Lyft, Inc. v. Stylianos Kandias
Claim Number: FA1807001795070
Complainant is Lyft, Inc. (“Complainant”), represented by Aaron D. Hendelman and Alyssa M. Worsham of Wilson Sonsini Goodrich & Rosati, California, USA. Respondent is Stylianos Kandias (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lyftviauber.com>, registered with Instra Corporation Pty Ltd.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2018; the Forum received payment on July 2, 2018.
On July 3, 2018, Instra Corporation Pty Ltd. confirmed by e-mail to the Forum that the <lyftviauber.com> domain name is registered with Instra Corporation Pty Ltd. and that Respondent is the current registrant of the name. Instra Corporation Pty Ltd. has verified that Respondent is bound by the Instra Corporation Pty Ltd. 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 9, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 30, 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@lyftviauber.com. Also on July 9, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default. Respondent did however send an e-mail to the Forum, see below.
On August 5, 2018 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a privately held transportation network company based in San Francisco, California. The company’s mobile-phone application facilitates peer-to-peer ridesharing by connecting passengers who need a ride with drivers who have cars. Drivers and passengers rate each other on a five-star scale after each ride, and the ratings establish the reputations of both drivers and passengers within the network. The company now operates in over 300 U.S. cities, and several international locations, using the mark LYFT. Complainant is the leader in the peer-to-peer ridesharing service department and is the fastest growing on-demand platform in the transportation segment. Since Complainant began using the LYFT marks in May 2012, its valuation has grown to over $11 billion. Complainant has rights in the LYFT mark based upon its registration of the mark in the United States in 2015.
Complainant alleges that the disputed domain name domain name is confusingly similar to its mark because it combines the mark with a well-known third-party trademark for a competing ridesharing service (UBER) plus the “via” generic term. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent lacks rights and legitimate interests in the disputed domain name because Respondent is not commonly known by the disputed domain name and is not authorized or permitted to use the mark in any way. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, the disputed domain name is not being used. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to divert internet traffic which ultimately disrupts Complainant’s business. Respondent passively holds the disputed domain name failing to make an active use. Finally, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding. In his e-mail to the Forum, Respondent states, in pertinent part (verbatim):
The domain contains 3 names:
Uber
Via
Lyft
Which are names of the few rideshare applications that they are online at this moment around the world.
The idea and the only reason that this domain was bought was to create an online "review" portal - blog page in the future for rideshare apps that people could share ideas and experiences online.
Never was a willing to disinform or create confusion to customers or online users.
Complainant owns the mark LYFT and uses to market ridesharing services. The mark is well known.
Complainant’s rights in its marks date back to at least 2015.
The disputed domain name was registered in 2018.
The disputed domain name contains two other well-known marks used for ridesharing services: UBER and VIA.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name is not being used.
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.”).
The disputed domain name <lyftviauber.com> domain name is confusingly similar to Complainant’s LYFT mark it combines the mark with two third party trademarks for competing ridesharing services; UBER and VIA. Complainant argues that the term “via” in the disputed domain name is a generic term. However, Respondent’s e-mail makes it clear that he used “via” to refer to the VIA ridesharing service. The combination of a complainant’s mark with a third-party trademark is not sufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See G.D. Searle v. Martin Mktg., FA 118277 (Forum Oct. 1, 2002) (“Complainant has the right to protect its trademark whether standing alone, or included in a string of industry-related marks. Respondent’s inclusion of other drug-related marks [in the <viagra-xenical-celebrex-propecia-meridia-zyban.com> domain name] only increases the likelihood that confusion will result from use of the domain name.”). Even if the term “via” had been used as a generic term, that would not be sufficient to distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis). Therefore, the Panel fins that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Where a complainant fails to establish it has standing to bring a claim regarding an included third party mark, a panel may decline to transfer the disputed domain name. The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” See Dell Inc. v. Ionel Adrian Nicolae, FA 1683104 (Forum Aug. 22, 2016) (“Nvidia Corp. has not been joined as a Complainant in this matter and there is no nexus available through which Complainant can claim to have rights to the transfer of the <alienware-nvidia.xyz> domain name. Therefore, the Panel dismisses the Complaint because Complainant has failed to establish rights in or to the NVIDIA mark per Policy ¶ 4(a)(i).”). The UBER mark belongs to a third party that provides services that are very similar to Complainant. Nothing in the available evidence, however, indicates Complainant has consent from Uber to pursue this Complaint. Thus, the Panel could dismiss the Complaint because Complainant has failed to establish rights in or to the UBER mark per Policy ¶ 4(a)(i).
