National Arbitration Forum

 

DECISION

 

Junk My Car, LLC v. Chesly Cherizol

Claim Number: FA0901001245300

 

PARTIES

Complainant is Junk My Car, LLC (“Complainant”), represented by Fred H. Perkins, of Morrison Cohen LLP, New York, USA.  Respondent is Chesly Cherizol (“Respondent”), Florida, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <junk-mycar.com> and <junkmacar.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

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.

 

FERNANDO TRIANA, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 29, 2009; the National Arbitration Forum received a hard copy of the Complaint on January 30, 2009.

 

On February 1, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <junk-mycar.com> and <junkmacar.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the names.  Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 February 6, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 26, 2009 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@junk-mycar.com and postmaster@junkmacar.com by e-mail.

 

Respondent’s informal and yet unofficial e-mail reply to the formal service of the proceeding, was received in electronic copy on February 26, 2009; however no hard copy was received prior to the Response deadline.  Thus the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5.

 

On March 4, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed FERNANDO TRIANA, Esq. as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

This Complaint is based upon Complainant long-time use and ownership of the JUNK MY CAR trademarks and copyright in connection with car removal services that tows away customer junk automobiles or other vehicles. Complainant also relies herein on its extensive promotion and advertisement of “JUNK MY CAR” services which has also acquired common law trademark rights in the domain names in dispute, sufficient enough to invoke protection.

 

In that sense, Complainant basic contentions are as follows:

 

1.      The domain names that Respondent registered <junk-mycar.com> and <junkmacar.com>, are confusingly similar to Complainant’s marks and copyright registrations supported and provided under exhibits “E” and “F” of the Complaint. Respondent’s Domain Names are Identical or Confusingly Similar to Complainant’s trademarks and copyright. The Respondent infringes upon and violates the Complainant’s rights under ICANN Policy and the Respondent should have known that JUNK MY CAR was a registered trademark.

 

2.      Respondent has no rights to or legitimate interests in neither <junk-mycar.com> nor <junkmacar.com> domain names. Likewise, the Respondent has neither known rights nor a legitimate interest in the Domain Names in dispute. Furthermore, Complainant submits that because of the widespread reknown, use, promotion, distribution and advertisement by Complainant of its marks and in particular, Complainant’s services along the United States of America, Respondent knew or should have known of Complainant’s rights in the marks, and the valuable goodwill represented and symbolized thereby when it registered the domain names <junk-mycar.com> and <junkmacar.com>.

 

3.   Respondent registered and uses the <junk-mycar.com> and <junkmacar.com> domain names in bad faith. The prior, as logical consequence of the previous contentions and thus, Complainant argues that Respondent’s Registration of the Domain Name should be considered as having been registered and being used in bad faith and according to the ICANN rule 3(b)(ix)(3), the Complainant claims that the Respondent had an affirmative obligation of not to register domain names that could violate any registered service or trademark.

 

The Complainants requests that the Panel issues a decision that the domain-names be transferred.

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding and as per the unique e-mail submitted by it to the National Arbitration Forum on February 6, 2009 makes no controversy whatsoever regarding the substantial arguments of the current dispute. The Panel hereby considers that said e-mail is not in compliance with ICANN Rule 5.

 

FINDINGS

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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

 

Likewise, paragraph 10(d) of  “The Rules”, provides that: “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.”

 

In the present case, the Panelist wants to place emphasis in the importance of the evidence filed by Complainant to prove its assertions, which has been studied to determine its relevance and weight in arriving at a decision.

 

Additionally the Panelist considers noteworthy the fact that the Respondent has not filed the hardcopy of the response to the complaint. As consequence, the Panelist may decide whether or not to consider Respondent’s Submission.[1]

 

The fact that the Respondent has not submitted neither hardcopy nor any kind of substantial response to the Complaint, according to Paragraph 14 (b) of The Rules, constitutes a technical default, which allows the Panelist to take such fact as evidence against the party in default, i.e., the Respondent.

 

In that sense considering that Respondent failed to provide any formal response or evidence, the Panel has no different alternative than assuming its lack of interest on the final decision.

 

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 names registered by the Respondent are identical 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;

 

(3)   The domain name has been registered and is being used in bad faith.

 

 

DISCUSSION

 

Identical and/or Confusingly Similar

 

The first element of the paragraph 4(a) of the Policy requires existence of a trademark or a service mark. The industrial property rights are only acquired by registration before the competent office in many jurisdictions of the world.

