Pink Jeep Tours, Inc. v. Tim Conaway
Claim Number: FA1406001564779
Complainant is Pink Jeep Tours, Inc. (“Complainant”), represented by Adam R. Stephenson, Arizona, USA. Respondent is Tim Conaway (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pinkjeeptours.us>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and, to the best of his knowledge, has no known conflict in serving as Panelist in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 16, 2014; the National Arbitration Forum received a hard copy of the Complaint on June 17, 2014.
On June 17, 2014, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <pinkjeeptours.us> 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 the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 17, 2014, a Notification of Complainant and Commerncement of Administrative proceeding (the “Commencement Notification”), setting a deadline of July 7, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 9, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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 usTLD Policy, usTLD 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 has common law rights in the PINK JEEP TOURS mark in connection with its tour services over the past 54 years. Complainant has offered tour services in Arizona under the mark PINK JEEP TOURS since at least as early as December 31, 1960. Complainant expanded its services to Nevada in January 2002, and has advertised in Nevada and in and around Las Vegas continuously since that date. Complainant has offered its services in Arizona and Nevada, and has operated the websites <pinkjeep.com>, <pinkjeeptours.com>, and <pinkjeeplasvegas.com> through Pink Jeep Tours, Inc. of Sedona, Arizona and sister company, Pink Jeep Tours Las Vegas, Inc. of Nevada.
Complainant’s sister company, Pink Jeep Tours Las Vegas, Inc., owned a Nevada service mark registration for PINK JEEP TOURS from September 17, 2003 until September 17, 2008. Although Complainant did not renew this registration, Complainant continued to use the PINK JEEP TOURS mark actively in Nevada from 2002 until the present day.
Complainant is extremely well-known and famous through its extensive continuous use. In 2004, National Public Radio’s “All Things Considered”, was devoted to producer Andy Raskin’s family vacation in which they used complainant’s services to tour the Sedona area. The show was titled “Pink Jeep Chronicles.” In 2007 CNBC posted a segment devoted entirely to Complainant, titled “Mike on America,” in which CNBC’s Mike Hegedus traveled to Sedona, Arizona to visit Complainant, described as, “one entrepreneur who is making millions by taking people on bumpy rides in a pink jeep.” In 2006, the New York Times ran a Sunday Article in which Dwight Garner chronicled his own Sedona adventure using Complainant’s services, stating “I climbed aboard the popular Broken Arrow tour run by the Pink Jeep Tours company.”
Respondent’s <pinkjeeptours.us> domain name is identical to Complainant’s PINK JEEP TOURS mark. Respondent merely removes the spaces in Complainant’s mark and adds the country-code top-level domain (“ccTLD”) (.us).
Respondent has no rights or legitimate interests in the <pinkjeeptours.us> domain name. Respondent has never used the PINK JEEP TOURS mark outside the inappropriate use addressed here, and none of Respondent’s tour vehicles feature the color pink. Respondent’s disputed domain name appears to resolve to a website showing information about Respondent’s Las Vegas area jeep tour business called, “Las Vegas Off Road Jeep Tours,” and “Las Vegas Rock Crawlers.”
Respondent registered or is using the <pinkjeeptours.us> domain name in bad faith. Respondent has a pattern of bad faith registrations of domain names. Respondent registered the <pinkjeeptours.us> domain name in order to direct Internet users to a website promoting Respondent’s competing services. Respondent knowingly registered the <pinkjeeptours.us> domain name to mislead consumers to Respondent’s own competing website for commercial gain. Respondent uses the disputed domain name to promote its own jeep tours. Respondent had knowledge of Complainant’s rights in the PINK JEEP TOURS mark at the time Respondent registered the disputed domain name, based on Respondent’s use of Complainant’s mark in its entirety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Pink Jeep Tours, Inc., has common law rights in the PINK JEEP TOURS mark in connection with its tour services over the past 54 years. Complainant has offered tour services in Arizona under the mark PINK JEEP TOURS since at least as early as December 31, 1960. Complainant expanded its services to Nevada in January 2002, and has advertised in Nevada and in and around Las Vegas continuously since that date. Complainant’s mark is well-known and famous through its extensive continuous use.
Respondent, Tim Conaway, registered the <pinkjeeptours.us> domain name on July 3, 2010. Respondent uses the disputed domain name to promote its own jeep tours.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
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(f), 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.”).
Complainant argues that it has rights in the PINK JEEP TOURS mark. Complainant does not own any trademark registration for this mark. Registration of a mark with a trademark authority is unnecessary, however, and the Panel may base its analysis of rights on the existence of common law rights pursuant to Policy ¶ 4(a)(i). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).
