national arbitration forum

 

DECISION

 

Carey International, Inc. v. Fabio Simon c/o Montreal Limo

Claim Number: FA0712001124304

 

PARTIES

Complainant is Carey International, Inc. (“Complainant”), represented by Sara L. Edelman, of Davis & Gilbert LLP, 1740 Broadway, New York, NY 10019.  Respondent is Fabio Simon c/o Montreal Limo (“Respondent”), 8092 De Bretane, Montreal, PQ h1p3y6 Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <montrealcareylimo.com>, registered with Godaddy.com, Inc.

 

PANEL

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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on December 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2007.

 

On December 28, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <montrealcareylimo.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name.  Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 January 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 24, 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 postmaster@montrealcareylimo.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On January 29, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the National Arbitration 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.”  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:

 

1.      Respondent’s <montrealcareylimo.com> domain name is confusingly similar to Complainant’s CAREY mark.

 

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

 

3.      Respondent registered and used the <montrealcareylimo.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Carey International, Inc., operates one of the largest premier limousine and transportation-related service companies.  Complainant’s business was created in 1922, and since that time Complainant has expanded its company to now provide service in seventy-five countries and 460 cities worldwide.  Complainant holds numerous registered trademarks around the world for the CAREY mark, including in Canada (Reg. No. TMA423,694 issued February 25, 1994).

 

Respondent, Fabio Simon, registered the <montrealcareylimo.com> domain name on September 2, 2003.  The disputed domain name resolves to a website that mimics Complainant’s, but offers competing limousine services.

 

DISCUSSION

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.”

 

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(e), 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 (Nat. Arb. 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.”).

 

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.

 

Identical and/or Confusingly Similar

 

Complainant alleges rights to the CAREY mark through its numerous trademark registrations around the world.  The Panel acknowledges that these registrations are sufficient to confer rights in the CAREY mark to Complainant pursuant to Policy ¶ 4(a)(i).  See Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).

 

Respondent alleges that the <montrealcareylimo.com> domain name is confusingly similar to Complainant’s CAREY mark.  The dominant portion of the disputed domain name contains Complainant’s mark in its entirety, and contains a few additions.  First, the disputed domain name adds the geographic identifier “Montreal,” but this does not sufficiently distinguish the <montrealcareylimo.com> domain name, especially since Complainant conducts business throughout Canada.  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar”).  The <montrealcareylimo.com> domain name also adds the generic word “limo” that is directly related to Complainant’s business, so this addition adds to the confusing similarity between the disputed domain name and Complainant’s mark.  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights.  The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).  Finally, the <montrealcareylimo.com> domain name adds the generic top-level domain (“gTLD”) “.com.”  However, it is well-established that the addition of a gTLD is irrelevant under an analysis of the Policy since all domain names are required to have a top-level domain.  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.”).  Based on this analysis, the Panel concludes that Respondent’s <montrealcareylimo.com> domain name is confusingly similar to Complainant’s CAREY mark pursuant to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have rights or legitimate interests in the <montrealcareylimo.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii).  Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).  See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also 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).  Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).

 

Under Policy ¶ 4I(ii), a respondent must prove that it is commonly known by the disputed domain name.  In this regard, there is some evidence in the record favoring Respondent since the WHOIS domain name registration information for the <montrealcareylimo.com> domain name identifies Respondent as “Fabio Simon c/o Montreal Limo.”  However, as stated above, the dominant portion of the disputed domain name is Complainant’s CAREY mark, and there is no evidence in the record indicating that Respondent conducts business as, or is commonly known by, the CAREY mark.  Furthermore, the WHOIS information is the only source to indicate that Respondent may conduct business under the name “Montreal Limo,” and Respondent’s failure to respond to the Complaint consequently does not disclose any evidence to support this claim.  Therefore, the Panel can and must conclude that Respondent is not commonly known by the <montrealcareylimo.com> domain name pursuant to Policy ¶ 4I(ii).  See Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’  However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).

 

Respondent is using the <montrealcareylimo.com> domain name to redirect Internet users to a website which is virtually identical to the reservations page of Complainant’s website.  The website which resolves from the disputed domain name prominently displays Complainant’s CAREY mark and logo.  Respondent is attempting to “pass itself off” as Complainant in an attempt to commercially benefit, and such use of the disputed domain name does not constitute a bona fide offering of goods and services under Policy ¶ 4I(i), or a legitimate noncommercial or fair use under Policy ¶ 4I(iii).  See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4I(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). 

 

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

 

Registration and Use in Bad Faith

 

While Respondent’s website that resolves from the <montrealcareylimo.com> domain name displays Complainant’s logo, Respondent actually offers its own limousine and transportation services that compete with Complainant.  This use of the disputed domain name is likely to mislead customers into doing business with Respondent when they intend to do business with Complainant.  Consequently, Complainant’s business is disrupted by Respondent’s use of the <montrealcareylimo.com> domain name.  Therefore, Respondent registered and is using the <montrealcareylimo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with Complainant’s business); see also DatingDirect.com Ltd. V. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent is using the <montrealcareylimo.com> domain name to redirect Internet users to a website which is virtually identical to the limousine and transportation services page of Complainant’s website.  In America Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002), the respondent used the disputed domain name to resolve to a website which prominently displayed the complainant’s trademarks and logos.  The panel noted that the respondent did this with full knowledge of the complainant’s business and trademarks.  Therefore, the panel concluded that the respondent’s registration and use of the disputed domain name constituted bad faith pursuant to Policy ¶ 4(b)(iv).  Similarly, in Target Brands, Inc. v. JK Internet Services, FA 349108 (Nat. Arb. Forum Dec. 14, 2004), the panel found that the respondent registered and used the disputed domain name in bad faith because the respondent not only registered the complainant’s famous “Target” mark, but used the disputed domain name to create a web page that was virtually indistinguishable from Complainant’s website.  Like the disputed domain names in America Online and Target, Respondent’s <montrealcareylimo.com> domain name resolves to a web page that is virtually identical to Complainant’s.  Furthermore, the website prominently displays Complainant’s CAREY logo.  Respondent obviously did this with full knowledge of Complainant’s business, and is trying to commercially benefit by attempting to “pass itself off” as Complainant.  Customers are very likely to be misled or confused as to the source or affiliation of Respondent’s limousine services advertised on the website that resolves from the disputed domain name.  Therefore, the Panel finds that Respondent registered and is using the <montrealcareylimo.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).

 

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

 

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 <montrealcareylimo.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  February 8, 2008

 

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