 

Complainant contends that the Domain Name is identical with and confusingly similar to the several trademarks and copyright JUNK MY CAR pursuant to the Policy paragraph 4(a)(i), because it wholly incorporates the same with the addition of a generic or merely descriptive term.[2] 

 

The worldwide-accepted definition of a trademark, involves the concept of distinctive force as the most relevant element. Said force gives the sign the capability to identify the products or services of its owner and differentiate them from the product and services of other participants in the market.

 

When a sign is registered as a trademark, it is surrounded by a presumption of existence of sufficient distinctive force, and the owner is granted with an exclusive right over the trademark, which entitled him to prevent any third party from using the registered sign or any other sign confusingly similar to it.

 

However, as Complainant suitably asserts within Complaint, the UDRP does not discriminate between registered and unregistered trademarks and thus, it is well established that a Complainant need not own a registered trademark to invoke the policy. It is sufficient in certain common law jurisdictions that Complainant have rights in an unregistered trademark as to deserve legal protection.[3] 

 

In fact, Complainant has provided evidence of a registration for the JUNK MY CAR marks in the United States of America since 2006, of the copyright registration for the work titled “JUNK MY CAR WEBSITE” since 2004, as well as effective use of its unregistered trademarks or common law trademark with which prosecuted 2 similar claims in the past.[4] The prior gives Complainant a legitimate right to file the present complaint.

 

The registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.[5] Complainant trademark’s and copyright registrations appears to be incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated services.

 

Respondent has the burden of refuting this assumption[6] and in this case, it has failed to contest Complainant's assertions regarding its trademark rights. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights of the cited trademarks.

 

Before establishing whether or not the disputed domain name is confusingly similar to the Complainant’s registered trademarks, the sole panelist wants to point out that the entirety of the mark JUNK MY CAR is included in the Respondent Domain Names <junk-mycar.com> and <junkmacar.com>. 

 

At this point, it is essential to set forth that the infringing domain name <junk-mycar.com> is essentially identical and confusingly similar with Complainant’s trademark “JUNK MY CAR duly proven within this administrative proceeding and provided under Exhibit “E.” The domain name contains Complainant’s entire trademark “JUNK MYCAR”  and simply adds a hyphen between “junk” and “my.” Moreover, it differs from Complainant’s trademark by only the hyphen, which is a common non-unique form of punctuation. In that sense, it is clear that the addition of the hyphen does little to avoid the risk of confusion as the Respondent’s domain name remains virtually the same and almost identical in appearance and impression to the trademark “”JUNK MY CAR” of Complainant.

 

Therefore, the Domain Name<junk-mycar.com> is identical and confusingly similar to the marks of Complainant pursuant to the Policy paragraph 4(a)(i). Actually the addition of the aforementioned hyphen is not a distinguishing difference.[7]

 

With regard to the domain name <junkmacar.com>, it is also essentially identical and confusingly similar with Complainant’s trademark “JUNK MY CAR.” The infringing domain name contain Complainant’s entire trademark “JUNK MY CAR” and simply changes the letter “y” to an “a” in “my”. As previously analyzed, this sole and minor modification lacks of enough distinctiveness   from the legitimate mark “JUNK MY CAR” of Complainant.

 

In view of the foregoing, the sole Panelist concludes that this evidence establishes Complainant’s rights in the JUNK MY CAR trademarks for purposes of Policy ¶ 4(a)(i). This because ICANN panels have recognized that reproducing a trademark in its whole is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark; indeed, the addition of other terms in the domain name does not affect a finding that the domain name is identical or confusingly similar to the Complainant's registered trademark.

 

Rights or Legitimate Interests

 

Paragraph 4(c) of the Policy, determines that the following circumstances in particular but without limitation, if found by the sole panelist to be present, shall demonstrate the Respondent’ s rights or legitimate interest to the domain name:

 

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue

Before shifting the burden to Respondent, 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).

 

The Complainant’s registrations and common law legitimate use of its trademark JUNK MY CAR appears to be a prima facie incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the same in connection with the stated services.[8] It’s the Respondent who has the burden of refuting this assumption.

