Park ‘N Fly Service Corporation v. National Park and Fly, Inc.
Claim Number: FA1108001404457
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is National Park and Fly, Inc. (“Respondent”), represented by Howard Neu of Law Office of Howard Neu, P.A., Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nationalparkandfly.com>, registered with Fabulous.com Pty Ltd.
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.
Anne M. Wallace, Hugues G. Richard, and Sandra J. Franklin as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 23, 2011; the National Arbitration Forum received payment on August 23, 2011.
On August 24, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <nationalparkandfly.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 29, 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@nationalparkandfly.com. Also on August 29, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail 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.
A timely Response was received and determined to be complete on September 19, 2011.
Complainant’s Additional Submission was submitted on September 23, 2011, and Respondent’s Additional Submission was submitted on September 28, 2011.
On September 27, 2011, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Anne M. Wallace and Hugues G. Richard as Panelists, and Sandra J. Franklin as Panelist and Panel Chairperson.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <nationalparkandfly.com> domain name is confusingly similar to Complainant’s PARK ‘N FLY marks.
2. Respondent does not have any rights or legitimate interests in the <nationalparkandfly.com> domain name.
3. Respondent registered and used the <nationalparkandfly.com> domain name in bad faith.
B. Respondent makes the following assertions:
1. Complainant does not have rights in PARK ‘N FLY because “park and fly” are generic words.
2. Respondent operates a legitimate airport parking service in Florida under the name National Park and Fly, Inc.
3. Respondent did not register or use the <nationalparkandfly.com> domain name in bad faith.
C. Additional Submissions
1. In Complainant’s Additional Submission, it refutes Respondent’s arguments with a discussion of UDRP precedent and cites a U.S. Supreme Court case backing up its arguments.
2. In Respondent’s Additional Submission, rebuts Complainant’s arguments that PARK ‘N FLY is suggestive rather than descriptive, and reiterates that Complainant has not provided any actual instances of confusion between its mark and the <nationalparkandfly.com> domain name.
Complainant Park “N Fly Service Corporation was founded in 1967 and offers airport parking services under its PARK ‘N FLY mark across the United States, including in the state of Florida. Complainant holds a registration for the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,111,956 registered January 23, 1979), as well as several other trademark registrations that incorporate the PARK ‘N FLY mark.
Respondent registered the <nationalparkandfly.com> domain name on May 21, 2011, and uses it to offer competing airport parking services in Florida.
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."
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.
The Panel finds that, given Complainant’s registrations for its mark, Complainant has sufficiently demonstrated its rights in the PARK ‘N FLY mark under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). The Panel notes Complainant’s long-standing and widespread use of the mark PARK ‘N FLY, in use for almost 45 years before Respondent registered the <nationalparkandfly.com> domain name, and in use in Respondent’s state of Florida.
Respondent’s <nationalparkandfly.com> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark. Respondent has spelled out the word “and” in Complainant’s mark, added the generic term “national”, deleted the apostrophe, and added the generic top-level domain (“gTLD”) “.com.” None of these changes are sufficient to distinguish the <nationalparkandfly.com> domain name from Complainant’s PARK ‘N FLY mark. First, the addition of the generic top-level domain (“gTLD”) is irrelevant to Policy ¶ 4(a)(i) determination. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); 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.”). The addition of a generic word has routinely been found insufficient to distinguish a domain name from a trademark. See Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005), and Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004). The deletion of the apostrophe in Complainant’s mark does not distinguish the <nationalparkandfly.com> domain name from the PARK ‘N FLY mark. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation is not significant in determining the similarity of a domain name and mark); see also LOreal USA Creative Inc v. Syncopate.com – Smart Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that the omission of an apostrophe did not significantly distinguish the domain name from the mark). Finally, the replacement of “n” with “and” in the domain name does not distinguish it from Complainant’s mark. See Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also John Fairfax Publ’ns Pty Ltd. v. Pro-Life Domains Not for Sale, FA 213460 (Nat. Arb. Forum Jan. 6, 2004) (“The addition of the article ‘the’ does not significantly distinguish the domain name from the mark for purposes of Policy ¶ 4(a)(i).”). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
While Respondent contends that the <nationalparkandfly.com> domain name is comprised of a common and generic terms and as such cannot be found to be confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual word in the mark is unprotectable and therefore the overall mark is unprotectable is at odds with the anti-dissection principle of trademark law.”).
Nonetheless, the Panel takes note that the United States Supreme Court has opined that Complainant’s PARK ‘N FLY mark is incontestable and cannot be considered descriptive in defense of infringement. See Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 190 (1985), where the U.S. Supreme Court rejected Dollar Park and Fly’s argument, holding that Park ‘N Fly’s incontestable federal service mark registration was “conclusive evidence of the registrant’s right to use the mark” and, as a result, the Court held that the infringement of an incontestable mark may not be defended on the ground that the mark is merely descriptive. Id. at 189. On remand, the United States Court of Appeals Ninth Circuit considered whether there was a likelihood of confusion between PARK ‘N FLY and “Dollar Park and Fly.” See Park ‘N Fly Inc. v. Dollar Park And Fly, Inc., 782 F.2d 1508 (9th Cir. 1986). The Ninth Circuit held that “[t]he two marks, ‘Park ‘N Fly’ and ‘Park and Fly,’ are virtually identical, and the services provided by the two parties are precisely the same” in finding a likelihood of confusion between
the two marks. Id. at 1509. See also Park ‘N Fly Serv. Corp. v. Level Propane, FA 99656 (Nat. Arb. Forum Oct. 29, 2001) where Complainant recovered the infringing domain names <parknflyfree.com>, <parkandflyfree.com>, and <parknfly.com>.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
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), 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 UDRP ¶ 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.”).
Respondent is using the <nationalparkandfly.com> domain name to advertise Respondent’s automobile parking services under the name “National Park and Fly.” Complainant argues that because Respondent is not affiliated with Complainant or its PARK ‘N FLY mark, Respondent is using the disputed domain name to unfairly compete with Complainant’s business. Complainant contends that this usage of the <nationalparkandfly.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel agrees and finds that the <nationalparkandfly.com> domain name is not being used for either a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute 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)); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant states that its PARK ‘N FLY mark is well-known in the airport parking and transportation industry, where both Complainant and Respondent operate, and thus the use of a confusingly similar domain is an intentional diversion of business from Complainant to Respondent. The Panel agrees and finds that the disputed domain name was registered and used in bad faith under Policy ¶ 4(b)(iii). See 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).”); see also Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
The Panel finds that Respondent registered and uses the <nationalparkandfly.com> domain name to take commercial advantage of the likelihood of confusion to Internet users, which constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
The Panel finds that Policy ¶ 4(a)(iii) has 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 <nationalparkandfly.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Panelist
Hugues G. Richard, Panelist
Sandra J. Franklin, Panelist and Panel Chairperson
Dated: October 11, 2011
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