Greyhound Lines, Inc. v. Dash Bitla / Bitla Software Private Ltd
Claim Number: FA1401001538247
Complainant is Greyhound Lines, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Dash Bitla / Bitla Software Private Ltd (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <greyhoundtravels.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically January 9, 2014; the National Arbitration Forum received payment January 9, 2014.
On January 9, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <greyhoundtravels.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. GODADDY.COM, LLC verified that Respondent is bound by the GODADDY.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 10, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 2014, 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@greyhoundtravels.com. Also on January 10, 2014, 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 February 6, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Also on February 6, 2014, the Forum received an email from Respondent claiming it was unaware of Complainant’s trademarks in India and saying it was taking the sites down. This was not considered an official response by the Forum.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
a. Complainant originally registered the GREYHOUND mark with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 541,198, registered April 17, 1951).
b. Thereafter, Complainant assigned the GREYHOUND mark and logo to National Insurance and Indemnity Corporation, which authorizes Complainant’s exclusive use of the mark.
c. Complainant is the largest provider of intercity bus transportation and uses the GREYHOUND mark to promote the same. Established in 1926, Complainant now serves more than 2,300 destinations with 13,000 daily departures across North America.
d. Complainant made substantial efforts to promote the GREYHOUND mark and has garnered significant notoriety as a result.
a. Policy ¶ 4(a)(i):
1. The <greyhoundtravels.com> domain name is confusingly similar to the GREYHOUND mark as the domain name fully incorporates the mark and adds only the descriptive term “travels” and the generic top-level domain (“gTLD”) “.com”.
b. Policy ¶ 4(a)(ii):
1. Nothing in the record indicates that Respondent is commonly known by the disputed domain name or the GREYHOUND mark. Further, Complainant is not affiliated with Respondent in any way.
2. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use.
3. The <greyhoundtravels.com> domain name directs users to a website where users can make online bus reservations. The resolving webpage displays the name GREYHOUND with a running dog logo virtually identical to Complainant’s logo. By providing the same services under the guise of Complainant, Respondent is attempting to pass itself off as Complainant to attract Internet users to its own website.
c. Policy ¶ 4(a)(iii):
1. Respondent’s use of the disputed domain name is evidence of bad faith because the resolving website is devised to mislead or confuse consumers as to the affiliation of the website, and seeks to commercially benefit from the resulting purported association.
2. Respondent attempted to pass itself off as Complainant, which is further evidence of bad faith. The resolving page presents users with a running dog logo nearly identical to Complainant’s, and the GREYHOUND mark. Further, the site allows users to make bus reservations.
3. Respondent registered the disputed domain name in bad faith. Based on the content and display of the website, it is clear that Respondent intentionally adopted a domain name to create a purported apparent connection with Complainant and to benefit from that association.
The Panel notes that Respondent registered the disputed domain name August 14, 2009.
The Panel finds that the contents of the Response are not helpful in reaching a decision.
Complainant established that it has legal rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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 Complainant to 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.
Given Respondent's failure to submit a substantive 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant purports to be the largest provider of intercity bus transportation in North America with a worldwide reach. Established in 1926, Complainant now serves more than 2,300 destinations with 13,000 daily departures across North America. Complainant originally registered the GREYHOUND mark with the USPTO (e.g., Reg. No. 541,199, registered April 17, 1951). Complainant’s registrations in the GREYHOUND mark were assigned to National Insurance and Indemnity Corporation (“NIIC”), which granted Complainant exclusive right to use the mark and file this action. See Complainant’s Exhibit C. Previous panels have found that complainants can establish rights under the Policy by virtue of assignment. See Stevenson v. Crossley, FA 1028240 (Nat. Arb. Forum Aug. 22, 2007) (“Per the annexed U.S.P.T.O. certificates of registration, assignments and license agreement executed on May 30, 1997, Complainants have shown that they have rights in the MOLD-IN GRAPHIC/MOLD-IN GRAPHICS trademarks, whether as trademark holder, or as a licensee. The Panel concludes that Complainants have established rights to the MOLD-IN GRAPHIC SYSTEMS mark pursuant to Policy ¶ 4(a)(i).”). According to the WHOIS record, Respondent in this case resides or operates in India. It is established that the complainant does not have to own trademark registrations in the same country in which the respondent resides or operates. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). Therefore, the Panel finds that Complainant’s interest in the GREYHOUND mark pursuant to the authorization from NIIC is sufficient to establish Complainant’s rights in the GREYHOUND mark under Policy ¶ 4(a)(i).
