All Occasion Limousine, Inc. v. Emerald
Square Limousine
Claim Number: FA0608000767487
PARTIES
Complainant is All Occasion Limousine, Inc. (“Complainant”), represented by Anthony R. Leone, of Leone Law, LLC, 1536 Cranston Street, Cranston, RI 02920. Respondent is Emerald Square Limousine (“Respondent”), represented by John E. Lennon, 38 Washington Street, Plainville, MA 02762.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <alloccassionlimo.com>,
registered with Tlds, LLC d/b/a SRSplus.
PANEL
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 DiSalle Is Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on August 3, 2006; the National Arbitration Forum received a
hard copy of the Complaint on August 3, 2006.
On August 4, 2006, Tlds, LLC d/b/a SRSplus confirmed by e-mail to the
National Arbitration Forum that the <alloccassionlimo.com>
domain name is registered with Tlds, LLC d/b/a SRSplus and that the Respondent
is the current registrant of the name. Tlds,
LLC d/b/a SRSplus has verified that Respondent is bound by the Tlds, LLC d/b/a
SRSplus 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 August 11, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of August 31, 2006 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 postmaster@alloccassionlimo.com by e-mail.
A timely Response was received and determined to be complete on August
30, 2006.
On September 5, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Richard DiSalle as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The registered service mark for All Occasion Limousine, Inc. under
Rhode Island law is ALL OCCASION TRANSPORTATION, which was registered as a
service mark for the company on June 15, 2001.
All Occasion was incorporated and has done business under the All
Occasion name since organizing under Rhode Island law on February 27,
1995. All Occasion Transportation has
operated under the All Occasion name since the business first opened in
1990. Additionally, All Occasion has
been a registered foreign corporation in the Commonwealth of Massachusetts
since May 26, 2004.
All Occasion has been doing business as a transportation company for
over fifteen years under the name All Occasion Limousine and/or All Occasion
Transportation. The services provided
included business and personal transportation by limousine, sedan, luxury
sedan, bus, or van. The stated
corporate purpose in its Articles of Incorporation is to “Provide Chauffer and
Limousine Service.”
The transportation services rendered throughout the South Eastern New
England area of Rhode Island, Massachusetts, Connecticut, and into the State of
New York. As All Occasion’s business
grows, it foresees itself registering for foreign corporation status in Connecticut,
as well as service mark protection in both Massachusetts and Connecticut. All Occasion has and will continue to use
its mark throughout New England and the Mid-Atlantic states where it primarily
does business. All Occasion will
continue to use its mark in over 450 cities that it services nationwide in the
years to come.
The use of the All Occasion name has become synonymous with the
complainant in the last 15 years gaining a secondary meaning because of its
reputation in the industry. All Occasion
has established a reputation of service, quality, and excellence in the
transportation industry. It is a member
of the National Livery Association and the New England Livery Association.
The use of the All Occasion name for over 15 years, the state trademark
registration of All Occasion Transportation, the secondary meaning that has
evolved through its recognition in the industry, and the use of its name to
generate business through its website all evidence the establishment of common
law rights in the All Occasion mark.
B. Respondent
Respondent acknowledges that <alloccassionlimo.com> is similar to <alloccasionlimo.com>. However it questions whether Complainant has rights to the trademark or service mark All Occasion Limousine outside of the state of Rhode Island and elsewhere throughout the country. The name All Occasion Limousine is a commonly used name for limousine companies. A quick search of the Internet reveals numerous limousine companies throughout the country, two as close as Massachusetts, using this service mark or name, including the use of the <alloccasionlimos.com>, as well as the <alloccasionslimousines.com> domain names.
Emerald Square Limousine Service, Inc. has been a Massachusetts corporation since April 7, 1989. Its plans for future development have and still include the opening of a limousine/livery service in the Manchester NH area. It is at this future location that it plans to utilize the name of All Occasion Limousine. Because <alloccasionlimo.com>, <alloccasionlimos.com>, <allocclimo.com> and other similar domain names were already taken, it registered the closest name available for its use.
Respondent claims that it has not registered this domain name in bad faith, and never attempted to sell, rent or transfer the domain name to another party, including the Complainant for valuable consideration.
Nor has it ever misrepresented itself as All Occasion Limousine, and has not yet advertised the name or the <alloccassionlimo.com> domain name. Because it owns the <alloccassionlimo.com> domain name, it has “parked” it and has it automatically refresh to its main home page of Emerald Square Limousine.
FINDINGS
(1)
the domain name
registered by the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
DISCUSSION
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 the 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 the Respondent
is identical or confusingly similar to a
trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant alleges that it holds a
state trademark registration for the ALL OCCASION TRANSPORTATION mark with the
Rhode Island Secretary of State’s Office.
However, Complainant does not allege that it has registered any mark
containing the ALL OCCASION mark with the terms “limo” or “limousine” and only
provides evidence of an application to register the ALL OCCASION TRANSPORTATION
mark, not the actual registration. Nevertheless,
the Complainant can establish rights in the ALL OCCASION LIMOUSINE mark through
common law rights and that ownership of a trademark registration in the mark is
not required for purposes of Policy ¶ 4(a)(i).
