Graebel Van Lines, Inc. v.
Claim Number: FA0805001195954
Complainant is Graebel Van Lines, Inc. (“Complainant”), represented by Steven
P. Lipowski, of Ruder Ware, L.L.S.C.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <graebal.com>, registered with Compana, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 29, 2008; the National Arbitration Forum received a hard copy of the Complaint on May 30, 2008.
On June 6, 2008, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the <graebal.com> domain name is registered with Compana, LLC and that the Respondent is the current registrant of the name. Compana, LLC has verified that Respondent is bound by the Compana, LLC registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 11, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 1, 2008 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
A timely Response was received and determined to be complete on July 1, 2008.
On July 7, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh as Panelist.
Complainant requests that the domain name <graebal.com> be transferred from Respondent to Complainant.
It is the case set up by the complainant that Graebel Van Lines, Inc., its parent company, Graebel Companies, Inc. and its sister company Graebel Relocation services Worldwide, Inc., are in the business of providing moving, storage and relocation services. Graebel Van Lines, Inc. and its family of companies provide their services to many customers on a national and international basis.
The complainant has submitted that through extensive marketing efforts, sound business practices and Graebel’s commitment to customer service, Complainant and its related entities have earned an outstanding reputation in the moving, storage and relocation industry and have achieved a high level of recognition in the GRAEBEL and its related marks. As noted from the GRAEBEL certificate of registration, Complainant has been using the GRAEBEL trademark for its services since 1950.
Each of the GRAEBEL. GRAEBEL VAN LINES (AND DESIGN), and GRAEBEL ALL STAR FLEET registrations have become incontestable under 15 U.S.C. 1058, 1065. On the basis of these registrations, the complainant has submitted that an incontestable registration serves as “conclusive evidence of the validity of the registered mark and of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce.” 15 U.S.C. 1115 (b). In this behalf the complainant has also relied upon the earlier decisions in the case of Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (Nat. Arb. Forum Mar. 18, 2004) and Park ‘N Fly, Inc. v. Dollar park & Fly, Inc., 469 U.S. 189, 196 (1985) to confirm that incontestable registrations are conclusive evidence of the registrant’s exclusive right to use the mark).
The complainant contends that the Respondent acquired the domain name <graebal.com> at some point in 2005, according to the relevant WHOIS directory listing. The Respondent uses the disputed domain name to list various searches linking users to websites where the products and services of competitors of Complainant and its related entities are sold. It is submission of the complainant that currently, the disputed domain name provides users with a number of hyperlinks to present Internet searches, which hyperlinks are titled under such headings as “Moving services,” “Moving companies,” “International movers,” “Moving,” and several other similar headings. These hyperlinks then connect to a preset search based upon the hyperlink title which provides the user with a number of additional hyperlinks connecting to websites which offer services and products provided by competitors of Complainant and its related entities in the moving, storage and relocation industries.
The complainant has highlighted the similarity between the disputed domain name and the registered service marks of Complainant noted above and contends that they have striking similarities and are virtually identical. The disputed domain name is the same as Complainant’s several registered service marks noted above (and is the same as Graebel Relocation Services Worldwide, Inc.’s registration noted above as well), or at least the first word of them as the case may be, with only a single letter changed between the disputed domain name and the registered marks of Complainant. More specifically, the only change the Respondent has made with respect to the disputed domain name from the registered service marks of Complainant is to change the last vowel in the word Graebel from an “e” to an “a”.
According to the complainant, the sight, sound and commercial impression provided by the disputed domain name and the registered service marks of Complainant are virtually identical. Clearly, given the similarity between the disputed domain name and Complainant’s registered service marks, they would be virtually indistinguishable to purchasers in the marketplace or users of the Internet.
The complainant has thus submitted that the disputed domain name “GRAEBAL.COM” is confusingly similar to the registered service marks of Complainant noted above and in which the Complainant has rights. The disputed domain name is nearly identical to these registered service marks. That fact, when combined with the use of the disputed domain name by the Respondent for the operation of a website that redirects users to websites selling products and services in the same industries as Complainant and its related entities, leads to the inescapable conclusion that the disputed domain name is in fact confusingly similar to the registered service marks of Complainant as noted above.
To establish absence of bonafide on the part of the respondent, it has been submitted by the complainant that the Respondent’s website located by entering the disputed domain name is a commercial website that is laden with revenue-generating advertisements and links to goods and services of third parties in the moving, storage and relocation industry. Respondent has no association with the name GRAEBEL or any derivative thereof and instead only uses the disputed domain name to divert customers from Graebel’s own website at <graebel.com> to the Respondent’s website, whereby Respondent commercially benefits from this practice through increased traffic at its own website.
In support of the above-mentioned submission of the complainant that using a domain name containing another party’s trademark to operate a portal website that generates advertising and click-through revenue is not a bona fide offering of goods or services or a noncommercial fair use of the domain name, the complainant has placed reliance on the earlier decisions including in the case of Elsevier B.V. v. Domain Deluxe, FA 237520 (Nat. Arb. Forum Mar. 24, 2004). The complainant submits that in the above-mentioned case, the panel observed to the effect that “Respondent uses the disputed domain name to host a portal website that is principal purpose is to generate revenue via the use of advertisements…..[S]uch an enterprise qualifies as neither a bonafide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.”.
It is also the plea of the complainant that the respondent does not offer its own services on this website. It rather seeks to generate revenue by treading on the good name and registered service marks of Complainant through increased traffic on its own website. Thus, the complainant submits that the use of a confusingly similar domain name in this manner further evidences that Respondent intentionally attempts to attract for commercial gain internet users to its website by creating a likelihood of confusion with Complainant’s registered service marks noted above. Quite simply, Respondent has no legitimate interests in the disputed domain name.
