DECISION

 

My Pet Cab, LLC v. See PrivacyGuardian.org / Domain Administrator

Claim Number: FA2310002065475

 

PARTIES

Complainant is My Pet Cab, LLC ("Complainant"), represented by Staci R. DeReganaucourt of Varnum LLP, Michigan, USA. Respondent is See PrivacyGuardian.org / Domain Administrator ("Respondent"), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <starwoodpettransport.co>, registered with NameSilo, LLC.

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 9, 2023; Forum received payment on October 9, 2023.

 

On October 9, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <starwoodpettransport.co> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 October 10, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 30, 2023 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@starwoodpettransport.co. Also on October 10, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Sandra J. Franklin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

1.       Respondent's <starwoodpettransport.co> domain name is confusingly similar to Complainant's STARWOOD and STARWOOD PET TRAVEL marks.

 

2.       Respondent does not have any rights or legitimate interests in the <starwoodpettransport.co> domain name.

 

3.       Respondent registered and uses the <starwoodpettransport.co> domain name in bad faith.

 

B. Respondent did not file a Response.

 

FINDINGS

Complainant holds registrations for the STARWOOD mark with the United States Patent and Trademark Office ("USPTO") (Reg. No. 7,052,541, registered May 16, 2023) and for the and STARWOOD PET TRAVEL mark (Reg. No. 7,052,542, registered May 16, 2023).  Complainant conducts business at <starwoodpet.com>.

 

Respondent registered the <starwoodpettransport.co> domain name on September 30, 2022, and uses it to pass off as Complainant.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) ("Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint").

 

Identical and/or Confusingly Similar

The Panel finds that Complainant has rights in the STARWOOD and STARWOOD PET TRAVEL marks through registration with the USPTO. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).").

 

Respondent's <starwoodpettransport.co> domain name uses Complainant's STARWOOD mark, and simply switches the word "travel" in Complainant's STARWOOD PET TRAVEL mark for the similar word "transportation", and adds ".co". This change does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant's entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.) Therefore, the Panel finds that Respondent's <starwoodpettransport.co> domain name is confusingly similar to Complainant's STARWOOD and STARWOOD PET TRAVEL marks.

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 contends that Respondent lacks rights and legitimate interests in the <starwoodpettransport.co> domain name as Respondent is not commonly known by the domain name and Complainant has not authorized or licensed to Respondent any rights in the STARWOOD and STARWOOD PET TRAVEL marks. The WHOIS information for the disputed domain name lists the registrant as "See PrivacyGuardian.org / Domain Administrator". Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name, and thus has no rights under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent's use of the same); see also 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)").

 

Complainant argues that Respondent fails to use the <starwoodpettransport.co> domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses the domain name to pass off as complainant and offer competing services. Using a disputed domain name to pass off as and compete with a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Invesco Ltd. v. Premanshu Rana, FA 1733167 (Forum July 10, 2017) ("Use of a domain name to divert Internet users to a competing website is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.") Complainant provides screenshots showing that Respondent uses the disputed domain name to pass off as Complainant and to offer competing services using Complainant's marks and images. The Panel finds that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus Respondent has no rights under Policy ¶¶ 4(c)(i) or (iii).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses the <starwoodpettransport.co> domain name in bad faith to pass off as Complainant for Respondent's financial gain. The Panel agrees and finds bad faith attraction for commercial gain under Policy ¶ 4(b)(iv).  See Charter Communications Holding Company, LLC v. MIZHAR salem, FA 1774836 (Forum Apr. 4, 2018) (finding bad faith in registration of disputed domains because "[u]sing a disputed domain name to trade upon the goodwill of a complainant for commercial gain . . . can evidence bad faith under Policy ¶ 4(b)(iv).").

 

Complainant also claims that Respondent had knowledge of Complainant's rights in the when it registered the disputed domain name, as Respondent uses Complainant's marks and images on the resolving website to directly compete with Complainant. The Panel agrees and finds further bad faith under Policy ¶ 4(a)(iii). See Charter Commc'ns Holding Co. v. MIZHAR salem, FA 1774836 (Forum April 4, 2018) (finding bad faith registration of the domain name <charterspectrumonline.com> because "[a]ctual knowledge of a complainant's mark prior to registering a confusingly similar domain name can evidence bad faith under Policy ¶ 4(a)(iii).").

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <starwoodpettransport.co> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Sandra J. Franklin, Panelist

Dated: November 1, 2023