 

After an investigation, made ex officio on March 11, 2009, the sole panelist has found that the Complainant is using his trademark in the domain name that he owns (<junkmycar.com>). When the panelist entered said web page, the following information appears therein:

 

 

 

JUNK MY CAR REGISTERED TRADEMARK BEFORE THE UNITED STATES PATENT AND TRADEMARK OFFICE: REG Nº 3.555.801 IS THE FOLLOWING

 

 

 

Furthermore, when exploring for the services offered by Complainant through Internet searching engines, the Panel concluded that the first one in recognition, appearance and notoriety is the domain name JUNKMYCAR.COM of Complainant as shown below:

 

 

Likewise, the Panel also searched for Respondent’s registered and disputed domain

names, with the following results:

 

JUNK-MYCAR.COM

http://sell-my-junk-crash-used-car-in-orlando.com/default.aspx

 

 

It is clear for the Panel that the services offered by means of the above referenced domain names are identical to those offered by Complainant, but the one of Respondent, restricted to the State of Florida. Consequently, it is clear that Respondent has no rights or legitimate interest in respect to said domain name as Respondent is trading off on Complainant’s services by admittedly reaping the financial benefits of customers who go to Respondent’s site mistakenly believing them to be Complainant’s site.

 

Regarding the domain name <junkmacar.com>, the search engine showed mistaken information and thus, said domain was inaccessible:

 

 

 

 

Taking into consideration the aforementioned and bearing in mind that Respondent failed to provide response to the Complaint, the Panel holds that the Respondent is not affiliated with, licensed by, in privity with, has not been given any permission to use the JUNK MY CAR marks by Complainant and is not otherwise in any way connected with Complainant or its affiliates. ICANN Rule 3(b)(ix)(2).

 

Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”) (emphasis added).

 

In addition, Respondent is using the disputed domain name to offer junk car removal services in direct competition with Complainant.  The Panel finds that such use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See 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); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the Respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).

 

Therefore, the sole panelist considers that due to the fact none of the contentions made by the Complainant were refuted and after reviewing the evidence attached to the present case and the one obtained ex officio, it has been proven that there is no right or legitimate interest in the disputed domain names by Respondent, therefore it does not meet Paragraph 4(a)(ii) of the Policy.

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent has acted in bad faith. The sole panelist has considered the fact that Respondent has failed to evidence its legitimate rights or interest in the disputed domain names. Notwithstanding the aforementioned, the sole panelist will evaluate Complainant assertions and evidence regarding Respondent bad faith in the registration of <junk-mycar.com> and <junkmacar.com> domain names.

According to paragraph 4(b) of the Policy the following circumstances, in particular but without limitation, if found by the panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

The sole panelist considers that the Complainant has a history in the towing business, taking into consideration the usage that it has given of its trademarks. Moreover, the fact that the Complainant has registered its trademarks JUNK MY CAR, is sufficient evidence for the sole panelist that the Complainant is identifiable in the market by its distinctive sign.

 

Also the domain names junk-mycar.com> and <junkmacar.com> are clearly connected to the Complainant’s trademarks and copyright for business operations and services as the sole panelist could confirm regarding and checking the <junkmycar.com>.

 

Respondent is using the disputed domain names to intentionally divert Internet users to the associated website by creating a likelihood of confusion, where Respondent directly competes with Complainant for commercial gain.  The Panel finds that such use of a disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the Respondent’s use of the <saflock.com> domain name to offer goods competing with the Complainant’s illustrates the Respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the Respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the Complainant).

 

In addition, the Panel finds that Respondent’s use of the disputed domain names to disrupt the business of Complainant by offering services in direct competition with Complainant is also evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of a competitor of Complainant . . .”); see also 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).”).

 

For the sole panelist it is clear that Respondent failed to evidence use of the disputed domain for a good faith purpose.

The circumstances provided in paragraph 4(b) of the Policy are not limiting factors of how bad faith can be established, but allow merely basic parameters for the sole panelist when determining bad faith of Respondent. Noticing the fact that Respondent ignored the letter that the Complainant sent requesting the transfer of the domain name, has also been addressed by other administrative panels as follows:

                                    “Respondent has ignored Complainant’s request to transfer ownership of the domain name. Failure positively responds to a Complainant’s effort to make contact provides ‘ strong support for a determination of bad faith and registration and use’”[9]

 

Therefore, due to the study made by this Panel, it is considered that Complainant has met the requirements of Paragraph 4(a)(iii) of the Policy, in demonstrating Respondent’s bad faith in the registration of the <junk-mycar.com> and <junkmacar.com> domain names.

 

DECISION

 

The Panel has found that the Complainant has several trademark registrations identical or confusingly similar to the domain names in dispute. That the Respondent lacks of legitimate interest. That the domain names were used in bad faith. Therefore, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is ordered that the <junk-mycar.com> and <junkmacar.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

 

FERNANDO TRIANA, Esq.

 Panelist

Dated:  March 18, 2009