Velv, LLC v. AAE
Claim Number: FA0604000677922
PARTIES
Complainant is Velv, LLC (“Complainant”), represented by Susan Daly Stearns, of Greenberg Traurig, LLP, 2375 E. Camelback Road, Phoenix, AZ 90404. Respondent is AAE (“Respondent”), 11701 N. Case Grande Hwy, Box 511, Rillito, AZ 85654-0511.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name at issue is <arizonashuttle.net>, registered with Go Daddy Software, Inc.
PANEL
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.
Dennis A. Foster as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the “NAF”) electronically on April 12, 2006; the NAF received a hard copy of the Complaint on April 14, 2006.
On April 13, 2006, Go Daddy Software, Inc. confirmed by e-mail to the NAF that the <arizonashuttle.net> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. 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 April 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 8, 2006 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@arizonashuttle.net by e-mail.
A timely Response was received and determined to be complete on May 8, 2006.
A Supplemental Complaint, complying with the requirements of Supplemental Rule 7, was received on May 15, 2006. The Panel has taken into account the Complainant’s supplemental filing in reaching its Decision.
On
May 11, 2006, pursuant to Complainant’s request to have the dispute decided by
a single-member Panel, the NAF
appointed Dennis A. Foster as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
- In 2004, Complainant purchased a shuttle business from Skyway Group, Inc. a business which had made continuous use of the trade name ARIZONA SHUTTLE since 1994. That business involves primarily the ground transportation of passengers between the airports of Tucson and Phoenix, Arizona, although certain other passenger and delivery services are offered within and between those cities.
- Complainant owns a state of Arizona trademark registration—with device—for ARIZONA SHUTTLE, Registration No. 41,019 dated November 24, 1994 (Complaint Annex A).
- Generating approximately $2.6 million in annual revenues, Complainant’s business has operated successfully within the state of Arizona, causing considerable goodwill to be attached to its trademark.
- About one third of the Arizona Shuttle’s revenues come from out-of-state patrons.
- Complainant registered the domain name <arizonashuttle.com> in June 1997. Complainant’s business derives approximately 25% of its bookings on-line from this domain name.
- Respondent started a passenger transportation company in January 2005 that offers services primarily between the cities of Tucson and Phoenix, Arizona.
- Respondent operates under the name “Arizona Airport Express,” which it registered as a trade name with the state of Arizona in August 2005. Also in August 2005, Respondent registered the disputed domain name, <arizonashuttle.net>.
- The disputed domain name is confusingly similar to Complainant’s trademark, and is used by Respondent to confuse and mislead consumers as to who operates the web site found at that address.
- Respondent has no rights or legitimate interests in the disputed domain name, which simply redirects users to Respondent’s other domain names.
- Complainant has not licensed or permitted Respondent to use the disputed domain name, and its use by Respondent to trade off the goodwill created by Complainant in the underlying trademark is not fair.
- Respondent certainly knew of Complainant’s mark and the goodwill associated with it. Thus, Respondent’s use of the disputed domain name to disrupt Complainant’s business by diverting customers from Complainant’s services constitutes a bad faith use of that name.
B. Respondent
- Respondent operates a shuttle service in Arizona.
- Respondent legally registered in good faith the disputed domain name and, on the home page associated with that name, any affiliation with Complainant is disavowed.
- Respondent has legitimately spent money on promotion with respect to the disputed domain name, and will relinquish it to Complainant only upon reimbursement for such costs and loss of reasonable potential income.
C. Complainant’s Supplemental Contentions
- Respondent’s use of the domain name <arizonashuttle.net> causes actual confusion with Complainant’s business by luring potential customers to its web site when they are looking for the Complainant’s web site.
- Respondent’s actual business web site is linked to the URL <tusconairportshuttle.com> and the use of the <arizonashuttle.net> URL is simply to divert traffic to its own website.
- This diversionary use of Complainant’s mark does not constitute a bona fide use or fair use of the domain name. See Bank of America Corporation v. P., FA 131213 (Nat. Arb. Forum Jan. 6, 2003) (citing MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO, Dec. 8, 2000).
- Respondent’s registration of the domain name <arizonashuttle.net> after Complainant’s ARIZONA SHUTTLE mark had become well known in the geographic area of use is considered an act of bad faith.
- Since the parties are competitors, it is evident that Respondent only registered the URL at issue to lure Complainant’s customers to Respondent’s website. See Indiana Mulch and Stone, LLC v. Keith’s Farm Mark, FA 93676 (Nat. Arb. Forum Mar. 15, 2000).
