Kenneth L. Underwood and Virginia R. Underwood v. NYEC
Claim Number: FA0605000708981
Complainants are Kenneth L. Underwood and Virginia R. Underwood (collectively “Complainant”), represented by Stephen Jeffries of Holland & Knight LLP, 2099 Pennsylvania Ave., NW Suite 100, Washington, DC, 20006-6801. Respondent is NYEC (“Respondent”), 2418 Box, Marblehead, CT, 06777.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <safedriver.com>, registered with Tucows Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 18, 2006; the National Arbitration Forum received a hard copy of the Complaint May 22, 2006.
On May 23, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <safedriver.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 24, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 13, 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@safedriver.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <safedriver.com>, is identical to Complainant’s SAFEDRIVER.COM mark.
2. Respondent has no rights to or legitimate interests in the <safedriver.com> domain name.
3. Respondent registered and used the <safedriver.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Kenneth L. Underwood and Complainant Virginia R. Underwood (collectively “Complainant”) formed 1-888 Traffic School, Inc., March 25, 1994. These two Complainants will be collectively referred to as Complainant. Complainant rendered driver education services in the State of Florida through that corporation. Complainant owned all of the issued and outstanding stock in the corporation. In 1999, 1-888-Traffic School, Inc., operated approximately 150 locations in the State of Florida and served some 100,000 students.
On February 8, 1999 Complainant registered the <safedriver.com> domain name and on or about June, 1999 Complainant began to use the mark SAFEDRIVER.COM in conjunction with the driver education services provided by 1-888-Traffic School, Inc. Complainant invested both time and money into the SAFEDRIVER.COM mark, using it in a variety of advertising materials including bumper stickers and print advertisements distributed throughout the State of Florida.
On December 14, 1999, Complainant sold all of the issued and outstanding stock in 1-888-Traffic School, Inc. to Top Driver 1-888-Traffic School, Inc., a subsidiary of Top Driver, Inc. As part of this transaction, Top Driver 1-888-Traffic School, Inc. acquired ownership of the SAFEDRIVER.COM mark and of the <safedriver.com> domain name.
From the date of the sale until May 12, 2001, Complainant remained involved in the operations of 1-888-Traffic School, Inc. and the SAFEDRIVER.COM mark and <safedriver.com> domain name remained in continuous and extensive use. On May 12, 2001, Complainant requested to be relieved of its duties with regard to the operations of 1-888-Traffic School, Inc. Following Complainant’s departure Top Driver, Inc. and Top Driver 1-888-Traffic School, Inc. discontinued operations within the State of Florida.
On or about April 2, 2003 Top Driver 1-888-Traffic School, Inc. assigned, in writing, ownership of the SAFEDRIVER.COM service mark and the <safedriver.com> domain name to Complainant in settlement of a commercial debt, with the understanding that Complainant would resume use of the mark SAEFDRIVER.COM in connection with driver education services in the State of Florida. At the time of assignment, Complainant was advised by Top Driver 1-888-Traffic School, Inc. that the <safedriver.com> domain name and other company domain names had been the subject of employee theft, making it impossible to transfer the registration of the <safedriver.com> domain name to Complainant. Due to the interconnectedness of the SAFEDRIVER.COM mark with the <safedriver.com> domain name Complainant suspended efforts to resume use of its mark pending the resolution of this domain name dispute.
Respondent was employed by Top Driver, Inc., the parent company of Top Driver 1-888-Traffic School, Inc., from February 25, 2001, through July 10, 2002. Respondent’s responsibilities as Executive Vice President - Technology included maintaining the company’s websites. While employed by Top Driver, Inc., Respondent modified the <safedriver.com> domain name registration to make itself the administrative contact for the domain name. Without consent or knowledge of Top Driver, Inc., Respondent then used its position as administrative contact to modify the domain name registration, making NYEC the domain name registrant. Since Respondent is NYEC, Respondent effectively made itself the domain name registrant.