See British Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23,
2000) (noting that the Policy “does not distinguish between registered and
unregistered trademarks and service marks in the context of abusive
registration of domain names” and applying the Policy to “unregistered
trademarks and service marks”); see also SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13,
2000) (finding that the Rules do not require that the complainant's trademark
or service mark be registered by a government authority or agency for such
rights to exist).
As a result of its continuous use
of the ALL OCCASION LIMOUSINE mark in the New England region, Complainant’s
mark has acquired secondary meaning in connection with its limousine
services. Complainant has also provided
a copy of a press release announcing it as the “Operator of the Year” in the
medium category of transportation providers for the year 2002, as determined by
LCT Magazine, a national trade publication catering to “luxury
chauffeured transportation” companies.
The ALL OCCASION LIMOUSINE mark has acquired secondary meaning, and Complainant
has established common law rights in the mark pursuant to Policy ¶
4(a)(i). See Quality Custom
Cabinetry, Inc. v. Cabinet Wholesalers, Inc., FA 115349 (Nat. Arb. Forum
Sept. 7, 2002) (finding that the complainant established common law rights in
the mark through continuous use of the mark since 1995 for the purpose of
Policy ¶ 4(a)(i)); see also Kahn Dev. Co. v. RealtyPROshop.com, FA
568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE
AT SANDHILL mark acquired secondary meaning among local consumers sufficient to
establish common law rights where the complainant had been continuously and
extensively promoting a real estate development under the mark for several
years).
With respect to the confusing similarity of the <alloccassionlimo.com> domain name to Complainant’s ALL OCCASION LIMOUSINE mark, the Respondent has failed to sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i) by merely misspelling the term “occasion” and abbreviating the term “limousine.” See Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding that <davemathewsband.com> is a common misspelling of the DAVE MATTHEWS BAND mark and therefore confusingly similar); see also Modern Props, Inc. v. Wallis, FA 152458 (Nat. Arb. Forum June 2, 2003) (“Notwithstanding the analysis by Respondent, ‘modprops’ is a contraction or shorthand for ‘Modern Props.’ ‘Mod’ connotes [sic] ‘modern’ regardless of any other dictionary meanings, so the names are substantially similar in meaning.”).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Complainant alleges that Respondent
is not commonly known by the <alloccassionlimo.com> domain
name because Respondent does business as “Emerald Square Limousine” and is a
close competitor of Complainant in the New England transportation services
industry. Complainant asserts that the
WHOIS information lists “Emerald Square Limousine” as the registrant of the
disputed domain name and that Complainant did not authorize or license
Respondent to register a domain name containing any variation of Complainant’s
ALL OCCASION LIMOUSINE mark. Respondent
is not commonly known by the <alloccassionlimo.com> domain name,
and Respondent does not have any rights or legitimate interests in the domain
name pursuant to Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone Corp.,
FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate
interests because the respondent is not commonly known by the disputed domain
name or using the domain name in connection with a legitimate or fair use); see
also The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006)
(concluding that the respondent was not commonly known by the disputed domain
names where the WHOIS information, as well as all other information in the
record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark).
Additionally, Complainant asserts that Respondent is a competitor of Complainant and that Respondent’s <alloccassionlimo.com> domain name redirects Internet users to Respondent’s website, where Respondent offers competing limousine and other transportation services. Complainant contends that several potential customers hired Respondent instead because of the confusingly similar domain name. Respondent is redirecting Internet users searching for Complainant’s transportation services to Respondent’s competing website for commercial gain and that such diversionary use is not 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). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Complainant maintains that Respondent’s use of the <alloccassionlimo.com> domain name to redirect Internet users to Respondent’s competing website suggests that Respondent registered the disputed domain name for the primary purpose of disrupting Complainant’s business. Respondent has registered and is using the <alloccassionlimo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by diverting Internet users to its own website selling competing products and services. See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
Respondent is taking advantage of the
confusing similarity between the <alloccassionlimo.com>
domain name and Complainant’s ALL OCCASION LIMOUSINE mark in order to profit
from the goodwill associated with the mark because Respondent is redirecting
Internet users seeking Complainant’s limousine services to Respondent’s
competing website. Many previous panels
have considered such registration and use to be in bad faith under Policy ¶
4(b)(iv). See Busy Body, Inc. v. Fitness Outlet, Inc., D2000-0127 (WIPO Apr.
22, 2000) (finding bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent and the complainant were in the same line of business and the
respondent was using a domain name confusingly similar to the complainant’s
FITNESS WAREHOUSE mark to attract Internet users to its
<efitnesswarehouse.com> domain name); see also Nokia
Corp. v. Private, D2000-1271
(WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy
¶ 4(b)(iv) where the domain name resolved to a website that offered similar
products as those sold under the complainant’s famous mark).
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 <alloccassionlimo.com>
domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: September 26, 2006
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