Pink Jeep Tours, Inc. v. Tim Conaway
Claim Number: FA1403001549015
Complainant is Pink Jeep Tours, Inc. (“Complainant”), represented by Adam Stephenson of Adam R. Stephenson, LTD., Arizona, USA. Respondent is Tim Conaway (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinkjeeptours.net>, registered with GoDaddy.com, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2014; the National Arbitration Forum received payment on March 17, 2014.
On March 17, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pinkjeeptours.net> 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 March 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 2014 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@pinkjeeptours.net. Also on March 24, 2014, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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. 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
a) Complainant has common law rights in the PINK JEEP TOURS for which it uses in connection with offering tour services in pink vehicles, including jeeps. Complainant first used the PINK JEEP TOURS mark as early as December 31, 1958, first used the mark in commerce as early as December 31, 1960, and first used the mark in commerce in Nevada as early as January 22, 2002. Complainant has been advertising its tour services online since December 3, 1998. Complainant has continued to use the PINK JEEP TOURS mark actively since 2002 and demonstrates a continuous and uninterrupted Internet presence by Complainant and its sister company. The PINK JEEP TOURS mark has become extremely well-known and famous through extensive, continuous use. Further, Complainant and its mark have been featured in radio and television. Complainant’s use of the JEEP portion of the PINK JEEP TOURS mark is licensed by the Chrysler Group LLC, the owner of the JEEP family of trademarks.
b) The <pinkjeeptours.net> domain name is identical to the PINK JEEP TOURS mark. Respondent has effectively used Complainant’s mark, in its entirety, without adding or removing anything substantive. Respondent merely removes spacing and adds the generic top-level domain (“gTLD”), “.net.”
c) Respondent resolves the <pinkjeeptours.net> domain name to a website that provides information about Respondent’s jeep tour business.
d) Respondent registered the <pinkjeeptours.net> domain name in order to resolve the domain name to the website promoting Respondent’s competing services, thus demonstrating bad faith.
e) Respondent knowingly, and in bad faith, registered the <pinkjeeptours.net> domain name, including Complainant’s mark, to misdirect consumers to Respondent’s own competing website for commercial gain. Respondent uses the <pinkjeeptours.net> domain name to promote its own jeep tour services. While Complainant does not dispute Respondent’s right to use the “jeep tours” phrase descriptively, Complainant asserts that Respondent’s combination of this phrase along with the term “pink” to create Complainant’s full mark demonstrates Respondent’s intention to create confusion with Complainant specifically. Complainant has no issues with legitimate competition, however, the present dispute involves a classic case of Respondent intentionally attracting, for purely commercial gain, Internet users to the <pinkjeeptours.net> domain name by creating a likelihood of confusion of its domain name with the PINK JEEP TOURS mark.
f) Respondent’s inclusion of the term “pink” to the phrase “jeep tours” is evidence of Respondent’s knowledge of Complainant’s rights in the PINK JEEP TOURS mark at the time the <pinkjeeptours.net> domain name was registered.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds common law rights for the PINK JEEP TOURS mark. Respondent’s domain name is confusingly similar to Complainant’s PINK JEEP TOURS mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <pinkjeeptours.net> domain name, and that Respondent registered and uses the domain name in bad faith.
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.
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.”).
Complainant argues that it has common law rights in the PINK JEEP TOURS for which it uses in connection with offering tour services in pink vehicles, including jeeps. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant has been licensed by the Chrysler Group LLC for the use of their JEEP mark within Complainant’s own PINK JEEP TOURS mark. Complainant first used the PINK JEEP TOURS mark in commerce as early as December 31, 1960. The record indicates that Complainant has been advertising its tour services online since December 3, 1998 and has continued to use the PINK JEEP TOURS mark actively since 2002. The record supports Complainant’s contention that the PINK JEEP TOURS mark has become extremely well-known and famous through extensive, continuous use. The panel in Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000), found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established. The Panel finds that Complainant has similarly established common law rights in the PINK JEEP TOURS mark pursuant to Policy ¶ 4(a)(i).
The <pinkjeeptours.net> domain name, registered on July 3, 2010, is identical to the PINK JEEP TOURS mark. Respondent merely removes spacing and adds the gTLD, “.net.” In Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001), the panel found <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names.” Similarly, the Panel finds that the <pinkjeeptours.net> domain name is identical to the PINK JEEP TOURS mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case. Complainant asserts that Respondent lacks rights and legitimate interests in the <pinkjeeptours.net> domain name. First, Complainant has shown that Respondent is not commonly known by the domain name. The WHOIS record for a domain name is illustrative of whether a respondent is commonly known by the domain name. See 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 WHOIS record for the <pinkjeeptours.net> domain name lists “Tim Conaway” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <pinkjeeptours.net> domain name under Policy ¶ 4(c)(ii).
Complainant argues that the <pinkjeeptours.net> domain name resolves to a website that provides information about Respondent’s jeep tour business. In Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006), the panel held that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name. Therefore, the Panel finds that Respondent’s use of the <pinkjeeptours.net> domain name to promote its competing business is not a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent registered the <pinkjeeptours.net> domain name in order to promote Respondent’s competing services, thus demonstrating bad faith. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel stated, “Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).” Similarly, the Panel finds that Respondent registered and is using the <pinkjeeptours.net> domain name in bad faith to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Complainant asserts that Respondent knowingly, and in bad faith, registered the <pinkjeeptours.net> domain name, including Complainant’s mark, to misdirect consumers to Respondent’s own competing website for commercial gain. Complainant asserts that the present dispute involves a classic case of Respondent intentionally attracting, for purely commercial gain, Internet users to the <pinkjeeptours.net> domain name by creating a likelihood of confusion of its domain name with the PINK JEEP TOURS mark. The Panel agrees and finds that Respondent registered and is using the <pinkjeeptours.net> domain name to take commercial advantage of mistakes by Internet users and thereby creating a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Lastly, Complainant argues that the PINK JEEP TOURS mark is famous, and Respondent’s addition of the term “pink” to the phrase “jeep tours” is evidence of Respondent’s knowledge of Complainant’s rights in the PINK JEEP TOURS mark at the time the <pinkjeeptours.net> domain name was registered. Due to the distinctive name and fame of Complainant’s business, the Panel infers from the undisputed record that Respondent had actual knowledge of Complainant's rights in the PINK JEEP TOUR mark. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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 Complainant has 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 <pinkjeeptours.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 25, 2014
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