Carey International, Inc. v. Traverito Traverito
Claim Number: FA0705000994123
Complainant is Carey International, Inc. (“Complainant”), represented by Sara
L. Edelman, of Davis & Gilbert LLP, 1740 Broadway,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <careylimousine.com>, registered with Moniker Online Services, Inc.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 30, 2007; the National Arbitration Forum received a hard copy of the Complaint on May 31, 2007.
On June 4, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <careylimousine.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, 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 June 7, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 27, 2007 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@careylimousine.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 2, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <careylimousine.com> domain name is confusingly similar to Complainant’s CAREY mark.
2. Respondent does not have any rights or legitimate interests in the <careylimousine.com> domain name.
3. Respondent registered and used the <careylimousine.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Carey International, Inc., holds several trademark registrations with the United
States Patent and Trademark Office (“USPTO”) for the CAREY mark (e.g., Reg. No.
1,107,533 issued November 28, 1978 and Reg. No. 1,375,117 issued December 10,
1985). Complainant also holds trademark
registrations for the CAREY mark in over 25 other countries. Complainant has used the CAREY mark in
connection with the sale of its limousine transportation services since
1921. Complainant offers
chauffeur-driven transportation services in over 75 countries and at least 460
cities worldwide, all under the CAREY mark.
Complainant has registered the <careylimousines.com> domain name
which it uses in connection with the international sale of its limousine
services.
Respondent registered the <careylimousine.com> domain name on June 25, 1998. Respondent is using the disputed domain name as a portal website to redirect Internet users to Respondent’s website displaying links to third-party websites, some of which directly compete with Complainant’s services under the CAREY mark. Respondent receives click-through fees for each link clicked on and Respondent also receives commissions on any product sold.
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 CAREY mark under
Policy ¶ 4(a)(i) through registration of the mark 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’s <careylimousine.com> domain name is
confusingly similar to Complainant’s mark because it uses Complainant’s CAREY
mark in its entirety and adds the descriptive word “limousine” and the generic
top-level domain (“gTLD”) “.com” to the mark.
Complainant contends that the word “limousine” describes their business,
which focuses primarily on the sale of limousine services. Additionally, Complainant contends that the <careylimousine.com> domain name is
also confusingly similar because it is nearly identical to Complainant’s own
<careylimousines.com> domain name, merely omitting the “s” from the
domain name. The Panel finds that
Respondent’s use of a domain name that uses Complainant’s mark in its entirety
and adds a word describing Complainant’s business does not negate the
confusingly similar aspects of Respondent’s domain name from the mark pursuant
to Policy ¶ 4(a)(i).
See Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to the complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which the complainant is engaged, does not take the
disputed domain name out of the realm of confusing similarity); see also
Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
Finally, the Panel finds that the addition of a gTLD does not sufficiently alter a mark to avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights or legitimate interests in the <careylimousine.com> domain name. In this case, Complainant’s assertion establishes a prima facie case, which shifts the burden to Respondent to prove that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel assumes that Respondent does not have rights or legitimate interests here because Respondent did not respond to the Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name”). However, the Panel will consider all available evidence before determining whether Respondent has rights or legitimate interests in the <careylimousine.com> domain name under Policy ¶ 4(c).
Complainant contends that Respondent is using the <careylimousine.com> domain name as a portal website to display links to competing third-party websites. The Panel finds that Respondent’s use of the website to display links to websites in direct competition with Complainant to earn click-through fees and commissions is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that Respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Additionally, Respondent offers no evidence and there is no
evidence present in the record to indicate that Respondent is commonly known by
the <careylimousine.com>
domain name. Respondent’s WHOIS
information identifies Respondent as “Traverito
Traverito.” Therefore, the Panel finds
from the evidence available that Respondent is not commonly known by the <careylimousine.com>
domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does
not have rights in a domain name when the respondent is not known by the mark);
see also Wells Fargo & Co. v. Onlyne Corp.
Services11, Inc., FA 198969 (Nat. Arb.
Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed
domain [name], one can infer that Respondent, Onlyne Corporate Services11, is
not commonly known by the name ‘welsfargo’ in any derivation.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <careylimousine.com> domain name to redirect Internet users to Respondent’s portal website displaying links to third-party websites offering services in direct competition with Complainant’s services under the CAREY mark. The Panel finds that such use by Respondent constitutes disruption of Complainant’s business, which is evidence of bad faith registration and use under Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent is using the <careylimousine.com>
domain name to redirect Internet users to Respondent’s portal website displaying
links to websites offering services that compete with Complainant’s services
under the CAREY mark for the assumed profit of Respondent. The Panel finds that because Respondent’s
domain name is confusingly similar to Complainant’s mark, and even more confusing
given its close similarity to Complainant’s <careylimousines.com> domain
name, Internet users may become confused as to Complainant’s affiliation with
the <careylimousine.com>
domain name. Presumably, Respondent is
profiting from this confusion through click-through fees and commissions off of
any products sold through the disputed domain name. The Panel finds that such use constitutes bad
faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website
is <century21.com>, many Internet users are likely to use search engines
to find Complainant’s website, only to be mislead to Respondent’s website at
the <century21realty.biz> domain name, which features links for competing
real estate websites. Therefore, it is
likely that Internet users seeking Complainant’s website, but who end up at
Respondent’s website, will be confused as to the source, sponsorship,
affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's
prior use of the <mailonsunday.com> domain name is evidence of bad faith
pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to
Complainant's competitors and Respondent presumably commercially benefited from
the misleading domain name by receiving ‘click-through-fees.’”).
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 <careylimousine.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 16, 2007
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