Respondent transferred the registration of the <safedriver.com> domain name while employed by Top Driver, Inc., but the exact date of the transfer is unknown to Complainant. Respondent is not now using, nor has it ever used, the <safedriver.com> domain name. As of May 10, 2006 the domain name did not resolve to an active website.
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 will draw such inferences as the Panel 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 Complainant to 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 is not required to hold a registered trademark
or service mark in SAFEDRIVER.COM to establish rights pursuant to Policy ¶
4(a)(i). See Great Plains Metromall, LLC v. Creach,
FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a
trademark be registered by a governmental authority for such rights to
exist.”); see also British Broad. Corp. v. Renteria, D2000-0050 (WIPO
Mar. 23, 2000) (noting that the Policy “does not distinguish between registered
and unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also McCarthy on Trademarks and Unfair
Competition, § 25:74.2 (4th ed. 2002) (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).
Pursuant to Policy ¶ 4(a)(i), while complainant is required to demonstrate rights in a mark to pursue a UDRP claim, Complainant is not required to demonstrate exclusive rights in the mark. See Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000) (holding that ICANN Policy ¶ 4(a)(i) does not require the complainant to demonstrate ‘exclusive rights,’ but only that the complainant has a bona fide basis for making the complaint in the first place); see also Action Sports Videos v. Reynolds, D2001-1239 (WIPO Dec. 13, 2001) (holding that, although the complainant's registration on the Supplemental Register denotes a descriptive mark without secondary meaning, the complainant nevertheless had standing to initiate a UDRP claim because the Policy at paragraph 4a(i) requires only that the complainant have (mark) "rights" in the disputed domain name, strong or weak though they be).
Complainant has common law rights to the SAFEDRIVER.COM mark established through use sufficient to create secondary meaning in the mark. In particular, Complainant’s prominent use of the mark in advertising, including bumper stickers, print advertising and an insert in the 2000-2001 Florida Driver’s Handbook created the necessary secondary meaning. Additionally, Complainant’s prior possession of the <safedriver.com> domain name, which is identical to the SAFEDRIVER.COM mark, is evidence that Complainant enjoys common law rights in the mark pursuant to Policy ¶ 4(a)(i). See S.A. Bendheim Co., Inc. v. Hollander Glass, FA 142318 (Nat. Arb. Forum Mar. 13, 2003) (holding that the complainant established rights in the descriptive RESTORATION GLASS mark through proof of secondary meaning associated with the mark); see also Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (“[T]he fact that Complainant previously held registrations for the [disputed] domain names attests to the fact that it has rights in its marks.”); see also Marty Taylor Homes, Inc. v. JNPR Mgmt., FA 366170 (Nat. Arb. Forum Jan. 5, 2005) (finding that the complainant’s prior use of the disputed domain name, which was identical to the asserted trademark, was evidence of its rights in the mark).
The disputed domain name, <safedriver.com>, is
identical to Complainant’s SAFEDRIVER.COM mark in all respects and the Panel
finds that the disputed domain name is identical to Complainant’s mark pursuant
to Policy ¶ 4(a)(i). See Shirmax
Retail Ltd./Detaillants Shirmax Ltee v. CES Mktg Group Inc., AF-0104 (eRes.
Mar. 20, 2000) (refusing to interpret Policy ¶ 4(a)(i) in the conjunctive
rather than disjunctive sense in holding that “mere identically of a domain
name with a registered trademark is sufficient to meet the first element [of
the Policy], even if there is no likelihood of confusion whatsoever”); see
also Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000)
(stating that the panel should resolve whether a mark is identical or
confusingly similar “by comparing the trademark and the disputed domain name,
without regard to the circumstances under which either may be used”).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic proof in this
proceeding that it has rights to the <safedriver.com> mark
contained in its entirety in the disputed domain name. Complainant alleges that Respondent lacks rights
or legitimate interests in the <safedriver.com> domain name. Complainant’s allegation creates a prima
facie case, shifting the burden to the Respondent to prove that it does
have rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). The Panel interprets
Respondent’s failure to respond as evidence that Respondent does not have
rights or legitimate interests in the disputed domain name. However, despite Respondent’s failure to
respond, the Panel evaluates available evidence to determine whether or not
Respondent has rights or legitimate interests in the disputed domain name
pursuant to Policy ¶ 4(c). See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Bank of Am. Corp.
v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) (“Respondent's failure to respond not only results in its failure to
meet its burden, but also will be viewed as evidence itself that Respondent lacks
rights and legitimate interests in the disputed domain name.”).
