Park ‘N Fly Service Corporation v. Elias Tesfa
Claim Number: FA1202001427761
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Elias Tesfa (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ezparkfly.com>, registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 1, 2012; the National Arbitration Forum received payment on February 1, 2012.
On February 2, 2012, Melbourne IT, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <ezparkfly.com> domain name is registered with Melbourne IT, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name. 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 6, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 27, 2012 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@ezparkfly.com. Also on February 6, 2012, 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 March 6, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (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" 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <ezparkfly.com> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark.
2. Respondent does not have any rights or legitimate interests in the <ezparkfly.com> domain name.
3. Respondent registered and used the <ezparkfly.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Park ‘N Fly Service Corporation, began offering off-airport parking in 1967. Complainant offers its parking and transportation services under its PARK ‘N FLY mark at a variety of airports throughout the United States, including San Jose, California. Complainant registered the PARK ‘N FLY mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,111,956 registered January 23,1979).
Respondent, Elias Tesfa, registered the <ezparkfly.com> domain name on April 27, 2010. The disputed domain name resolves a website that offers competing parking and transportation services in San Jose, California.
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 owns trademark registrations with the USPTO for its PARK ‘N FLY mark (e.g., Reg. No. 1,111,956 registered January 23,1979). Previous panels found that a USPTO trademark registration sufficiently demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also 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). Therefore, the Panel concludes that Complainant owns rights in its PARK ‘N FLY mark for the purposes of Policy ¶ 4(a)(i).
Respondent’s <ezparkfly.com> domain name contains Complainant’s PARK ‘N FLY mark, absent the letter “n,” the apostrophe, and the spaces separating the terms of the mark. The disputed domain name also adds the letters “e” and “z” and the generic top-level domain (“gTLD”) “.com.” Prior panels have concluded that the misspelling of a complainant’s mark by removing a letter did not adequately distinguish a disputed domain name from a complainant’s mark. See Pfizer Inc. v. BargainName.com, D2005-0299 (WIPO Apr. 28, 2005) (holding that the <pfzer.com> domain name was confusingly similar to the complainant’s PFIZER mark, as the respondent simply omitted the letter “i”); see also Hallelujah Acres, Inc. v. Manila Indus., Inc., FA 805029 (Nat. Arb. Forum Nov. 15, 2006) (holding that the respondent’s <hacrs.com> domain name was confusingly similar to the complainant’s HACRES mark because it omitted the letter “e” from the mark and added the generic top-level domain “.com”). Previous panels have also determined that the addition of letters to a complainant’s mark did not remove a domain name from the realm of confusing similarity. See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON). Finally, past panels have held that the removal of an apostrophe and spaces and the addition of a gTLD are not relevant to a Policy ¶ 4(a)(i) analysis, as an apostrophe and spaces are not reproducible in a domain name and a top-level domain is required. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Nat. Arb. Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”); see also 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.”). Consequently the Panel holds that Respondent’s <ezparkfly.com> domain name is confusingly similar to Complainant’s PARK ‘N FLY mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) is satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <ezparkfly.com> domain name. The Panel determines that Complainant’s allegations demonstrate a prima facie case, which results in the burden shifting to Respondent to prove rights and legitimate interests according to Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). As Respondent did not respond to this case, the Panel may elect to consider Respondent’s lack of response as evidence that Respondent lacks rights and legitimate interests in the <ezparkfly.com> domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). In the interest of fairness, however, the Panel elects to analyze the factors of Policy ¶ 4(c) to determine whether or not Respondent owns rights and legitimate interests in the <ezparkfly.com> domain name.
According to screenshots provided by Complainant, Respondent’s <ezparkfly.com> domain name resolves to a website that offers competing parking and transportation services under the title “EZ Park Fly” in San Jose, California. Complainant asserts that Respondent directly competes with Complainant’s business. The Panel determines that the terms “park” and “fly” are descriptive terms that describe both Complainant’s and Respondent’s businesses. The Panel finds that Respondent is operating a legitimate business in San Jose, California under the disputed domain name. As Complainant does not have an exclusive monopoly on the “park” and “fly” terms on the Internet, in relation to airport parking services, and Respondent operates a legitimate business, the Panel finds that Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i), which demonstrates Respondent’s rights and legitimate interests in the <ezparkfly.com> domain name under Policy ¶ 4(a)(ii). See Kaleidoscope Imaging, Inc. v. V Entm’t, FA 203207 (Nat. Arb. Forum Jan. 5, 2004) (finding that the respondent was using the <kaleidoscope.com> domain name for a bona fide offering of goods or services because the term was “generic” and respondent was using the disputed domain name as a search tool for Internet users interested in kaleidoscopes); see also Martello v. Cockerell & Assocs., FA 346319 (Nat. Arb. Forum Dec. 13, 2004) (finding that the respondent’s use of the <skindeep.com> domain name to provide information on its demapathology services was a bona fide offering of goods or services under Policy ¶ 4(c)(i) despite the complainant’s registration of the SKIN DEEP mark with the USPTO and use of the mark in connection with similar services).
The Panel finds Policy ¶ 4(a)(ii) is not satisfied.
As the Panel concludes that Respondent has rights or legitimate interests in the <ezparkfly.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Nat. Arb. Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
Having failed to find all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <ezparkfly.com> domain name REMAIN WITH Respondent.
Judge Harold Kalina (Ret.), Panelist
Dated: March 15, 2012
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