Continental Van Lines, Inc. v. Continental Vanlines Inc.
Claim Number: FA1204001441001
Complainant is Continental Van Lines, Inc. (“Complainant”), represented by Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Continental Vanlines Inc. (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <continentalvanlinesinc.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2012; the National Arbitration Forum received payment on April 25, 2012.
On April 25, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <continentalvanlinesinc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 17, 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@ContinentalVanLinesInc.com. Also on April 27, 2012, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has common law rights in the United States in its CONTINENTAL VAN LINES mark.
Respondent’s <continentalvanlinesinc.com> domain name is identical to Complainant’s CONTINENTAL VAN LINES mark.
Respondent has no rights or legitimate interests in respect to the disputed domain name.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services.
Respondent is using the <continentalvanlinesinc.com> domain name to intentionally attract, for commercial gain, Internet users to the website to cause confusion with Complainant’s mark.
Complainant has not given Respondent a license or permit allowing it to use the disputed domain name.
Respondent has not obtained state or federal trademark or service mark registration.
Respondent is not making a legitimate noncommercial use of the <continentalvanlinesinc.com> domain name.
Respondent registered the <continentalvanlinesinc.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant demonstrates that it has trademark rights in its CONTINENTIAL VAN LINES mark.
Respondent registered the at-issue domain name subsequent to Complainant’s obtaining rights in CONTINENTIAL VAN LINES.
Respondent is not authorized to use Complainant’s trademark.
Respondent is not commonly known by the at-issue domain name.
Respondent does not use the at-issue domain name in connection with a bona fide business nor in association with a non-commercial or fair use.
The at-issue domain name references, or has referenced, a website containing pay-per-click links to Complainant’s competitors. The inferior nature of the Competitor’s services disparages and tarnishes Complainant’s trademark and business reputation.
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.
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.”).
The at-issue domain name is confusingly similar to a mark in which Complainant has rights.
It is well settled that Complainant need not own a valid trademark registration for its mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i). 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); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant alleges that it has common law rights in the United States in its CONTINENTAL VAN LINES service mark through continuous, widespread use of the mark and trade name for over 60 years in connection with transportation and storage services. Complainant provides evidence that it was established in 1952 in the state of Washington and continuously used the mark in interstate commerce in connection with its transportation and storage services. Complainant further shows that it has operated a website at the <continentalvan.com> domain name, advertising its services online using the CONTINENTAL VAN LINES mark since early 2000. While this evidence alone does not necessarily demonstrate that Complainant’s descriptive mark has acquiring distinctiveness in the minds of consumers and thereby is protectable, in the absence of any controverting evidence it creates a presumption that consumers have come to associate the at-issue mark with Complainant’s services. See Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”). Respondent failed to respond to the Complaint. Respondent thereby admits by it silence that Complainant’s assertions and conclusions regarding CONTINENTAL VAN LINES common law trademark status are correct, or else it is reasonable that Respondent would have come forward to deny Complainant’s assertions. Importantly, the record indicates that Respondent trades on and otherwise capitalizes on the CONTINENTAL VAN LINES mark and Complainant’s goodwill. Since Respondent’s conduct show that it recognizes the trademark value of Complainant’s trademark, Respondent is estopped from claiming that Complainant lacks trademark rights in CONTINENTAL VAN LINES. For all the reasons stated above, the Panel finds that Complaint “has rights” in a trademark under Policy ¶4(a)(i).
Respondent’s <continentalvanlinesinc.com> domain name is confusingly similar to Complainant’s CONTINENTAL VAN LINES mark. The at-issue domain name contains Complainants mark in its entirety with the addition of the business entity identifier “inc” and the generic top-level domain (“gTLD”) “.com.” These alterations are insufficient to differentiate the at-issue domain name from Complainant’s mark pursuant to Policy ¶4(a)(i) and so the Panel finds the at-issue domain name to be confusingly similar to Complainant’s trademark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”)
Respondent lacks rights and legitimate interests in respect of the <continentalvanlinesinc.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie case acts conclusively.
Complainant has not licensed Respondent to use its trademark in a domain name or otherwise and Respondent is not commonly known by the disputed domain name. Although WHOIS information for Respondent lists “Continental Vanlines Inc.” as the registrant there is no corroborating evidence in the record showing that the Respondent is in fact commonly known by the disputed domain name. Since there is no authentication requirement that a registrant actually uses its correct name in registering a domain name, the fact that Respondent might have listed Continental Vanlines Inc. as registrant of the at-issue domain name is of dubious value in determining the name of the real registrant in interest. See City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”). Therefore, the Panel cannot find that Respondent is known by the domain name under Paragraph 4(c)(ii)).
Furthermore, Respondent uses the <continentalvanlinesinc.com> domain name to intentionally attract, for commercial gain, Internet users to its website by creating confusion with Complainant’s CONTINENTAL VAN LINES mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s domain name references a website that features advertisements and links, including the promotion of, and links to, services provided by third parties which are directly competitive to those of Complainant. These advertisements tarnish Complainant’s reputation by conning unsuspecting consumers into various moving scams, generating numerous consumer complaints. The links and advertisements are pay-per-click links from which Respondent presumably benefits. While, as discussed below, use of the domain in this manner shows Respondent’s bad faith, such use also is contrary to any notion that Respondent’s use of the disputed domain name is a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use interest under Policy¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Given Complainant’s uncontroverted evidence showing that Respondent lacks either rights or interests in respect of the domain name, and the absence of controverting evidence under Policy ¶4(c) et seq., Complainant satisfies its initial burden and thereby conclusively demonstrates Respondent’s lack of rights and interests under Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent’s actions show bad faith registration and use according to Policy ¶4(b)(iii). The website referenced by the at-issue domain name presents links for moving services that compete with Complainant. This circumstance disrupts Complainant’s business by diverting consumers who are seeking to use Complainant’s services to competing inferior services. 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii))
Respondent’s actions also show bad faith registration and use according to Policy ¶ 4(b)(iv). Respondent has created a likelihood of confusion with Complainant’s mark as to the source, sponsorship, and affiliation of Respondent’s website and of the services on the website. Respondent’s confusingly similar domain name diverts Internet users to Respondent’s website for commercial gain. See 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); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <continentalvanlinesinc.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 24, 2012
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