CHHJ Franchising LLC d/b/a College Hunks Hauling Junk v. Shaun Robinson
Claim Number: FA1204001437943
Complainant is CHHJ Franchising LLC d/b/a College Hunks Hauling Junk (“Complainant”), represented by Geoffrey C. Brethen of Musick, Peeler & Garrett, LLP, California, USA. Respondent is Shaun Robinson (“Respondent”), represented by Steven L. Rinehart, Utah USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <collegehunksmoving.com>, registered with GoDaddy.com, LLC.
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.
Hector A. Manoff, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 5, 2012.
On April 4, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <collegehunksmoving.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@collegehunksmoving.com. Also on April 12, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on May 2, 2012.
On May 4, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hector A. Manoff 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant asserts that it owns U.S. Trademark Registrations for the marks COLLEGE HUNKS HAULING JUNK (wordmark), registered on December 5, 2006, albeit with an alleged first use on June 1, 2003; COLLEGE HUNKS HAULING JUNK (stylized mark), registered on February 20, 2007, but with alleged first use on June 1, 2003; and COLLEGE HUNKS MOVING (stylized mark), registered on July 12, 2011 and with alleged first used on January 1, 2007.
2. Complainant alleges that it has invested large sums of money in advertising and marketing campaigns nationwide, which led them to gain significant publicity.
3. The <collegehunksmoving.com> domain name is identical to the COLLEGE HUNKS MOVING mark.
4. Respondent lacks rights and legitimate interests in the disputed domain name.
5. Respondent has not made an active use of the disputed domain name, despite having registered it more than two and one half years ago.
6. Respondent registered the <collegehunksmoving.com> domain name with the intent to sell, rent, or transfer the disputed domain name to Complainant, the owner of the COLLEGE HUNKS MOVING mark, so as to profit from the eventual transfer.
7. Respondent had actual knowledge of Complainant’s rights in the COLLEGE HUNKS MOVING mark prior to its registration of the <collegehunksmoving.com> domain name. Thus, it registered the domain name in bad faith.
B. Respondent
1. The disputed domain name was registered in good faith in 2009 when Complainant was negotiating a partnership agreement with Respondent, long before Complainant accrued trademark rights.
2. Respondent has been in the moving business since 2005, doing business as Strong College Students, Inc. In 2009, he incorporated as Strong Students Moving, Inc.
3. Also in 2009, before Complainant accrued trademark rights, Complainant began negotiating with Respondent to acquire and merge the Respondent’s business into Complainant’s, then forming a joint venture called COLLEGE HUNKS MOVING. After some time of oral negotiations, Complainant forwarded a “term sheet” to Respondent, which outlined the terms of the business proposal.
4. Pursuant to the terms of the “term sheet”, the Respondent was to change its name to COLLEGE HUNKS MOVING TRUCK, then merge its company with the Complainant’s parent company. This new, subsequently formed entity, would then be called COLLEGE HUNKS MOVING.
5. Respondent, among other obligations, had to afford the registration of the domain name. Thus, he was authorized by Complainant to register the domain name as part of their business relationship.
6. Respondent claims that he had made investments and had contributed to the project while Complainant has not honored its obligations.
7. Respondent affirms he has made demonstrable preparations to use the disputed domain name for the bona fide purpose of forming a partnership with Complainant.
8. Respondent affirms that Complainant committed fraud by declaring in the USPTO a date of first use of the COLLEGE HUNKS MOVING mark in 2007 since, according to the “term sheet”, Complainant acknowledged in the term sheet it had not been using the mark prior to November 2009.
9. Respondent contends that, since Complainant did not have any trademark rights identical to the disputed domain when it was registered, the only marks the Panel can consider are the two COLLEGE HUNKS HAULING JUNK marks, which are not confusingly similar to the disputed domain.
10. Respondent contends that letters and words added to the disputed domain are evidence of confusing similarity only if the similarity of a part suggests the whole, but not confusingly similar where the whole contains its own meaning. In this case, the addition of MOVING to COLLEGE HUNKS in the Applicant’s Mark obviates confusingly similarity between the Complainant’ mark and the disputed domain and differentiates the disputed domain visually, connotatively, phonetically, and conceptually from the Complainant’s mark.
