DECISION

 

U-Haul International, Inc. v Harold R. Brown II a/k/a Ted Waitt a/k/a Harold Brown III

Claim Number: FA0108000099482

 

PARTIES

Complainant is U-Haul International, Inc., Phoenix, AZ (“Complainant”) represented by Rod S. Berman, of Jeffer, Mangels, Butler & Marmaro LLP.  Respondent is Harold R. Brown II a/k/a Ted Waitt a/k/a Harold Brown III, Hermosa Beach, CA (“Respondent”).

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org>, registered with Network Solutions, Inc

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 23, 2001; the Forum received a hard copy of the Complaint on August 27, 2001.

 

On August 27, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org> are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 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 28, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 17, 2001 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@urn2uhaul.com, postmaster@urn2uhaul.net, and postmaster@urn2uhaul.org by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

 

On October 1, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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 Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from the Respondent to the Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

[a.]       The disputed domain names registered by the Respondent are confusingly similar to the trademark owned by the Complainant.

 

[b.]       The Respondent has never had, at anytime, a right over the names he registered.

 

[c.]       The domain names were registered and are being used in bad faith.

 

B. Respondent

No response was received.

 

FINDINGS

Complainant has federal and common law trademark rights in the following name: "U-HAUL".  Complainant owns the following federally registered trademarks: (1) U-HAUL, U.S. Reg. No. 746,034 dated February 26, 1963; (2) U-HAUL, U.S. Reg. No. 795,733 dated September 7, 1965; (3)  U-HAUL, U.S. Reg. No. 893,891 dated June 30, 1970;  (4) U-HAUL’S HOUSEHOLD MOVING and Design, U.S. Reg. No. 1,023,924 dated October 28, 1975; (5) RENT IT ALL AT U-HAUL, U.S. Reg. No. 1,432,341 dated March 10, 1987; (6) U-HAUL and Design, U.S. Reg. No. 1,023,923 dated October 28, 1975; (7) U-HAUL HAS IT ALL, U.S. Reg. No. 1,609,332, dated August 7, 1990; (8) 1-800-GO-U-HAUL, U.S. Reg. No. 1,965,385, dated April 2, 1996; (9) U-MOVE U-STORE U-HAUL RENTALS and Design, U.S. Reg. No. 1,127,296, December 4, 1979; (10) U-HAUL MOVING AND STORAGE and Design, U.S. Reg. No. 1,085,695, dated February 14, 1978; and (11) U-HAUL MOVING CENTER, U.S. App. No. 75/340,279, filed August 13, 1997.  Complainant has been using its web site at www.U-HAUL.com since November 1996 to conduct business online, allowing customers to make reservations, find U-HAUL locations, get rates, and so on, and to serve as the company's online contact with consumers.  These trademarks are in connection with the rental of moving equipment and storage space, the rental and sale of related goods, and other services in interstate commerce since the 1940's. 

 

For over fifty years, U-HAUL has provided individuals and families an economical and convenient means for moving and storing their personal possessions.  U-HAUL has more than 16,000 locations in the United States and Canada and a rental fleet of approximately 84,000 trucks and 86,000 trailers. 

 

The URL domain names do not appear to be functional at this time, nor does Complainant have any reason to believe they will ever been functional.  Respondent registered the disputed domain names on June 9, 2000.

 

DISCUSSION

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 the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

 

Identical and/or Confusingly Similar

Through its registered “U-HAUL” mark, Complainant has proven its rights in the mark contained in the domain names, <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org>.

The domain names reserved by Respondent are confusingly similar to Complainant's mark "U-HAUL".  Respondent simply added the characters "URN2" or "urn2" -- a short-hand phrase for "You are into . . ." that has gained use in the online world -- as a generic prefix to the Complainant's well-known mark.  Notably, there have been two decisions rendered by the National Arbitration Forum ordering Respondent's domain names: <urn2perotsystems.net>, <urn2perotsystems.org>, <urn2victoriassecret.com> and <urn2victoriassecrets.com>, to be transferred from Respondent to complainants.  See Perot Systems Corp. v. Brown, FA 97303 (Nat. Arb. Forum June 25, 2001) (finding that Respondent's domain name <urn2perotsystems.net> was confusingly similar to Complainant's mark Perot Systems); see also Victoria's Secret et al v. Brown, FA 96561 (Nat. Arb. Forum Mar. 19, 2001) (finding that Respondent's domain names <urn2victoriassecret.com> and <urn2victoriassecrets.com> are primarily comprised of complainants' mark and therefore constitute domain names that are confusingly similar to complainants' mark).  

 

Based on the above, the Panel determines that the elements set forth in Policy ¶ 4(a)(i) have been established.

 

Rights or Legitimate Interests

There is no evidence put forward that Respondent has ever used or plans to use the domain names in connection with any commercial or noncommercial goods and/or services.  Policy ¶¶ 4(c)(i), (iii).  Further, given Respondent’s registration of the domain names long after Complainant’s mark has become famous worldwide, Respondent cannot claim to be commonly known by the URN2UHAUL domain names.  Policy ¶ 4(c)(ii).  Instead, since Respondent has made no use of the domain names, its appears that Respondent merely registered the domain names in order to reserve them for sale to the Complainant or a third party.  E.g., Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way); see also Chanel, Inc. v. Heyward, D2000-1802 (WIPO Feb. 23, 2001) (finding no rights or legitimate interests where “Respondent registered the domain name and did nothing with it”).  As such, the Panel concludes that the Respondent has no rights or legitimate interests in the domain names.

 

The Panel concludes that the elements set forth in Policy ¶ 4(a)(ii) have been established. 

 

Registration and Use in Bad Faith

Respondent's established history of registering distinctive domain names and failure to use them is evidence of a pattern of bad faith registration and use pursuant to Policy  ¶ 4(b)(ii).  See e.g., Australian Stock Exch. v. Cmty. Internet (Australia), D2000-1384 (WIPO Nov. 30, 2000) (finding bad faith under Policy paragraph 4(b)(ii) where Respondent registered multiple infringing domain names containing the trademarks or service marks of other widely known Australian businesses).

 

Moreover, the widespread use of Complainant's famous mark permits the inference that Respondent was aware of the U-HAUL mark prior to registering the disputed domain names.  Such knowledge constitutes opportunistic bad faith.  See Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).   

 

Given the above, the Panel concludes that the elements set forth in Policy ¶ 4(a)(iii) have been established. 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted.

 

Accordingly, it is Ordered that the domain names <urn2uhaul.com>, <urn2uhaul.net>, and <urn2uhaul.org> be transferred from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

 

Dated: October 4, 2001