The Panel finds
that there would be identification in the minds of the public between the name
MANHATTAN and MANHATTAN LIMOUSINE and the person of Complainant and that the
use by Respondent of the domain name <manhattanlimo.com> is likely
to confuse the public into believing that Carey International or their
subsidiary company Manhattan International Limousine Network, Ltd. is related
to this domain.
For these
reasons, the Panel finds that the Complainant has common law trademark rights
in the marks MANHATTAN and MANHATTAN LIMOUSINE and therefore the domain name <manhattanlimo.com>
registered by Respondent is confusingly similar to these common law trademarks
and to Complainant's registered service mark MANHATTAN INTERNATIONAL. In conclusion, the Panel finds that
Complainant has satisfied Policy ¶ 4(a)(i) in relation to this domain name.
Policy ¶ 4(c)
sets forth the manner in which a Respondent may establish rights to and
legitimate interests in a domain name. It provides that any of the following
circumstances, in particular but without limitation, if found by the Panel to
be proved based on its evaluation of all evidence presented, shall demonstrate
Respondent's rights or legitimate interests to the domain name for purposes of
Policy ¶ 4(a)(ii):
(i) that before
any notice to the Respondent of the dispute, the Respondent's use of, or
demonstrable preparations to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods or services;
or
(ii) that the
Respondent (as an individual, business, or other organization) has been
commonly known by the domain name, even if the Respondent has acquired no
trademark or service mark rights; or
(iii) that the
Respondent is making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark at issue.
Complainant has
made out a prima facie case that Respondent does not have rights or
legitimate interests in respect of the domain names <manhattanlimo.com>,
<careyus.com> and <careyglobal.com>. Where
Complainant rebuts each of these elements, it has satisfied its burden by
providing prima facie evidence against any of the particular claims Respondent
could make under Policy ¶ 4(c)(i)-(iii), thereby shifting the burden to
Respondent. See G.D. Searle v.
Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a
complainant has asserted that the respondent has no rights or legitimate
interests in respect of the domain name it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is "uniquely within the knowledge and control of the
respondent"); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once the complainant asserts that the
respondent has no rights or legitimate interests in respect of the domain, the
burden shifts to the respondent to provide credible evidence that substantiates
its claim of rights and legitimate interests in the domain name).
Respondent does
not attempt to establish that he is making a non-commercial use of the domain
names and thus the circumstances of Policy ¶ 4(c)(iii) do not apply.
In relation to
Policy ¶ 4(c)(ii), Respondent does not allege that he has been commonly known
by the domain names <careyus.com> and <careyglobal.com>
other than those disputed in this section and thus has failed to establish a
right or legitimate interest in these domain names on this ground.
However,
Respondent does allege that he has been commonly known by the domain name <manhattanlimo.com>
since approximately June 1, 2003 and that the domain name has been registered
as a tradename with the State of Washington. Firstly, the tradename
registration is in the name of Alexandler Sandler who is not the Respondent in
this proceeding. Secondly, it is necessary for Respondent to have been commonly
known by <manhattanlimo.com> before the domain name was registered
or acquired in April 2002. It was stated in RMO, Inc. v. Burbridge, FA
96949 (Nat. Arb. Forum May 16, 2001) that "[i]t is clear from the evidence
that Respondent was never known by the domain name prior to his registration of
it but only thereafter. This Panel interprets Paragraph (ii) to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail. Respondent's showing fails to prove
the elements of Paragraph (ii)." See also Compagnie de Saint Gobain v.
Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or
legitimate interests where respondent was not commonly known by the mark and
never applied for a license or permission from complainant to use the
trademarked name); see also Charles Jourdan Holding AG v. AAIM,
D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests
where (1) respondent is not a licensee of complainant; (2) complainant's rights
in the mark precede respondent's registration; (3) respondent is not commonly
known by the domain name in question). For these reasons, the Panel concludes
that Respondent is not commonly known as <manhattanlimo.com> for the
purposes of Policy ¶ 4(c)(ii).
With regard to
whether Respondent has used the domain names or a name corresponding to the
domain names in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i), Respondent merely states that he has used the
disputed domain names to offer limousine services since approximately August
2003 and approximately October 2004 and that this offering of services is bona
fide.
However,
Complainant contends, and Respondent has provided no evidence to rebut, that
Respondent has no commercial or other relationship with Complainant that would
allow Respondent to use Complainant's registered trademark CAREY in connection
with transportation services. Respondent has no license, agreement or franchise
with Complainant.
The Panel
accepts Complainant's contention to the effect that Respondent's appropriation
of the CAREY mark and MANHATTAN marks to market services that compete with
Complainant's does not constitute a bona fide offering of services. As it was
stated in America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 12, 2000),
"it would be unconscionable to find a bona fide offering of services in a
respondent's operation of a website using a domain name which is confusingly
similar to Complainant's mark and for the same business." See also
Pfizer, Inc. v. Internet Gambiano Prods., WIPO Case No. D2002-0325 (finding
that because the VIAGRA mark was clearly well-known at the time of the
respondent's registration of the domain name it can be inferred that the
respondent is attempting to capitalize on the confusion created by the domain
name's similarity to the mark); see also MBS Computers Ltd. v. Workman,
FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when the respondent is using a domain name identical to the
complainant's mark and is offering similar services); see also United States
Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum March 19,
2001) (finding rights and legitimate interests in the disputed domain name
where the respondent had made demonstrable preparations to use the disputed
domain name in connection with a bona fide offering of services and
where the respondent was making a fair legitimate use of the domain name
offering an international service to Internet users with a disclaimer of any
connection to the complainant).