11. Respondent affirms that the registration of the Disputed Domain involves a business dispute between the parties. Therefore, it falls outside the scope of the UDRP.
12. Respondent claims that Complainant initiated this dispute as part of a scheme of reverse domain name hijacking.
Complainant is a nationally known company that has been doing business from 2003 and provides two type of services: 1) sorts, moves, recycles, and disposes personal items for a fee, and 2) transports household goods by motor vehicle. Complainant owns U.S. Trademark Registrations for the marks COLLEGE HUNKS HAULING JUNK (wordmark), registered on December 5, 2006, albeit with an alleged first use on June 1, 2003; COLLEGE HUNKS HAULING JUNK (stylized mark), registered on February 20, 2007, but with alleged first use on June 1, 2003; and COLLEGE HUNKS MOVING (stylized mark), registered on July 12, 2011 and with alleged first used on January 1, 2007.
Respondent is a competitor of Complainant and has been doing business since 2005. Respondent registered the <collegehunksmoving.com> domain name on September 17, 2009 and had never used it so far. Respondent claims that he had authorization from Complainant to register the disputed domain name as a part of a business agreement with Complainant.
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."
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.
Preliminary Issue: Business/Contractual Dispute Outside the Scope of the UDRP
Respondent contends that the registration of the disputed domain name involves a business dispute between the parties and, thus, that it falls outside the scope of the UDRP. In support of this assertion, Respondent submitted a document that Complainant would have forwarded to Respondent by e-mail, which outlined the terms of the proposed agreement, as explained in more detail above in the Respondent’s contentions paragraph.
The document (referred to as “term sheet” in the Response brief) submitted by Respondent to prove the business relationship with Complainant is not addressed to any person, neither signed. Moreover, the attached e-mail from Mr. Friedman to Mr. Robinson does not include the terms of the alleged business proposal in the body of the e-mail, nor it shows the attached file, thus preventing this Panel from concluding that such e-mail had attached the above mentioned “term sheet”. Even the subject of the e-mail that mentions Phases 1 and 2, which are also mentioned in the term sheet, is insufficient to prove that the “term sheet” of Annex B was attached to the e-mail of Annex C.
Therefore, the above-mentioned documents cannot be considered as conclusive evidence of a business/contractual dispute that would have this case fall outside the scope of the UDRP.
Under the UDRP, the Panel has discretion to determine whether or not it has jurisdiction over this dispute. Since Complainant and Respondent have provided sufficient evidence for the Panel to properly decide the dispute under the UDRP, the Panel may proceed with the case and consider the contentions of Complainant and Respondent. See Weber-Stephen Prod. Co. v. Armitage Hardware, D2000-0187 (WIPO May 11, 2000) (“Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”); see also Draw-Tite, Inc. v. Plattsburgh Spring Inc., D2000-0017 (WIPO Mar. 14, 2000) (“This Panel well recognizes that its jurisdiction is limited to providing a remedy in cases of ‘the abusive registration of domain names,’ or ‘Cybersquatting’ ... Like any other tribunal, however, this Panel can determine whether it has jurisdiction only from the facts and arguments presented to it. In this case, Complainant did allege bad-faith use and registration of the domain name at issue. Had Complainant proved those allegations, there would be no proper question as to this Panel’s jurisdiction.”).
In this case, Complainant made assertions following the criteria set out in the Policy, thus the present Panel considers having jurisdiction to render a decision in respect of the disputed domain name.
Therefore, the Panel will proceed to analyze the case under the UDRP rules.
This Panel finds that trademark registrations in the name of Complainant are sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant argues that Respondent’s domain name is identical to its COLLEGE HUNKS MOVING mark and also confusingly similar to its COLLEGE HUNKS HAULING JUNK marks, which were widely used from 2003, and registered from 2006/2007, prior to the disputed domain name registration date.
Respondent argues that Complainant’s COLLEGE HUNKS MOVING mark was filed and registered after he registered the disputed domain name. Moreover, Respondent alleges that, from the submitted evidence, it turns out that Complainant had not used the COLLEGE HUNKS MOVING mark before November 2009. Therefore, he argues that the disputed domain name should be compared, for confusing similarity purposes, to Complainant’s COLLEGE HUNKS HAULING JUNK marks only. He adds that the disputed domain name is not confusingly similar to the latter marks, and that the shared words “COLLEGE HUNKS” is a descriptive expression which is not exclusively associated with Complainant’s business. The Panel disagrees.
