AMR Holdings, Inc. v. marc markbreiter
Claim Number: FA1806001790244
Complainant is AMR Holdings, Inc. (“Complainant”), represented by Paul Godfread of Godfread Law Firm, P.C., Minnesota, USA. Respondent is marc markbreiter (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lemonsquadnewyork.com>, registered with Domain.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 5, 2018; the Forum received payment on June 5, 2018.
On June 6, 2018, Domain.com, LLC confirmed by e-mail to the Forum that the <lemonsquadnewyork.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 11, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 2, 2018 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@lemonsquadnewyork.com. Also on June 11, 2018, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 5, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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" 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 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information: Rule 3(b)(viii).
Complainant owns the trademark LEMON SQUAD and has used the same in interstate commerce since 2010. Complainant owns a federal trademark registration (Registration number 4,033,731) for LEMON SQUAD for use in connection with “inspection services for new and used vehicles for persons buying or selling their vehicles” in class 42. This registration has been renewed and is now incontestable under federal law. Complainant also registered the domain name <lemonsquad.com> in 2010 and has consistently done business under the name and trademark LEMON SQUAD since that time.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix). All three elements of the Policy are present and supported by evidence.
[a.] The domain name <lemonsquadnewyork.com> is confusingly similar to the trademark LEMON SQUAD. UDRP Rule 3(b)(ix)(1); UDRP Policy ¶4(a)(i).
The domain name is <lemonsquadnewyork.com>. Complainant has done business nationwide, including in the state of New York, under the trademark LEMON SQUAD since 2010, owns a federal trademark registration (Registration number 4,033,731) for LEMON SQUAD for use in connection with “inspection services for new and used vehicles for persons buying or selling their vehicles” in class 42. Complainant advertises regularly and does business through their website at <lemonsquad.com>. The two domains are nearly identical but for the addition of a geographic descriptive term to Complainant’s federally registered trademark.
[b.] Respondent has no rights in the Lemon Squad or Lemon Squad New York name. UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(c).
Respondent registered the domain name <lemonsquadnewyork.com> in late 2017 in a blatant effort to copy Complainant’s LEMON SQUAD trademark. Respondent was not known as “Lemon Squad” or “Lemon Squad New York” and had not previously offered goods or services under that name, nor has it made a non-commercial use or fair use of the name. Prior panels, such as the panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) have concluded that a respondent is not commonly known by a disputed domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record when the record does not suggest a relationship between respondent and the disputed domain name. Here, there is nothing to indicate Respondent has ever been known by that name, nor has respondent used the name in any way. There is also no relationship between Complainant and Respondent.
In early 2018, it appears that Respondent began using the <lemonsquadnewyork.com> domain name to divert web traffic to its competing services. Upon information and belief, Respondent also offers used car inspections, though limited to the New York area. (ANNEX D). Complainant has been offering its used car inspection services in the same area using the LEMON SQUAD trademark since at least 2010. Thus, it appears that Respondent’s registration of the domain name and adoption of the Lemon Squad New York name was a deliberate attempt to divert sales from Complainant.
The mere addition of geographic terms to registered trademarks does not show any legitimate rights. See Ashley Furniture Industries, Inc. v. Fari Hadikusuma et al., FA1611001703352 (Nat. Arb. Forum, Dec. 21, 2016) (finding a lack of rights and bad faith where a respondent registered domain names consisting of a trademark plus geographic place names). Here it seems that Respondent was aware of Complainant and chose a name nearly identical, rather than seeking to establish its own name and reputation. Additionally, Respondent has told counsel for Complainant that he would shut down the website, but has not yet done so, further indicating that Respondent does not believe it has any rights in the domain name.
For all these reasons it becomes clear that Respondent should be considered as having no rights or legitimate interests in the domain name.
[c.] The domain name has been registered and is being used in bad faith and in order to divert traffic and sales from Complainant’s business by using Complainant’s registered trademark. UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
Respondent’s registration and use of the domain name has been in bad faith because it has actively concealed its identity, had both constructive and actual knowledge of Complainant’s rights, and is clearly infringing upon Complainant’s well established trademark rights.
As other panels have noted, a commercial business that uses a domain privacy service to conceal its true identity creates a rebuttable presumption that the registration and use was done in bad faith. John Dilks v. Privacy Administrator / Anonymize, Inc., FA1506001623023 (Nat. Arb. Forum July 10, 2015). Here, Respondent has done that and additionally has no street address, individual name, or corporate name that appears anywhere on the website.
