Texas Department of Transportation v. PrivacyProtect.org / Domain Admin
Claim Number: FA1108001402743
Complainant is Texas Department of Transportation (“Complainant”), represented by Dwayne K. Goetzel, Texas, USA. Respondent is PrivacyProtect.org / Domain Admin (“Respondent”), AU.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dontmesswithtexas.com>, registered with Power Brand Center, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 10, 2011; the National Arbitration Forum received payment on August 10, 2011.
On September 27, 2011, Power Brand Center, Inc. confirmed by e-mail to the National Arbitration Forum that the <dontmesswithtexas.com> domain name is registered with Power Brand Center, Inc. and that the domain name was locked. Power Brand Center, Inc. has verified that Respondent is bound by the Power Brand Center, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dontmesswithtexas.com. Also on August 30, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 22, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <dontmesswithtexas.com> domain name is confusingly similar to Complainant’s DON’T MESS WITH TEXAS mark.
2. Respondent does not have any rights or legitimate interests in the <dontmesswithtexas.com> domain name.
3. Respondent registered and used the <dontmesswithtexas.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Texas Department of Transportation, is a governmental agency who has used the DON’T MESS WITH TEXAS mark since 1985 in connection with a wide range of goods and services. Complainant claims rights in the DON’T MESS WITH TEXAS mark based on its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,616,831registered September 10, 2002), as well as common law rights dating back to 1985.
Respondent, PrivacyProtect.org / Domain Admin, registered the disputed domain name on August 19, 1996. The disputed domain name resolves to a website providing various links to products and services that are unrelated to Complainant, as well as links offering products competing with those offered by Complainant.
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.
Complainant claims rights in the DON’T MESS WITH TEXAS mark for the purposes of Policy ¶ 4(a)(i). Because Respondent’s registration of the disputed domain name predates Complainant’s registration of the mark, the Panel will examine the evidence regarding Complainant’s establishment of common law rights in the DON’T MESS WITH TEXAS mark. Previous panels have that a Complainant may establish rights in a mark pursuant to Policy ¶ 4(a)(i) without regard to registration with the USPTO. See 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). Complainant can demonstrate common law rights in a mark by showing that the mark has acquired secondary meaning through extensive and continuous use by Complainant. See 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).
Complainant has provided evidence that it spent over $20 million promoting and advertising the DON’T MESS WITH TEXAS mark and goods and services offered thereunder from 1985-1996, the year in which the disputed domain name was registered. Complainant has also provided evidence that awareness and recognition levels for the mark among Texans reached as high as 96% of the population, thanks in part to Complainant’s ongoing series of high-profile advertisements featuring celebrities, athletes, musicians, and Chuck Norris. The Panel finds the evidence presented sufficient to demonstrate Complainant’s extensive and continuous use of the mark, and therefore sufficient to confer common law rights in the mark for the purposes of Policy ¶ 4(a)(i). See Toyota Sunnyvale v. Adfero Publ’g Co., FA 921194 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the complainant’s TOYOTA SUNNYVALE mark had acquired secondary meaning sufficient for it to establish common law rights in the mark through continuous and extensive use of the mark since 2003 in connection with a car dealership under that mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership).
Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i) because it wholly incorporates Complainant’s mark, omitting only an apostrophe and the spaces between words, and adding the generic top-level domain (“gTLD”) “.com”. The omission of an apostrophe is insufficient to distinguish a domain name. See Daddy’s Junky Music Stores, Inc. v. Kausar, FA 140598 (Nat. Arb. Forum Feb. 11, 2003) (“The lack of an apostrophe in the domain name is not a distinguishing difference because punctuation is not significant in determining the similarity of a domain name and a mark.”). Likewise, the omission of spaces between words and the addition of a gTLD cannot distinguish a disputed domain name for the purposes of Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). The Panel concludes that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been satisfied.
It is now well-established that Complainant shoulders the initial burden of presenting a prima facie case. Once this burden has been satisfied, as is the case here, the burden then shifts to Respondent to refute Complainant’s claims. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Some Panels have concluded that a Respondent’s failure to produce a Response is per se evidence that Respondent lacks rights and legitimate interests in the disputed domain name. See Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). This Panel will examine the record to determine whether such rights or legitimate interests exist under Policy ¶ 4(c).
Complainant alleges that Respondent is not commonly known by the <dontmesswithtexas.com> domain name for the purposes of Policy ¶ 4(c)(ii). The relevant WHOIS information identifies Respondent as “PrivacyProtect.org / Domain Admin”, which the Panel finds to bear no resemblance to either disputed domain name. This provides evidence that Respondent is not commonly known by the disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply). Complainant also indicates that it did not authorize Respondent to register the confusingly similar domain name. Without the benefit of a Response, and absent any contrary evidence in the record, the Panel must hold that Complainant is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See 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 further alleges that Respondent’s use of the disputed domain name does not coincide with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). The disputed domain name resolves to a website providing various links to products and services that are unrelated to Complainant, as well as links offering products competing with those offered by Complainant. Past panels have agreed that this type of use constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services). The Panel concludes that Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that the elements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s inclusion of links to Complainant’s competitors on its website constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Respondent’s operation of a confusingly similar domain name will likely lead some Internet users to visit Respondent’s website, when they intended to visit Complainant’s. Inevitably, a portion of these misdirected users will access the competing links displayed on Respondent’s site. The Panel finds that this type misdirection constitutes use in bad faith under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Finally, Respondent’s use of the disputed domain name also constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Through the use of a confusingly similar domain name, Respondent creates a likelihood of confusion that Respondent is affiliated with Complainant’s business in some way. The Panel assumes that Respondent collects pay-per-click fees each time one of its links is accessed. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that the elements of Policy ¶ 4(a)(iii) have been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dontmesswithtexas.com> domain name be TRANSFERRED to Complainant.
Sandra J. Franklin, Panelist
Dated: September 28, 2011
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