Park ‘N Fly Service Corporation v. Ermiyas Tiku
Claim Number: FA1205001445888
Complainant is Park 'N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Ermiyas Tiku (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parkandflyonline.com>, registered with eNom.com.
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 May 25, 2012; the National Arbitration Forum received payment on May 25, 2012.
On May 29, 2012, eNom.com confirmed by e-mail to the National Arbitration Forum that the <parkandflyonline.com> domain name is registered with eNom.com and that Respondent is the current registrant of the name. eNom.com has verified that Respondent is bound by the eNom.com 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 May 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 18, 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@parkandflyonline.com. Also on May 29, 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 June 22, 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, Park 'N Fly Service Corporation (PNF), was founded in 1967 as the first off-airport parking company specifically geared towards business travelers. Today, PNF operates 17 parking facilities under the PARK ‘N FLY mark in 16 markets across the U.S., including California, Florida, Texas, and Ohio. As a result of PNF’s use and registration of the PARK ‘N FLY mark for 45 years, PNF enjoys strong rights in this mark for parking and transportation services. In addition, PNF provides general information about its parking and transportation services on <PNF.com> and <ParkAndFly.com> (which redirects to PNF.com).
Complainant owns registrations for the PARK ‘N FLY mark (e.g., Reg. No. 1,111,956 registered January 23, 1979) with the United States Patent and Trademark Office.
The <parkandflyonline.com> domain name is confusingly similar to the PARK ‘N FLY mark.
Respondent is not commonly known by the <parkandflyonline.com> domain name.
The <parkandflyonline.com> domain name resolves to Respondent’s website for its competing airport parking services.
The <parkandflyonline.com> domain name is disruptive to Complainant’s business.
Respondent is using the <parkandflyonline.com> domain name to intentionally attract Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant had, and has, rights in its PARK ‘N FLY mark at all times relevant to this proceeding.
Respondent registered the at-issue domain name subsequent to Complaint’s acquisition of rights in its PARK ‘N FLY trademark.
At the time the at-issue domain name was registered, Respondent had actual knowledge of Complainant and Complainant’s rights in the PARK ‘N FLY mark.
The <parkandflyonline.com> domain name references a website used in connection with a business that is in direct competition with Complainant’s airport parking business.
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 trademark in which Complainant has rights.
Complainant’s ownership of various federal service mark registrations for PARK ‘N FLY is sufficient to establish rights in the PARK ‘N FLY mark with regard to Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Park ‘N Fly Service Corporation v. National Park and Fly, Inc., FA 1404457 (Nat. Arb.
Forum Oct. 11, 2011).
Respondent’s <parkandflyonline.com> domain name is confusingly similar to the PARK ‘N FLY mark. Respondent’s deletion of the apostrophe, replacing of the letter “N” with the similarly meaning and sounding “and,” adding the descriptive term “online” and appending the necessary top level domain name all fail to make the <parkandflyonline.com> domain name distinct from Complainant’s PARK ‘N FLY mark. See Park ‘N Fly Serv. Corp. v. Nat’l Park & Fly, Inc., FA 1404457 (Nat. Arb. Forum Oct. 11, 2011) (finding that the replacement of the apostrophe and the letter “N” in the complainant’s mark for the fully-spelled equivalent term “and” in the disputed domain name does not bar the panel from finding the <nationalparkandfly.com> domain name to be confusingly similar to the PARK ‘N FLY mark); see also Broadcom Corp. v. Domain Depot, FA 96854 (Nat. Arb. Forum Apr. 23, 2001) (finding the <broadcomonline.com> domain name is confusingly similar to the complainant’s BROADCOM mark); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent lacks rights and legitimate interests in respect of the <parkandflyonline.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 showing acts conclusively.
Respondent is not connected to Complainant and relevant WHOIS information for the <parkandflyonline.com> domain name indicates that Respondent is not commonly known by the disputed domain name since “Ermiyas Tiku” is listed as the domain name’s registrant. There is no evidence of record tending to show that Respondent is in anyway known by the 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).
Respondent’s use of the <parkandflyonline.com> domain name is further evidence of Respondent’s lack of rights and legitimate interests. The <parkandflyonline.com> domain name resolves to a website used in Respondent’s business, Fast Airport Parking, and thereby unfairly competes with Complainant’s business. Respondent’s use of the confusingly similar <parkandflyonline.com> domain name in this manner does not give Respondent rights or legitimate interests in the disputed domain name as the use is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
As mentioned elsewhere herein, the confusingly similar <parkandflyonline.com> domain name references Respondent’s website. The website offers airport parking services to consumers and thus competes with Complainant’s similar business. Such use of the at-issue domain name is disruptive to Complainant’s business pursuant to Policy ¶ 4(b)(iii) and conclusively shows that Respondent’s <parkandflyonline.com> domain name was registered and is being used in bad faith. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (Finding that the appropriation of a complainant’s mark to divert customers to the respondent’s competing business is disruptive and thus evidence of bad faith).
Additionally, Respondent registered and uses the disputed domain name with the intent to cause confusion as to the source, sponsorship, or affiliation of the <parkandflyonline.com> domain name and to thereby profit from such confusion since the <parkandflyonline.com> domain name makes an online reference to Respondent’s competing airport parking business. Respondent’s use of the PARK ‘N FLY mark in its at-issue domain name was obviously meant to allow Respondent to unfairly trade off consumer recognition of Complainant’s mark and good will. These circumstances demonstrate bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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).
Finally, in light of Complainant’s trademark registrations, the notoriety of the PARK ‘N FLY mark and the manner in which Respondent uses Complainant’s mark, the Panel concludes that Respondent must have had knowledge of Complainant and Complainant's rights in the PARK ‘N FLY mark at the time it registered <parkandflyonline.com>. Respondent’s registration of a domain name containing Complainant’s registered trademark, with actual knowledge of such trademark, further evidences bad faith under the Policy. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration); see also, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parkandflyonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 24, 2012
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