It is Complainant’s position that the <greyhoundtravels.com> domain name is confusingly similar to the GREYHOUND mark as the domain name fully incorporates the mark and adds only the descriptive term “travels” and the gTLD “.com”. The Panel recalls that the inclusion of a gTLD does not impact the confusing similarity analysis as a TLD is a requisite of all domain names. 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). The Panel notes that Complainant operates bus transportation service and therefore the Panel makes an inference that the addition of the term “travels” is a reference to the services provided by Complainant. Under similar circumstances, previous panels have determined that the inclusion of a term descriptive of the complainant’s business does not negate the confusing similarity, but actually serves to heighten the potential for confusion, given the close association of the mark and the services performed by the complainant. For example, in Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), the panel found confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.” At present, the Panel agrees that the term “travels” is similarly an obvious allusion to Complainant’s business and the Panel finds that the disputed domain name <greyhoundtravels.com> is confusingly similar to the Complainant’s protected GREYHOUND mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
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 of proof shifts to Respondent to show it does have such 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.”).
Complainant argues that Respondent has no rights to or legitimate interests in the disputed domain name. Complainant contends that nothing in the record indicates that Respondent is commonly known by the disputed domain name or the GREYHOUND mark. Specifically, Complainant notes that the WHOIS information indicates that “Dash Bitla/Bitla Software Private Ltd” is the registrant of the <greyhoundtravels.com> domain name. Further, Complainant asserts that it is not affiliated with Respondent in any way. The Panel agrees that available evidence, including the WHOIS record, Respondent’s failure to refute the allegations through a responsive filing, and other papers in the case, indicates that Respondent is not commonly known by the disputed domain name or the GREYHOUND mark pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant asserts that the <greyhoundtravels.com> domain name directs users to a website where users can make online bus reservations. Complainant notes that the resolving webpage displays the GREYHOUND mark with a running dog logo virtually identical to Complainant’s logo. See Complainant’s Exhibit F (Respondent’s website) and D (Complainant’s website) to compare screen shots from Respondent and Complainant’s websites, respectively. A respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use where the respondent is capitalizing on a well-known mark by attracting users to a website that provides services in competition with a complainant. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). The Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as Respondent is providing a competing service.
Given the display and content of the website, Complainant argues that Respondent is attempting to pass itself off as Complainant to attract Internet users to its own website. Previous panels have determined that a respondent’s attempt to pass itself off as the complainant is evidence that the respondent lacks rights and legitimate interests in the dispute domain name. In Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006), The panel found the respondent’s attempt to pass itself off as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website. In the present case, Complainant provided the Panel with screen shots of the website resolving from the disputed domain name as well as screen shots of Complainant’s own webpage in Exhibits F and D, respectively. The Panel agrees that Respondent is attempting to pass itself off by providing bus transport services under the guise of Complainant’s name and logo and therefore, the Panel finds that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), and that Respondent is not making a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant argues that Respondent’s use of the disputed domain name is evidence of bad faith because the resolving website is devised to mislead or confuse consumers as to the affiliation of the website, and to commercially benefit from the resulting association. Complainant provided the Panel with screen shots of Respondent’s resolving webpage in Exhibit F, which evidences that Respondent is using the disputed domain to operate an online bus reservation site. Further, Complainant points out that the screen shots show that Respondent displays Complainant’s mark and a logo nearly identical to Complainant’s running dog logo. The Panel finds that evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv) as the Respondent is attempting to benefit from the confusion created by the references to Complainant’s business, logo, and mark on the resolving website. 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).
Complainant argues that Respondent’s attempt to mislead users as to its affiliation with Complainant amounts to passing off, which is further evidence of bad faith. The Panel recalls that the resolving page presents users with a running dog logo nearly identical to Complainant’s GREYHOUND mark, a photograph of a bus, as well as text acknowledging the site’s notoriety. In Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004), the panel found evidence of bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.” Following a similar analysis, the Panel compares screen shots of Complainant’s webpage (found at Complainant’s Exhibit D) with Respondent’s webpage (found at Complainant’s Exhibit F). Based on this comparison, the Panel finds that Respondent’s actions amount to passing off, and therefore, constitutes evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iv).
In addition, Complainant argues that Respondent registered the disputed domain name in bad faith because Respondent had actual knowledge of Complainant’s rights in the GREYHOUND mark at the time it registered the disputed domain name. Based on the content and display of the website, Complainant argues that it is clear that Respondent intentionally adopted the domain name to create an apparent connection with Complainant and to benefit from that association. Complainant also urges that its company has garnered substantial notoriety worldwide and provides services in India where Respondent resides or operates. Previous panels have inferred that the respondent had actual knowledge under certain circumstances. For example, in Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002), the Panel stated that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name." At present, the evidence permits this Panel to make an inference that Respondent had actual knowledge of Complainant’s rights at the time Respondent registered the domain name based on the content and imagery displayed on the resolving webpage; and therefore, finds that Respondent registered the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <greyhoundtravels.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 17, 2014.
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