FINDINGS
- Complainant owns a regional ground transportation business that primarily shuttles passengers between the airports in Tucson and Phoenix, Arizona. It conducts this business under the Arizona state registered trademark ARIZONA SHUTTLE (Arizona State trade mark Registration No. 158,424 registered May 13, 1996). There is a device or drawing included in this trademark: two saguaro cacti represent the two "t’s" in the word “shuttle.” Complainant receives a significant portion of its business from out-of-state sources. Complainant has owned the domain name registration for <arizonashuttle.com> since June 1997.
- Respondent operates a similar business in Arizona using the name “Arizona Airport Express.” Respondent is listed as the registrant of the disputed domain name and the record of registration was created in August 2005. Respondent uses the disputed domain to connect to other domain names.
DISCUSSION
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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
Complainant has exhibited a copy of its state of Arizona ARIZONA SHUTTLE trademark Registration No. 41,019 dated November 24, 1994 (Complaint Annex A). This is a device mark with two saguaro cacti representing the two "t’s" in the word “shuttle.” Complainant has also shown use going back to the mid 1990’s. The Panel finds that Complainant does have trademark rights in the name ARIZONA SHUTTLE, mainly on the strength of its transportation services of that name stretching back a decade and more. The Panel is cognizant that the Complainant’s ARIZONA SHUTTLE trademark is geographic and descriptive, and contains a graphic device which cannot be transposed into an alphanumeric domain name. Nonetheless, the Panel finds Complainant’s decade and longer use of the name ARIZONA SHUTTLE in its business outweighs these legitimate objections.
The disputed domain name, <arizonashuttle.net>, is virtually identical to Complainant’s mark; panels operating under the Policy having long since decided that the addition of a generic top-level domain (i.e., “net”) does not reduce the similarity between domain names and trademarks. See National Spiritual Assembly of the Bahá’is of the United States v. Second International Bahá’i Council, D2005-0214 (WIPO May 8, 2005); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001)
As a result, Complainant has sustained the burden of demonstrating that, pursuant to Paragraph 4(a)(i) of the Policy, the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights.
As is now well established, Complainant’s assertion that Respondent has no rights or legitimate interests in the disputed domain name is sufficient to shift the burden of proof to Respondent under Paragraph 4(a)(ii) of the Policy.
The Panel observes that Respondent is not actually using the disputed domain name, <arizonashuttle.net>, to offer goods and services. Instead, Respondent is using the domain name to connect to other domain names, among which <tusconairportshuttle.com>, where Respondent does offer goods and services. The Panel finds Respondent’s bona fides to be problematic.
The Panel asks itself, “why would the Respondent choose the exact name of a long since established competitor and connect it to other websites where Respondent uses its own names—such as ‘Arizona Airport Express’—to offer its shuttle services centered on the Phoenix and Tucson airports?” The answer is as obvious as it is damaging to Respondent’s case: Respondent believes that its own names or trademarks of recent vintage, viz. 2005, would be insufficient to attract the number of customers Respondent hopes to acquire. But the Complainant’s trademark contained in the disputed domain name, <arizonashuttle.net>, provides the allure Respondent believes is missing from its own names.
This betrays Respondent’s certain knowledge that it was not making a bona fide use of the disputed domain name before it learned of this dispute. The Panel finds that Complainant has carried its burden of proof under paragraph 4(a)(ii) of the Policy to show that Respondent has no rights or legitimate interests in the disputed domain name.
As can already be surmised from the discussion on Rights and Legitimate Interests, the Panel finds the Respondent has violated the bad faith provisions of the Policy at Paragraph 4(b)(iv). That is to say, Respondent is using Complainant’s trademark contained in the disputed domain name, <arizonashuttle.net>, to attract Internet traffic to Respondent’s web sites that use Respondent’s own names and trademarks for commercial gain. As Complainant contends, the Panel finds Respondent’s bad faith is all the more egregious because the Complainant and Respondent are direct competitors in the state of Arizona market and in Arizona’s two largest cities, Phoenix and Tucson, in particular. See Indiana Mulch and Stone, LLC v. J. Keith’s Farm Market, FA 93676 (Nat. Arb. Forum Mar. 16, 2000).
The Panel finds that Complainant has carried its burden of proof under paragraph 4(a)(iii) of the Policy to show that Respondent registered and is using the disputed domain name in bad faith.
DECISION
For all the foregoing reasons, the Panel decides that Complainant’s request for transfer of the disputed domain name shall be GRANTED.
___________________________________________________
DDennis A. Foster,
Panelist
Dated: May 25, 2006
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