According to the complainant, there is no doubt that the Respondent selected the disputed domain name because it is virtually identical and confusingly similar to Graebel’s respected name in the moving, storage and relocation industries and to the registered service marks owned by Complainant and its related entities. The goods and services which the Respondent selected to provide links to on this particular website are for the goods and services of competitors of Complainant and its related entities and involve goods and services in the moving, storage, and relocation industry. To select this domain name for these goods and services is no coincidence, but rather plainly evidences a conscious decision of the Respondent to use the Graebel name to generate its own advertising revenue for its own website.
According to the complainant, using a domain name comprised of another’s mark for the purpose of providing links to third party commercial websites constitutes bad faith. The complainant has referred to and relied upon the decision in Leather Factory, Inc. v. Virtual Sky, FA 611781 (Nat. Arb. Forum Feb. 1, 2006) (finding bad faith registration and use because “Respondent is using the disputed domain name to provide links to third parties offering commercial products and services….similar to those provided by Complainant.”).
Based upon the foregoing, the complainant submits that it is clear that Respondent has intentionally attempted to attract for commercial gain internet, users to Respondent’s website by creating a likelihood of confusion with Complainant’s registered service marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service on Respondent’s website.
Respondent’s Consent to Transfer
After receipt of a cease and desist letter, Respondent responded that it would investigate Complainant’s claims to the disputed domain name. A grievance has been raised by the respondent that the Complainant waited less than two weeks and filed the instant proceeding. Respondent, after investigation, offered to transfer the disputed domain subject to a release of any claims against Respondent. Complainant refused. The respondent submits that had the Complainant waited a reasonable period it could have saved the cost of this proceeding as well as the cost of the preparation of the Complaint. However, since Respondent was willing to transfer prior to today’s date, Respondent agrees to the relief requested by the Complainant and will, upon order of the Panel, do so.
The respondent, however, has entered a caveat in making such an offer by submitting that this is not an admission on the part of the respondent to the three elements of ¶ 4(a) of the Policy but rather an offer of “unilateral consent to transfer” as prior panels have deemed it.
While making such a conditional offer, the respondent has referred to the decision in Cartoon Network LP, LLLP v. Morgan, D2005-1132 (WIPO Jan. 5, 2006)[i] where the panel noted that where the Respondent has made an offer to transfer there were numerous ways the Panel could proceed:
(i) to grant the
relief requested by the Complainant on the basis of the Respondent’s consent
without reviewing the facts supporting the claim (see Williams-Sonoma, Inc.
v. EZ-Port, WIPO Case
No. D2000-0207; Slumberland
The respondent has referred to Rule 10(c)’s caution for “due expedition” decided that the best and most expeditious course for the Panel would be that “a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. According to the respondent, this is clearly the most expeditious course. The respondent has referred to and relied upon the decision in Williams-Sonoma, Inc. v. EZ-Port, Case No. D2000-0207 (WIPO May 5, 2000).
For the foregoing reasons, Respondent requests that the Panel order the immediate transfer of the disputed domain name.
C. Additional Submissions
No additional submissions were made either by Complainant or Respondent.
The Panel finds that the domain name <graebel.com> belongs to Complainant as Complainant is the owner thereof.
Respondent registered and is using the disputed domain name <graebal.com> to list various searches linking users to websites where the products and services of competitors of Complainant and its related entities are sold.
Respondent does not have any license or other agreement to use Complainant’s famous mark.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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;
(1) Respondent has no rights or legitimate interests in respect of the domain name; and
(2) the domain name has been registered and is being used in bad faith.
Identical and/or Confusingly Similar
Respondent has admitted in his response to the complaint of Complainant that it is ready to offer the transfer without inviting the decision of the Panel in accordance with the Policy.
However, in the facts of this case, the Panel is of the view that the transfer of the disputed domain name deserves to be along with the findings in accordance with the Policy. The disputed domain name is almost identical except the difference of ‘a’ and ‘e.’
Rights or Legitimate Interests
It is admitted on record that Respondent does not carry on any business of moving, storage and relocation industry. It is also admitted that Respondent is using the disputed domain name to list various searches linking users to websites where the products and services of competitors of Complainant and its related entities are sold. The disputed domain name provides users with a number of hyperlinks to prevent searches, which hyperlinks are titled under such headings as “Moving services,” “Moving companies,” “International movers,” “Moving,” and several other similar headings. These hyperlinks then connect to a preset search based upon the hyperlink title which provides the user with a number of additional hyperlinks connecting to websites which offer services and products provided by competitors of Complainant and its related entities in the moving, storage and relocation industries.
Having regard to the totality of facts and circumstances of the present case, the Panel has no hesitation in coming to the conclusion that Respondent has no legitimate interest in the disputed domain name.
Registration and Use in Bad Faith
The Panel accepts that the registration of the disputed domain name by Respondent is entirely in bad faith. Respondent had no occasion or justification of any kind in registering the disputed domain name which is identical to the domain name of Complainant. Complainant is in the business of moving, storage and relocation industry with the name and caption of “Graebel” for last more than 5 decades. It has acquired reputation in this service industry.
The Panel finds that Respondent is using the disputed domain name in bad faith under Policy 4(b)(iii) and (iv). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy 4(b)(iii) [and] (iv).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <graebal.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Esq., Panelist
Dated: 17th July, 2008
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[i] Cartoon Network LP, LLLP v. Mike Morgan, Case No. D2005-1132 (WIPO Jan. 6, 2006).