Actually, this Panel finds that the shared “COLLEGE HUNKS” expression is a distinctive part of Complainant’s marks, which was already included in Complainant’s trademark registrations dating back to 2006/2007. And this similarity is not changed by the addition of the generic term “moving”. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). In light of the preceding facts and case precedent, the Panel determines that the disputed domain name is confusingly similar to Complainant’s marks for the purposes of Policy ¶ 4(a)(i).
Lastly, as regards Respondent’s assertion that Complainant had committed fraud by declaring a false date of first use of the COLLEGE HUNKS MOVING mark in the USPTO trademark application procedure, this Panel determines that such issue falls outside the scope of review under the UDRP and should be decided by the Courts.
Therefore, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the Respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name. Complainant claims that no authorization was given to Respondent to use its COLLEGE HUNKS MOVING mark in the disputed domain name and Respondent refers to negotiations to form a partnership with Complainant but provided no credible evidence of having received an authorization from Complainant to register the disputed domain name. Respondent is not commonly known by the <collegehunksmoving.com> domain name. The WHOIS information identifies the registrant of the disputed domain name as “Shaun Robinson” which the Panel determines to be dissimilar to the disputed domain name. In Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panels concluded that the respondents were not commonly known by the disputed domain names as the respective complainants had not authorized the respondents to use the marks, and the WHOIS information was not similar to the disputed domain names. Similar to Tercent Incorporated and Braun Corporation, the Panel holds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The Panel further notes that Respondent does not have a functional website, which does not constitute either 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 Hewlett-Packard Co. & Hewlett-Packard Dev. Co., L.P. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [inactive use] of a domain name that is identical to Complainant’s mark is not 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 also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [inactive use] of a domain name that is identical to Complainant’s mark is not 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).”).
Based on the foregoing, the Panel concludes that Respondent’s registration and lack of use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(a)(iii).
Complainant argues that Respondent’s registration and non-use of the disputed domain name are a product of bad faith. Complainant claims that Respondent attempted to form a partnership with one of Complainant’s franchises, but was unsuccessful. Complainant claims that this meeting occurred in August of 2009, just prior to Respondent’s acquisition of the disputed domain name. Complainant contends that Respondent bought the disputed domain name as a direct result of this failed meeting so as to profit from an eventual transfer of the disputed domain name to Complainant. Under these circumstances, the Panel believes that, even though Respondent has not attempted to sell the domain name to Complainant, the registration and subsequent lack of use of the same creates the impression that it was registered to improve Respondent’s negotiation power in the alleged business dispute between the parties. See Cruzeiro Licenciamentos Ltda. v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that mere failure to make an active use of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale); see also CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”).
Complainant argues that Respondent’s non-use of the disputed domain name is evidence of bad faith. Complainant asserts that the <collegehunksmoving.com> domain name resolves to an inactive website. Previously, panels have found that the inactive holding of a disputed domain name could be evidence of bad faith. According to this case’s factual circumstances, this Panel agrees. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”); see also Disney Enters. Inc. v. Meyers, FA 697818 (Nat. Arb. Forum June 26, 2006) (holding that the non-use of a disputed domain name for several years constitutes bad faith registration and use under Policy ¶ 4(a)(iii)).
Complainant also contends that Respondent could not have registered the disputed domain name without actual or constructive knowledge of Complainant and its rights in the COLLEGE HUNKS MOVING mark. Respondent acknowledged that he is in the same business as Complainant, with principal place of business in the same state, that they know each other and had attempted to do business together. Even though Respondent contends that the COLLEGE HUNKS MOVING mark was a result of a merger negotiation with Complainant, he could not be unaware that COLLEGE HUNKS was a distinctive part of the COLLEGE HUNKS HAULING JUNK mark belonging to Complainant.
This Panel thus finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii) since he had actual notice of Complainant’s trademark rights. See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
The Panel finds Policy Paragraph 4(a)(iii) has been satisfied.
Reverse Domain Name Hijacking
Since the Panel finds that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <collegehunksmoving.com> domain name be TRANSFERRED from Respondent to Complainant.
Hector A. Manoff, Panelist
Dated: May 17, 2012
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