Lightning Delivery LLC v. Randy Ruggeri / Quikdine.com
Claim Number: FA1412001597247
Complainant is Lightning Delivery LLC (“Complainant”), Missouri, USA. Respondent is Randy Ruggeri / Quikdine.com (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lightningdelivery.com>, 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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2014; the National Arbitration Forum received payment on December 29, 2014.
On December 29, 2014, Godaddy.Com, LLC confirmed by e-mail to the National Arbitration Forum that the <lightningdelivery.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 January 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 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@lightningdelivery.com. Also on January 2, 2015, 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 January 5, 2015.
On January 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Debrett G. Lyons 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. The Panel has issued 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 a formal response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.[1]
A. Complainant
Complainant asserts trademark rights in LIGHTNING DELIVERY and alleges that the disputed domain name is identical to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
The whole of the Response is set out below. It was not accompanied by any supporting material.
“The domain name in dispute lightningdelivery.com was purchase (sic) by my company in 2012.
It was available on GoDaddy auction at the time for anyone to purchase. The complainant in this case had every opportunity to purchase it at the same time I did. I’m assuming the complainant chose not to because it was on auction for $900.00 which is the price I paid for it.
Not only do I provide restaurant delivery service (sic) I also provide software for restaurant delivery companies. My company’s software is an integral part of the business. We also provide domain names for those companies who are looking for a complete package, website, software and domain names (sic). My company has several domain names for sale.
The domain name is forwarded to my website for those companies looking to find a domain name and software solutions for their restaurant delivery service. I provide a link on quikdine.com that takes them to my company’s software package. http://software.quikdine.com/qdf_RDS_intro.html
In 2012 the complainant dropped of a bogus cease and desist letter (sic). I had assumed this because it wasn’t signed by the attorney he had stated on the letter (sic). However I replied to the complainant via mailed letter informing the complainant that the domain name is for sale and that I would offer him a discount.
The domain name is on GoDaddy auction and is available for anyone to purchase.
Thank you for your time and consideration.
Sincerely,
Randy Ruggeri”
The factual findings pertinent to the decision in this case are that:
1. The parties both provide food delivery services in the town of Springfield in the State of Missouri, USA;
2. Complainant provides those services by reference to the trademark LIGHTNING DELIVERY, registered with the United States Patent and Trademark Office ("USPTO") under Reg. No. 4,229,342 on October 23, 2012[2];
3. Complainant has offered those services since December 2009[3];
4. Respondent provides those services by reference to the business name QUIK DINE and uses the website, <quikdine.com> (“Respondent’s website”);
5. The disputed domain name was registered on May 14, 2005;
6. At the time of this dispute the domain name resolves to Respondent’s website;
7. Respondent is offering the domain name for sale;
8. There is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark;
9. In response to a demand letter sent by Complainant to Respondent, Respondent asked for USD25,000 in exchange for the domain name; and
10. Panel notes there is no claim that the trademark or domain name is composed of purely generic terms.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its United States national registration for the trademark the Panel is satisfied that it has rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)).
The domain name takes the whole of the trademark and adds non-distinctive matter in the form of the top-level domain gTLD, “.com” which can be ignored. 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). In this case the deletion of the space between the words “lightning” and “delivery” is inconsequential and accordingly, the Panel finds the disputed domain name to be legally identical to the trademark.
Panel finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
Neither party is professionally represented and so the Complaint is as bare as the Response, but together with its annexures, makes it plain to Panel that this is a blatant case of domain name abuse in the sense that Respondent has registered a domain name in knowledge of Complainant’s rights with the single intention of drawing Internet users away from Complainant’s business to Respondent’s website and directly competitive services. The evidence indicates that Respondent has no rights or interests and has acted in bad faith as now explained.
The publicly available WHOIS information identifies Respondent as “Quikdine.com ” and the evidence confirms that respondent offers the relevant business under that name. As such, there is no evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has any trademark rights.
Panel notes that registration of the disputed domain name in 2005 predates Complainant’s trademark use and registration by many years. The record is not complete but Panel accepts as true Complainant’s allegations that “Randy [Respondent] acquired the domain name a year after Lightning Delivery opened for business” and that the domain name previously belonged to Arknine.com” and that “Randy won the bid for the expired domain name”. In other words, first registration was by some third party and Respondent later acquired the name. By its own admission, it did so in 2012.
There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization.
There is no evidence that the disputed domain name has been used in connection with a bona fide offering of goods or services prior to notice of the dispute. There is no evidence that Respondent has ever offered goods or services under the trademark, LIGHTNING DELIVERY.
Complainant states that the disputed domain name has a link to Respondent’s website. The information given was not complete and Panel found on making its own enquiry that the disputed domain name in fact auto-redirects to Respondent’s website.
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name (see, for example, Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Response does not assist the Respondent. None of the claims are supported by evidence and there is no suggestion that any of the claimed offerings are made by reference to the expression “lightning delivery”. Accordingly, statements such as “[N]ot only do I provide restaurant delivery service (sic) I also provide software for restaurant delivery companies. My company’s software is an integral part of the business” carry no weight.
There is a vague suggestion of other services: “We also provide domain names for those companies who are looking for a complete package, website, software and domain names (sic). My company has several domain names for sale.
The domain name is forwarded to my website for those companies looking to find a domain name and software solutions for their restaurant delivery service”. There is no evidence those services have ever been offered by reference to the trademark, or at all.
Finally, the fact that Respondent might have “won” a domain name that could be the preferred name for use in connection with Complainant’s business gives Respondent no “rights” within the meaning of paragraph 4(c) of the Policy and the subsequent use of that domain name to divert Complainant’s customers or potential customers to another place certainly does not give rise to a “legitimate interest”.
Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
For entirely self-evident reasons Panel finds that Respondent’s actions squarely fall under all of paragraphs 4(b)(i), (iii) and (iv) above. See, e.g., George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent registered and was <gwbakeries.mobi> in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“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).”). Later in that same case, “the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”.
Panel finds registration and use in bad faith and so finds that Complainant has satisfied the third and final leg 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 <lightningdelivery.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: February 1, 2015
[1] What in fact the Complainant asks for is transfer of the domain name to a specified “GoDaddy” account but since the Panel has no power to make that Order it will treat the request as a general request to transfer the domain name to the Complainant.
[2] Remarkably, on the Principal Register.
[3] Being the date of public use supported by the Complaint and also the date of claimed first use in commerce of the USPTO registration.
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