Respondent
therefore has not met the burden that is required of him under this section to
establish rights or legitimate interests in the domain name.
Accordingly, the
Panel finds that Respondent has no rights or legitimate interests in the
disputed domain names; thus, Policy ¶ 4(a)(ii) is satisfied.
Policy ¶ 4(b)
sets forth the circumstances, in particular but without limitation, if found by
the Panel to be present, that shall be evidence of the registration and use of
a domain name in bad faith for purposes of Policy ¶ 4(a)(iii):
(i)
circumstances indicating that the Respondent has registered or acquired the
domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to Complainant who is the owner of
the trademark or service mark or to a competitor of that Complainant, for
valuable consideration in excess of the Respondent's documented out-of-pocket
costs directly related to the domain name; or
(ii) the
Respondent has registered the domain name in order to prevent the owner of the
trademark or service mark from reflecting the mark in a corresponding domain
name, provided that you have engaged in a pattern of such conduct; or
(iii) the
Respondent has registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
(iv) by using
the domain name, the Respondent has intentionally attempted to attract, for
commercial gain, Internet users to your web site or other on-line location, by
creating a likelihood of confusion with Complainant's mark as to the source,
sponsorship, affiliation, or endorsement of your web site or location or of a
product or service on your web site or location.
Moreover, this
list is not an exhaustive representation of bad faith conduct and numerous
other examples of bad faith behavior have been articulated by previous panel
decisions. The Panel may look at the "totality of circumstances" in
determining if Respondent's conduct reaches the threshold of bad faith. See
Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that
the criteria specified in 4(b) of the Policy is not an exhaustive list of bad
faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA
93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain
name has been registered in bad faith, the Panel must look at the
"totality of circumstances").
The CAREY mark
is, as established above, a widely registered trademark. This trademark
registration generally constitutes constructive knowledge of the mark.
Registration of the disputed domain names took place in October 2004, when
CAREY was a long-standing trademark and service name around the world.
Manhattan International Limousine Network Ltd. has been trading since 1978 and
the MANHATTAN INTERNATIONAL service mark was registered in the United States in
1999. Again, when Respondent acquired
or registered the domain name in 2002 in order to provide services similar or
identical to those of Complainant in similar geographical areas, Respondent
knew or should have known of the MANHATTAN marks. See Samsonite Corp. v.
Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that
evidence of bad faith includes actual or constructive knowledge of a commonly
known mark at the time of registration).
Furthermore,
Respondent is a competitor of Complainant, operating in the same sector and
offering similar services; the Panel in Register.com, Inc. v. Wolfgang Reile,
FA 208576 (Nat. Arb. Forum January 27, 2004) determined that "[g]iven that
the parties are direct competitors, it stands to reason that either Respondent
knew of Complainant at the time the former started registering the disputed
domain names or at least should have.
It strains one's belief to think that anyone starting a business or
offering a new service under a specific name (or here through a domain name) --
as Respondent has done -- would not know his primary competitors. Complainant was clearly one such competitor,
particularly a rather large competitor, at the time and for some 3 years
prior." In the case before us, Complainant has been in the same market as
Respondent for some 70 years prior to the registration of the disputed domain
names and is a direct competitor of Respondent.
The Panel finds
that Respondent registered the domain names primarily for the purpose of
disrupting the business of a competitor, which evidences bad faith registration
and use under Policy ¶ 4(b)(iii). See
S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding the respondent acted in bad faith by attracting Internet users to a
website that competed with the complainant's business); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent
diverted business from the complainant to a competitor's website in violation
of Policy 4(b)(iii)).
Additionally,
the Panel finds that Respondent is capitalizing on the confusing similarity of
its domain names to benefit from the valuable goodwill that Complainant has
established in its marks. Consequently,
it is found that Respondent registered and used the domain names in bad faith
under Policy ¶ 4(b)(iv). See G.D.
Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21,
2002) (finding that the respondent registered and used the domain name in bad
faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the
confusingly similar domain name to attract Internet users to its commercial
website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668
(Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent
registered and used an infringing domain name to attract users to a website
sponsored by the respondent).
Consequently,
Respondent's conduct constitutes bad faith use under Policy ¶ 4(a)(iii).
That said, the
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Respondent
requested the Panel to find that Complainant has engaged in reverse domain name
hijacking. See UDRP Rule 1. "Reverse Domain Name Hijacking means using
the Policy in bad faith to attempt to deprive a registered domain-name holder
of a domain name." To establish
reverse domain name hijacking, Respondent must show knowledge on the part of
Complainant of Respondent's rights or legitimate interests in the disputed
domain name and evidence of harassment or similar conduct by Complainant in the
face of such knowledge. See Koninklijke KPN N.V. v. Telepathy Inc.,
D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse
domain name hijacking, the respondent must show that the complainant brought
the claim in bad faith despite the knowledge that the respondent has an
unassailable right or legitimate interest in the disputed domain name, or that
the respondent lacks the requisite bad faith registration and use of the
disputed domain name). In view of the decision reached in relation to the
Complaint, the Panel concludes that Complainant has not engaged in reverse
domain name hijacking.
Having
established all three elements required under the ICANN Policy in relation to <manhattanlimo.com>,
<careyglobal.com> and <careyus.com> domain names, the
Panel concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <manhattanlimo.com>, <careyglobal.com> and
<careyus.com> domain names be TRANSFERRED from Respondent to
Complainant.
Calvin A. Hamilton, Panelist
Dated: July 29, 2005
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