Respondent is not making any use of the <safedriver.com>
domain name. The domain name does
not resolve to a website and there is no available evidence that Respondent is
preparing to use the domain name. The
Panel finds that passive holding of the disputed domain name does not
constitute a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain
name pursuant to Policy ¶ 4(c)(iii). See
Pharmacia & Upjohn AB v. Romero,
D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests
where the respondent failed to submit a response to the complaint and had made
no use of the domain name in question); see also Am.
Online, Inc. v. Kloszewski, FA 204148
(Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the
<aolfact.com> domain name for over six months is evidence that Respondent
lacks rights and legitimate interests in the domain name.”); see also TMP
Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003)
(“[T]he Panel concludes that Respondent's passive holding of the domain name
does not establish rights or legitimate interests pursuant to Policy ¶
4(a)(ii).”).
Furthermore, no evidence suggests that Respondent is commonly known by the <safedriver.com> domain name either as an individual or as a business. Complainant asserts that Respondent modified the registration of the disputed domain name without the prior knowledge or consent of Complainant or Top Driver, Inc., and that Respondent is no longer employed by, or affiliated with, Complainant or Top Driver, Inc. In addition, Respondent’s WHOIS information identifies it as “NYEC” with “Jeff Schaengold” as the administrative contact, neither of which bear any relationship or resemblance to <safedriver.com>. Respondent offered no proof and no evidence in the record suggests that Respondent is known by the disputed domain name or that Respondent acquired rights to or interests in the disputed domain name. The Panel finds that Respondent failed to establish 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 Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant satisfied Policy ¶
4(a)(ii).
Policy ¶ 4(b) contains four circumstances that support findings of bad faith registration and use. However, the Panel looks to the circumstances in their entirety and is not limited to the four listed factors in finding bad faith registrations and use. See Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010 (WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within the ‘particular’ circumstances set out in [¶ 4(b)], does not mean that the domain names at issue were not registered in and are not being used in bad faith.”); see also CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”).
Respondent is not using the <safedriver.com> domain
name to link to any website. The Panel
finds that such non-use constitutes a passive holding and is evidence of bad
faith registration and use pursuant to Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000)
(finding that the respondent made no use of the domain name or website that
connects with the domain name, and that passive holding of a domain name
permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely
holding an infringing domain name without active use can constitute use in bad
faith).
Complainant alleges that Respondent acquired the <safedriver.com> domain name while employed by Top Driver, Inc. The Panel finds that when former employees take advantage of their position as employees to register marks owned by their employer, this is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Arab Bank for Inv. & Foreign Trade v. Akkou, D2000-1399 (WIPO Dec. 19, 2000) (finding bad faith registration and use where the respondent was formerly employed by the complainant, was fully aware of the name of her employer, and made no use of the infringing domain name).
Further, because Respondent was an employee of Top Driver,
Inc. whose duties included maintaining the company’s websites, including the
website linked to from the <safedriver.com>
domain name, Responded knew, or should have known, that Top Driver, Inc. had
rights in the mark, which were legitimately transferable to Complainant. The Panel finds that registration of a
domain name containing another’s mark, with actual or constructive knowledge
that another entity has rights to or legitimate interests in the mark is
evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). 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); see also
Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here
is a legal presumption of bad faith, when Respondent reasonably should have
been aware of Complainant’s trademarks, actually or constructively.”).
The Panel finds that
Complainant satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <safedriver.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 29, 2006
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