Park ‘N Fly Service Corporation v. Vaughn Hemingway
Claim Number: FA1405001558958
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, USA. Respondent is Vaughn Hemingway (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <parknflycheap.com>, registered with GODADDY.COM, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his or knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2014; the National Arbitration Forum received payment on May 12, 2014.
On May 13, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <parknflycheap.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 May 14, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 3, 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@parknflycheap.com. Also on May 14, 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 June 9, 2014 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
1.Complainant has used the PARK ‘N FLY mark for a number of years to provide parking near airports. Complainant has registered the mark with United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,111,956 registered Jan. 23, 1979).
2.Respondent’s <parknflycheap.com> domain name is confusingly similar to the mark. Domain names cannot have spaces or apostrophes and must contain a generic top-level domain ("gTLD") such as “.com.” The only other addition, “cheap,” is a generic term that does not distinguish the domain name from the mark.
3.Respondent is not known as the <parknflycheap.com> domain name. There is nothing in the WHOIS information to suggest such an association.
4.Respondent uses the <parknflycheap.com> domain name to promote Respondent’s own competing airport parking lots. Such a use of a confusingly similar domain name is not bona fide.
5.Respondent’s acts amount to bad faith use and registration on several grounds. First, Respondent’s use of the domain name to operate a competing business is tantamount to a disruption of Complainant’s business. Second, the use of the confusingly similar domain name to promote a directly competing business creates an inference that Respondent is seeking profit through the likelihood Internet users will associate the domain name with Complainant’s longstanding PARK’ N FLY mark. Finally, Complainant’s widespread standing in the airport parking business makes it likely Respondent is knowingly infringing upon the PARK ‘N FLY mark by registering this domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. However, on May 5, 2014, Respondent wrote to the National Arbitration Forum by email stating in substance that he was not the owner of the domain name but that it was owned by a client of Respondent.
1. Complainant is a United States company that operates parking near airports.
2. Complainant registered the PARK ‘N FLY trademark with United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,111,956 registered Jan. 23, 1979).
3. Respondent registered the disputed domain name August 30, 2013.
4. Respondent uses the <parknflycheap.com> domain name to promote Respondent’s own competing airport parking lots.
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 first question that arises is whether Complainant has rights in a trademark or service mark. Complainant has used the PARK ‘N FLY mark for a number of years to provide parking near airports. Complainant has registered the mark with USPTO (e.g., Reg. No. 1,111,956 registered Jan. 23, 1979). Prior panels have agreed that USPTO registration is sufficient evidence of Policy ¶ 4(a)(i) rights in a trademark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore agrees that Complainant’s trademark registration satisfies Policy ¶ 4(a)(i).
The second question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s registered PARK ‘N FLY trademark. Complainant claims Respondent’s <parknflycheap.com> domain name is confusingly similar to the mark. Complainant claims domain names cannot have spaces or apostrophes and must contain a generic top-level domain ("gTLD") such as “.com.” Complainant notes the only other addition, “cheap,” is a generic term that does not distinguish the domain name from the mark. Prior panels have widely concluded there is no distinction in the modification of spacing, punctuation or the addition of a gTLD. See Mrs. World Pageants, Inc. v. Crown Promotions, FA 94321 (Nat. Arb. Forum Apr. 24, 2000) (finding that punctuation and a gTLD are not significant in determining the similarity of a domain name and 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)). Furthermore, panels have roundly rejected the notion that tagging a generic term onto a domain name somehow creates a meaningful variation on the mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Thus, the Panel here agrees Respondent’s <parknflycheap.com> domain name is confusingly similar to the mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s registered trademark PARK ‘N FLY and used it to create its domain name, adding only the word “cheap” which increases the confusing similarity;
(b) Respondent uses the <parknflycheap.com> domain name to promote Respondent’s own competing airport parking lots;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(e)Complainant claims Respondent uses the <parknflycheap.com> domain name to promote Respondent’s own competing airport parking lots. Generally, a respondent cannot have a bona fide offering of goods or services when a domain name is used to host a business competing directly with the complainant. See, e.g., Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here the Panel observes the domain name resolves to a website boasting “Stop paying too much for Airport Parking!” along with a link for consumers to “Reserve Parking.” See Compl., at Attached Ex. 7. Thus, the Panel finds Respondent’s use of the domain name is directly competitive with Complainant’s PARK ‘N FLY mark, and as such the commercial website fails to be bona fide under Policy ¶ 4(c)(i), or legitimately noncommercial or fair under Policy ¶ 4(c)(iii);
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Respondent’s use of the domain name to operate a competing business is tantamount to a disruption of Complainant’s business. The Panel agrees here that the operation of a competing website is a classic example of commercial disruption. See, e.g., erie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant). Here, the Panel acknowledges again that the domain name’s website is used primarily to promote a competing airport parking business. See Compl., at Attached Ex. 7. Therefore, the Panel agrees Respondent’s conduct amounts to Policy ¶ 4(b)(iii) bad faith.
Secondly, Complainant suggests Respondent’s use of the confusingly similar domain name to promote a directly competing business creates an inference that Respondent is seeking profit through the likelihood Internet users will associate the domain name with Complainant’s longstanding PARK’ N FLY mark. A likelihood of confusion in the context of the UDRP arises when a domain name is used in a manner that would give the respondent a commercial gain through the deception or confusion of Internet users. See Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). In this instance, Respondent is using a confusingly similar domain name to promote its own competing business operating in the same narrow field of airport parking services as Complainant operates in with its PARK ‘N FLY mark. See Compl., at Attached Ex. 7. As such, the Panel agrees that Respondent’s conduct amounts to Policy ¶ 4(b)(iv) bad faith.
Thirdly, Complainant claims its widespread standing in the airport parking business makes it likely Respondent is knowingly infringing upon the PARK ‘N FLY mark by registering this domain name. While panels have concluded that constructive notice is not sufficient to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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”).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using Complainant’s PARK ‘N FLY mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
In this regard, the Panel notes again that, on May 5, 2014, Respondent wrote to the National Arbitration Forum by email stating in substance that he was not the owner of the domain name but that it was owned by a client of Respondent. That may well be so, but the Panel can proceed only on the assumption that on the public record of the WHOIS, evidenced by Annex 8 to the Complaint , Respondent is the domain name holder and therefore , by virtue of Rule 3(b) (v), the Respondent is responsible for the registration and use of the domain name.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <parknflycheap.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 10, 2014
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