However, the Panel may choose to cancel rather than transfer the <lyftviauber.com> domain name if it finds Complainant to have established the remaining elements of the Policy. See Blue Diamond Growers v. L Wood, FA 1728775 (Forum Jun. 7, 2017) (choosing to cancel the <bluediamondkings.us> domain name rather than transfer it, because the complainant did not have rights to the third-party KINGS mark, or consent from the mark holder to proceed); see also Bayerische Motoren Werke AG v. Gary Portillo, D2012-1937 (WIPO Nov. 29, 2012) (transferring the <rockvillebmwmini.com> and <rockvillebmw.com> domain names, but cancelling the <rockvilleaudibmw.com> domain name because it included the third-party AUDI mark).
As discussed below, the Panel finds that Complainant has established the remaining elements of the Policy, so it will order the cancellation of the disputed domain name.
Complainant has not authorized Respondent to use its mark in any way. Respondent is not commonly known by the disputed domain name: where a response is lacking, relevant WHOIS information may be used to identify a respondent. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of authorization from a complainant to use its mark may be evidence that a respondent is not commonly known by a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). Here, the WHOIS information identifies the registrant of the disputed domain name as “Stylianos Kandias.” Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
The disputed domain name is not being used. Failure to make an active use of a domain name demonstrates that Respondent is not using the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial fair use. See Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (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 [failure to make an active 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).”). Therefore, the Panel finds that Respondent is not using the disputed domain name for a bona fide offering of goods or services, and it finds that Respondent does not have rights or legitimate interests in the disputed domain name.
The disputed domain name is not being used. According to paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.”
In the present case, Complainant’s trademark is well known, and the disputed domain name incorporates other well known trademarks. It is difficult to envisage any use of the disputed domain name that would not violate the Policy, see Morgan Stanley v. TONY / shentony, FA 1637186 (Forum Oct. 10, 2015) (“Respondent registered the disputed domain name [MORGANSTANLEY.ONLINE] in bad faith because . . . it is difficult to envisage any use of the disputed domain name that would not violate the Policy”); see also Singapore Airlines Ltd. v. European Travel Network, D2000-0641 (WIPO Aug. 29, 2000) (where selection of disputed domain name is so obviously connected to complainant’s well-known trademark, use by someone with no connection with complainant suggests opportunistic bad faith); see also Starwood Hotels & Resorts Worldwide, Inc., Sheraton Int’l IP, LLC, Westin Hotel Mgmt., L.P. v. Jingjing Tang, D2014-1040 (WIPO Aug. 19, 2014) (“The Panel finds that the [WESTIN] Marks are not such that could legitimately be adopted by traders other than for the purpose of creating an impression of an association with Complainant. Thus, the Panel concludes that the disputed domain names were registered in bad faith”). In his e-mail, Respondent states that he plans to use the disputed domain name “to create an online ‘review’ portal - blog page in the future for rideshare apps that people could share ideas and experiences online”. The Panel doubts that any such use of the disputed domain name would not violate the Policy, in particular because Internet users might be confused by the combination of three well-known marks in the disputed domain name. The Panel notes that Respondent alleges that he has no intent to confuse or mislead Internet users, however it finds that, in the circumstance of this case, lack of intent is not sufficient to prevent a finding of bad faith registration and use.
There has been no formal response to the Complaint. Respondent used a privacy service to register the domain name, that is, he concealed his identity. Given these circumstances, the Panel finds that, in this particular case, a finding of bad faith use can be inferred even though the disputed domain name is not being actively used. See Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000).
Further Respondent states that he registered the disputed domain name with actual knowledge of Complainant’s mark. While constructive notice is insufficient to demonstrate bad faith, actual knowledge of a complainant’s rights in a mark prior to registration may be evidence of bad faith per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). The Panel finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to Respondent’s registration of the disputed domain name and that this constitutes bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Since the disputed domain name contains third-party trademarks, it is Ordered that the <lyftviauber.com> domain name be CANCELLED.
Richard Hill, Panelist
Dated: August 5, 2018
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