Freightliner LLC v. Bunie.com
Claim
Number: FA0508000528542
Complainant is Freightliner LLC (“Complainant”), represented
by Chanley T. Howell, One Independent Drive, Suite 1300,
Jacksonville, FL 32202-5017. Respondent
is Bunie.com (“Respondent”), 374
East H Street, Suite A, PMB #414, Chula Vista CA 91910.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <frieghtliner.com>, registered with Bulkregister,
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.
Houston
Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
1, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 4, 2005.
On
August 4, 2005, Bulkregister, Llc. confirmed by e-mail to the National
Arbitration Forum that the <frieghtliner.com> domain name is
registered with Bulkregister, Llc. and that Respondent is the current
registrant of the name. Bulkregister,
Llc. has verified that Respondent is bound by the Bulkregister, Llc. 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
August 11, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 31, 2005 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@frieghtliner.com by e-mail.
Having
received no response from Respondent, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
September 6, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration Forum appointed
Houston Putnam Lowry, Chartered Arbitrator, 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." 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <frieghtliner.com>
domain name is confusingly similar to Complainant’s FREIGHTLINER mark.
2. Respondent does not have any rights or
legitimate interests in the <frieghtliner.com> domain name.
3. Respondent registered and used the <frieghtliner.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Freightliner LLC, is a Delaware LLC, and is the leading North American truck
and specialty vehicle manufacturer.
Complainant has used the FREIGHTLINER mark continuously in commerce
since 1942.
Complainant owns
several trademark registrations for the FREIGHTLINER mark with the United
States Patent and Trademark Office (“USPTO”) (E.g. Reg. No. 1,165,403;
Reg. No. 2,059,949; Reg. No. 1,073,332; and Reg. No. 1,485,203).
Respondent
registered the <frieghtliner.com> domain name on January 31, 2001. Respondent’s domain name
resolves to a website featuring a search engine. The Panel infers that Respondent receives
referral fees from its search engine.
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."
In view of
Respondent's failure to submit a response, the Panel shall decide this
administrative proceeding on the basis of Complainant's undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules. The Panel is entitled to
accept all reasonable allegations and inferences set forth in the Complaint as
true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing,
inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the
respondent’s failure to respond allows all reasonable inferences of fact in the
allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009
(WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to
accept as true all allegations of the Complaint.”).
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.
Complainant has
established rights in the FREIGHTLINER mark through various registrations with
the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat.
Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.”);
see also Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the
NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”).
Respondent does
not controvert Respondent’s <frieghtliner.com> domain name is
confusingly similar to Complainant’s FREIGHTLINER mark. The domain name merely slightly misspells
Complainant’s mark. The Panel may (and
does) find that such a change is not enough to overcome the confusingly similar
aspects of Respondent’s domain name pursuant to Policy ¶ 4(a)(i). See Guinness UDV N. Am., Inc. v.
Dallas Internet Servs., D2001-1055 (WIPO
Dec. 12, 2001) (finding the <smirnof.com> domain name confusingly similar
to the complainant’s SMIRNOFF mark because merely removing the letter “f” from
the mark was insignificant); see
also Marriott Int'l, Inc.
v. Seocho, FA 149187 (Nat. Arb. Forum Apr.
28, 2003) (finding that the respondent's <marrriott.com> domain
name was confusingly similar to the complainant's MARRIOTT mark).
The addition of
the top-level domain “.com” is irrelevant in determining whether the <frieghtliner.com> domain name is
confusingly similar to Complainant’s mark.
See Blue Sky Software Corp. v.
Digital Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the
domain name <robohelp.com> is identical to the complainant’s registered
ROBOHELP trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body,
Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that
"the addition of the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants").
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
neither has rights or legitimate interests in the <frieghtliner.com> domain name, nor claims to have them. When a complainant establishes a prima facie case pursuant to Policy ¶
4(a)(ii), the burden shifts to the respondent to prove that it has rights or
legitimate interests. Due to
Respondent’s failure to respond to the Complaint, the Panel infers that
Respondent does not have rights or legitimate interests in the disputed domain
name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (finding that once the complainant asserts that the respondent does not have
rights or legitimate interests with respect to the domain, the burden shifts to
the respondent to provide credible evidence that substantiates its claim of
rights or legitimate interests in the domain name); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com,
D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the
mere assertion by the complainant that the respondent does not have rights or
legitimate interests is sufficient to shift the burden of proof to the respondent
to demonstrate that such rights or legitimate interests do exist); see also Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the
respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name).
It is
uncontroverted Respondent is not commonly known by the <frieghtliner.com> domain name. Thus, the Panel may (and does) conclude that Respondent has not
established rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate
interest where the respondent was not commonly known by the mark and never
applied for a license or permission from the complainant to use the trademarked
name); see also Broadcom Corp. v.
Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no
rights or legitimate interests because the respondent is not commonly known by
the disputed domain name or using the domain name in connection with a
legitimate or fair use); see also
Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug.
29, 2000) (finding that the respondent has no rights or legitimate interests in
domain names because it is not commonly known by the complainant’s marks and
the respondent has not used the domain names in connection with a bona fide offering of goods and services
or for a legitimate noncommercial or fair use).
Respondent is
using the <frieghtliner.com> domain
name to operate a website featuring a search engine. The Panel finds that Respondent’s use of a domain name that is
confusingly similar to Complainant’s mark to divert Internet users to a search
engine presumably for Respondent’s own commercial gain does not constitute 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). See TM Acquisition Corp. v. Sign Guards,
FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that respondent’s
diversionary use of complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to competitors of
complainant, was not a bona fide
offering of goods or services); see also
Yahoo! Inc. v. Web Master, FA 127717
(Nat. Arb. Forum Nov. 27, 2002) (finding that the respondent’s use of a
confusingly similar domain name to operate a pay-per-click search engine, in
competition with the complainant, was not a bona
fide offering of goods or services); see
also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114
(D. Mass. 2002) (finding that, because the respondent's sole purpose in
selecting the domain names was to cause confusion with the complainant's
website and marks, its use of the names was not in connection with the offering
of goods or services or any other fair use).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
In the absence
of evidence to the contrary, the Panel infers Respondent receives click-through
fees for diverting Internet users to its commercial website (which is the
standard practice within the industry).
Respondent registered and used the disputed domain name in bad faith
under Policy ¶ 4(b)(iv), as Respondent is using the <frieghtliner.com> domain name to intentionally attract, for commercial gain,
Internet users to its website, by creating a likelihood of confusion with
Complainant as to the source, sponsorship, affiliation or endorsement of its
website. See H-D Michigan, Inc. v. Petersons Auto, FA 135608 (Nat. Arb.
Forum Jan. 8, 2003) (finding that the disputed domain name was registered and
used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s
registration and use of the infringing domain name to intentionally attempt to
attract Internet users to its fraudulent website by using the complainant’s
famous marks and likeness); see also 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).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <frieghtliner.com> domain name be TRANSFERRED
from Respondent to Complainant.
Houston Putnam Lowry, Chartered
Arbitrator, Panelist
Dated: September 20, 2005
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