Complainant argues that it has common law rights in the PINK JEEP TOURS mark in connection with its tour services over the past 54 years. Complainant has offered tour services in Arizona under the mark PINK JEEP TOURS since at least as early as December 31, 1960. The Chrysler Group LLC has licensed Complainant to use the JEEP mark within Complainant’s PINK JEEP TOURS mark. Complainant expanded its services to Nevada in January 2002, and has advertised in Nevada and in and around Las Vegas continuously since that date. Complainant has offered its services in Arizona and Nevada, and has operated the websites <pinkjeep.com>, <pinkjeeptours.com>, and <pinkjeeplasvegas.com> through Pink Jeep Tours, Inc. of Sedona, Arizona and its sister company, Pink Jeep Tours Las Vegas, Inc. of Nevada. Complainant explains that its sister company, Pink Jeep Tours Las Vegas, Inc., owned a Nevada service mark registration for PINK JEEP TOURS from September 17, 2003 until September 17, 2008. Although Complainant did not renew this registration, Complainant continued to use the PINK JEEP TOURS mark actively in Nevada from 2002 until the present day. Complainant’s mark is well-known and famous through its extensive continuous use. Complainant has received national media coverage. Complaainant has established secondary meaning in the PINK JEEP TOURS mark. SeeTuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (found common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Therefore, the Panel finds that Complainant has common law rights in the PINK JEEP TOURS mark under Policy ¶ 4(a)(i).
The <pinkjeeptours.us> domain name is identical to the PINK JEEP TOURS mark under Policy ¶ 4(a)(i). Respondent has used Complainant’s mark, in its entirety, without adding or removing anything substantive. Respondent merely removes spacing and adds the ccTLD “.us.”
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).
There is no evidence in the record showing that Respondent owns any service marks or trademarks that reflect the <pinkjeeptours.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)); see also Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name).
Respondent is not commonly known by the <pinkjeeptours.us> domain name. The WHOIS record for the <pinkjeeptours.us> domain name domain name lists “Tim Conaway” as the domain name registrant. 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). Therefore, Respondent lacks rights and legitimate interests as it is not commonly known by the <pinkjeeptours.us> domain name under Policy ¶ 4(c)(iii).
Respondent’s disputed domain name resolves to a website showing information about Respondent’s Las Vegas area jeep tour business called, “Las Vegas Off Road Jeep Tours,” and “Las Vegas Rock Crawlers.” Respondent’s use of the <pinkjeeptours.us> domain name to promote a business that is directly competing with Complainant’s business is not a Policy ¶ 4(c)(ii) bona fide offering of goods or services or a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (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).
Respondent has a pattern of bad faith registrations of domain names incorporating Complainant’s mark. Complainant states that Respondent registered two domain names displaying Complainant’s PINK JEEP TOURS mark, namely, <pinkjeeptours.us> and <pinkjeeptours.net>. In Pink Jeep Tours, Inc. v. Tim Conaway, FA 1549015 (Nat. Arb. Forum April 25, 2014) the panel transferred the <pinkjeeptours.net> domain name from this Respondent to Complainant. Evidence of prior UDRP cases held adversely against a respondent and the registration of multiple domain names indicates a bad faith pattern of registrations. See Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). The Panel finds that Respondent registered and is using the <pinkjeeptours.us> domain name in bad faith under Policy ¶ 4(b)(ii) as evidenced by the prior UDRP finding against Respondent as well as the multiple domain names registered by Respondent featuring Complainant’s PINK JEEP TOURS mark.
Respondent registered the <pinkjeeptours.us> domain name to direct Internet users to a website promoting Respondent’s directly competing services. Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (The respondent’s appropriation of the complainant’s mark to divert the complainant’s customers to the respondent’s competing business is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii)). Similarly, the Panel finds that Respondent registered and is using the <pinkjeeptours.us> domain name in bad faith to disrupt Complainant’s business pursuant to Policy ¶ 4(b)(iii).
Respondent knowingly registered the <pinkjeeptours.us> domain name to mislead consumers to Respondent’s own competing website for commercial gain. Therefore, the Panel finds that Respondent registered and is using the <pinkjeeptours.us> domain name to commercially profit from the mistakes by Internet users as a result of having created a likelihood of confusion with Complainant’s mark pursuant to Policy ¶ 4(b)(iv). See Pink Jeep Tours, Inc. v. Tim Conaway, FA 1549015 (Nat. Arb. Forum April 25, 2014) (the respondent’s use of the <pinkjeeptours.net> mark, to resolve to the competing jeep tour website was done in bad faith under Policy ¶ 4(b)(iv)).
Respondent had actual knowledge of Complainant’s rights in the PINK JEEP TOURS mark at the time Respondent registered the disputed domain name, based on Respondent’s use of Complainant’s mark in its entirety and the content on Respondent’s resolving website. Thus, the Panel finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). 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).
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <pinkjeeptours.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 23, 2014
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