Lyft, Inc. v. Ismail Kantarci / Reftiss KG
Claim Number: FA1807001795069
Complainant is Lyft, Inc. (“Complainant”), represented by Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Ismail Kantarci / Reftiss KG (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lyft.taxi>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2018; the Forum received payment on July 2, 2018.
On July 5, 2018, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <lyft.taxi> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 July 5, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 25, 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@lyft.taxi. Also on July 5, 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 27, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Lyft, Inc., is recognized in the press and media for its technology and on-demand ride-sharing services. Complainant has used the LYFT mark since at least as early as May 30, 2012 to promote its on-demand ridesharing network. Complainant has rights in the LYFT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,686,618, registered Feb. 17, 2015). Respondent’s <lyft.taxi> domain name is identical and confusingly similar to Complainant’s mark because Respondent incorporates the entire mark in the domain name plus the “.taxi” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lyft.taxi> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s mark in any way. Respondent’s use of the LYFT mark in the infringing domain name is not nominative and can easily be avoided.
Respondent registered and uses the <lyft.taxi> domain name in bad faith. Respondent uses the disputed domain name to mislead users to a parked webpage. Additionally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <lyft.taxi> domain name.
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(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 asserts rights in the LYFT mark based upon its registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”). Complainant provides a copy of its registration of the mark with the USPTO (e.g., Reg. No. 4,686,618 registered Feb. 17, 2015). The Panel finds that the Complainant has rights in the LYFT mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <lyft.taxi> domain name is confusingly similar to Complainant’s LYFT mark because Respondent incorporates Complainant’s entire mark in the disputed domain name plus a gTLD. The addition of a gTLD to a complainant’s mark does not distinguish the mark from the disputed domain name per Policy ¶ 4(a)(i). See MTD Products Inc v. Mike Kernea / Skyline, FA 1775278 (Forum Apr. 19, 2018) (“The mere addition of a gTLD is inconsequential and does not avoid a finding of identity.”). Here, Respondent includes the entire LYFT mark in the disputed domain name plus the “taxi” gTLD. The Panel finds Respondent’s disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that 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 does have 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 argues that Respondent lacks rights and legitimate interests in the <lyft.taxi> domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use Complainant’s mark in any way. Where a response is lacking, relevant WHOIS information may be used to identify a respondent. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).”). Additionally, lack of authorization from a complainant to use its mark is evidence that a respondent is not commonly known by a disputed domain 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). Complainant provides the WHOIS information which identifies the registrant of the disputed domain name as “Ismail Kantarci,” and no information of the record indicates that Respondent was authorized to use Complainant’s mark in any fashion. The Panel finds that Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent registered and uses the <lyft.taxi> in bad faith. Specifically, Complainant alleges that Respondent is passively holding the disputed domain name. The passive holding of a domain name may constitute bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). Complainant provides screenshots of the webpages associated with the disputed domain name which show a message stating “Reserved: the domain lyft.taxi has been parked.” This is evidence that the Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant further alleges that Respondent uses the disputed domain name to create initial interest confusion to attract users to the disputed domain name. Use of a domain name to create initial interest confusion is evidence of bad faith per Policy ¶ 4(a)(iii). Red Bull GmbH v. Gutch, D2000-0766 (WIPO Sept. 21, 2000) (finding that the respondent’s expected use of the domain name <redbull.org> would lead people to believe that the domain name was connected with the complainant, and thus is the equivalent to bad faith use). Here, Complainant argues Respondent relied on the LYFT mark when registering the disputed domain name, adding a gTLD that explicitly reflects Complainant’s industry. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the <lyft.taxi> domain name. A respondent who has actual knowledge of a complainant’s rights in a mark prior to registration may be found to be acting in bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). Complainant argues Respondent had actual knowledge of Complainant’s rights in the mark due to the extensive notoriety of Complainant’s rights and the addition of the “taxi” gTLD to the disputed domain name, which relates directly to Complainant’s business. This is evidence that Respondent had actual knowledge of Complainant’s rights in the mark and registered and used the domain name in bad faith. From Complainant’s uncontested allegations and evidence, the Panel finds that Respondent registered and uses the disputed domain name in bad faith.
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <lyft.taxi> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: July 31, 2018
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