A Touch of Class
Transportation Inc. d/b/a Touch of Class Limousine Service v. Doug Griffith
Claim Number: FA0706001008199
PARTIES
Complainant is A Touch of Class Transportation Inc. d/b/a Touch of
Class Limousine Service (“Complainant”), represented by Ryan W. Corrigan, of Dowling Aaron & Keeler Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <atouchofclasslimoservice.com>, <atouchofclasslimousineservice.com>,
<thetouchofclass.com>, and <touchofclasslimoservice.com>,
registered with Domaindiscover.
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 13, 2007; the
National Arbitration Forum received a hard copy of the Complaint on June 15, 2007.
On June 15, 2007, Domaindiscover confirmed by e-mail to the
National Arbitration Forum that the <atouchofclasslimoservice.com>, <atouchofclasslimousineservice.com>,
<thetouchofclass.com>, and <touchofclasslimoservice.com>
domain names are registered with Domaindiscover
and that Respondent is the current registrant of the names. Domaindiscover
has verified that Respondent is bound by the Domaindiscover
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 20, 2007, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of July 10, 2007 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@atouchofclasslimoservice.com, postmaster@atouchofclasslimousineservice.com, postmaster@thetouchofclass.com, and postmaster@touchofclasslimoservice.com by e-mail.
A timely Response was received and determined to be complete on July 9, 2007.
Additonal Submissions were filed by Complainant on July 16, 2007 and
Respondent on July 24, 2007.
On July 17, 2007, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed John J. Upchurch as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
1.
The
disputed domain names are identical or confusingly similar to Complainant’s
mark;
2.
Respondent
lacks rights and legitimate interests in the disputed domain names; and
3.
Respondent’s
registration and use of the disputed domain names is in bad faith.
B.
Respondent
1.
Complainant
has failed to meet its burden of proof.
2.
The
disputed names were purchased from a third party.
3.
The
domain names are not being used in bad faith.
C.
Additional
Submissions
The Additional Submissions underscored the arguments set forth in the
original Complaint and Response.
FINDINGS
The Panel finds in favor of Complainant with
respect to each of the three elements of Paragraph 4(a) of the Policy.
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 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;
(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.
Complainant asserts rights in the
TOUCH OF CLASS LIMOUSINE SERVICE mark through its trademark registration with
the state of
The Panel also finds that
Complainant holds common law rights in the TOUCH OF CLASS LIMOUSINE SERVICE mark. Complainant asserts that it has used the mark
since as early as 1988 to advertise its limousine transportation services in
the Central Valley, Bay Area,
The Panel finds that Respondent’s <atouchofclasslimoservice.com>, <atouchofclasslimousineservice.com> and <touchofclasslimoservice.com> domain names are confusingly
similar to Complainant’s TOUCH OF CLASS LIMOUSINE SERVICE mark pursuant to
Policy ¶ 4(a)(i). Each of the domain
names contain the dominant portion of Complainant’s mark with alterations such
as adding the article “a” at the beginning or shortening the word “limousine”
to the commonly used term “limo.” The
Panel finds that these alterations are insignificant and do not detract from
the overall impression of Complainant’s mark.
See John Fairfax
Publ’ns Pty Ltd. v. Pro-Life Domains Not for
The Panel also finds that Respondent’s <thetouchofclass.com> domain name is confusingly similar to Complainant’s TOUCH OF CLASS LIMOUSINE SERVICE mark since the disputed domain name still contains the distinctive “touch of class” portion of Complainant’s mark. See Am. Eagle Outfitters, Inc. v. Admin, FA 473826 (Nat. Arb. Forum June 22, 2005) (finding the <americaneaglestores.com> domain name to be confusingly similar to the complainant’s AMERICAN EAGLE OUTFITTERS mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
With respect to all four disputed domain names, the Panel finds that the addition of the generic top-level domain (“gTLD”) “.com” is without relevance to this analysis since a top-level domain is required of all domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent
to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum
Sept. 25, 2006) (“Complainant must first make a prima facie showing that
Respondent does not have rights or legitimate interest in the subject domain
names, which burden is light. If
Complainant satisfies its burden, then the burden shifts to Respondent to show
that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Respondent is not commonly known by the disputed domain names since the WHOIS information identifies Respondent as “Doug Griffith.” Complainant has stated that Respondent is a former employee of Complainant, but that relationship lasted only from June 2002 to January 2003. Since that time, Respondent has not been authorized to use Complainant’s mark or any variation thereof. Therefore, the Panel concludes that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Complainant alleges
that Respondent is using the disputed domain names to reroute Internet users to
Respondent’s website, <limohelp.com>, which advertises Respondent’s
competing limousine services. Respondent
contends that the disputed domain names resolve to a “dead end;” however, Complainant
supports its assertion by submitting screen printouts dated June 12, 2007 which
show a webpage advertising limousine services under the business name “Limo
Help.” Respondent contends that this
“Limo Help” business is not connected to Respondent. Whether or not “Limo Help” is Respondent’s
business, the Panel still finds that Respondent’s use of the disputed domain
names to advertise any business that competes with Complainant does not
constitute 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 Coryn Group, Inc. v. Media Insight,
FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not
using the domain names for a bona fide offering of goods or services nor
a legitimate noncommercial or fair use because the respondent used the names to
divert Internet users to a website that offered services that competed with
those offered by the complainant under its marks); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb.
Forum Dec. 1, 2003) (finding that the respondent was not using the domain name
within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used
the domain name to take advantage of the complainant's mark by diverting
Internet users to a competing commercial site).
The Panel finds that Respondent’s
use of the disputed domain names to advertise competing limousine services may
disrupt Complainant’s business.
Therefore, the Panel concludes that Respondent’s registration and use of
the disputed domain names constitutes bad faith pursuant to Policy ¶ 4(b)(iii). This finding can be made regardless of
whether or not “Limo Help” is Respondent’s business, as the Panel finds that
the disputed domain names do resolve to this competing site. See
Respondent had actual knowledge of
Complainant’s business and alleged trademark rights since Respondent is a former
employee of Complainant. Furthermore,
the record appears to indicate that Complainant and Respondent are both
situated in the
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 <atouchofclasslimoservice.com>, <atouchofclasslimousineservice.com>,
<thetouchofclass.com>, and <touchofclasslimoservice.com>
domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated:
August 14, 2007
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