Graebel Van Lines, Inc. v.
Claim Number: FA0805001195954
PARTIES
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.
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.
Mr. Maninder Singh as Panelist.
PROCEDURAL HISTORY
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 postmaster@graebal.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.
RELIEF SOUGHT
Complainant requests that the domain name <graebal.com> be
transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
B. Respondent
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.
FINDINGS
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.
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;
(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).”).
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 <graebal.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Esq., Panelist
Dated: 17th July, 2008
Click Here to return to our Home Page
National Arbitration Forum