There is nothing filed with the New York Secretary of State that would show any business entity with the name Lemon Squad New York. In short, Respondent has concealed its true identity from the world in an apparent attempt to avoid the repercussions of fairly blatant trademark infringement. This alone should support a finding of bad faith use and registration.
Additionally, the apparent purpose of the website is to infringe upon the trademark rights of Complainant. Respondent offers identical services under a confusingly similar name, which further indicates bad faith. Registration and use of a domain name for the purpose of offering competing services is bad faith. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv)” Here, the websites offer directly competing services as the services are identical, the names are identical but for a geographic description, and they offer services in overlapping geographic areas. Such a clear infringement of trademark rights can only be consistent with bad faith registration and use.
It is also clear that Respondent has known about Complainant and registered and used the domain name with that purpose. Jet Marques v. Vertical Axis, Inc., D2006-0250 (WIPO May 26, 2006) (a finding of bad faith registration requires that respondent registered the domain name with complainant’s trademark in mind). Actual knowledge is sufficient evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name) Complainant placed a call to the phone number on Respondent’s website to inquire about a car inspection in New York and was told that they were unavailable at that time and to try “regular Lemon Squad” with reference to Complainant, thus confirming that Respondent had actual knowledge of Complainant. Thus, even if bad faith could not otherwise have been found through Respondents acts to conceal its identity or its constructive knowledge of Complainant, it is also clear Respondent had actual knowledge of Complainant and has registered and used the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, Respondent sent a short email which said “I dissolved all ads.”
(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 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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(f), 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 (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 claims rights in the LEMON SQUAD mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,033,731, registered on Oct. 4, 2011). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). The LEMON SQUAD mark was assigned from Lemon Squad Auto Inspections, LLC to Complainant on June 21, 2013. Rights exist when a complainant has provided evidence of assignment of the mark. See Margo Howard Primary Trust and Margo Howard v. Ann Landers Fans International, LTD., FA 1603773 (Forum Mar. 8, 2015) (“Complainant has demonstrated rights in the ANN LANDERS mark for purposes of Policy ¶4(a)(i) through assignment of a USPTO recognized trademark.”). Complainant has rights in the LEMON SQUAD mark under Policy ¶4(a)(i).
Complainant claims the <lemonsquadnewyork.com> domain name is confusingly similar to the LEMON SQUAD mark because it contains the mark in its entirety, less the space (which is a prohibited character in a domain name), and adds the geographic term “new york” as well as the gTLD “.com.” Panels have consistently found slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark or geographical designations do not distinguish the domain name from the mark incorporated therein. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity); see also Direct Energy Marketing Limited v. Xushuaiweiren / xushuaiwei, FA 1762707 (Forum Jan. 22, 2018) (“Removal of spaces and additions of TLDs are irrelevant to a Policy ¶4(a)(i) analysis.”). The <lemonsquadnewyork.com> domain name is confusingly similar to the LEMON SQUAD mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in <lemonsquadnewyork.com> because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LEMON SQUAD mark in any way. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record identifies Respondent as “marc markbreiter”. There is no obvious connection between the disputed domain name and Respondent’s name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name for bona fide offering of goods or services, or legitimate noncommercial or fair use. Respondent uses the <lemonsquadnewyork.com> domain name to divert web traffic to its competing services. Using a confusingly similar domain name to offer competing goods and services is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Respondent’s webpage offers similar car inspection services in the New York area which directly compete with Complainant’s business. Respondent does not have rights or legitimate interests in the domain name under Policy ¶¶4(c)(i) or (iii).
Respondent registered the disputed domain name using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain name. Therefore, Respondent has not acquired any rights by registering the disputed domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the <lemonsquadnewyork.com> domain name in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶4(b)(iv) exists where a respondent uses a confusingly similar domain name to resolve to a website featuring products and services that compete directly with the complainant. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”). Respondent’s website offers directly competing services, the names are identical but for a geographic description, and they offer services in overlapping geographic areas. Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Actual knowledge of a complainant’s rights in a mark may be proven through the totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant placed a call to the phone number on Respondent’s website to inquire about a car inspection in White Plains, New York and was told that they were unavailable at that time and to try the “regular Lemon Squad.” Respondent clearly had actual knowledge of Complainant and Complainant’s mark during that conversation. Respondent had actual knowledge of Complainant’s rights in the LEMON SQUAD mark when it registered <lemonsquadnewyork.com>, which constitutes bad faith registration and use under Policy ¶4(a)(iii).
Respondent registered the disputed domain name using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Therefore, the Panel is willing to find bad faith on those grounds alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lemonsquadnewyork.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, July 11, 2018
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