U-Haul International, Inc. v. Yancey Price
Claim Number: FA1501001600874
Complainant is U-Haul International, Inc. (“Complainant”), represented by Steve Winkelman of U-Haul International, Inc., Arizona, USA. Respondent is Yancey Price (“Respondent”), Arkansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uhaulreservationcenter.com>, 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 Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2015; the National Arbitration Forum received payment on January 20, 2015.
On January 21, 2015, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <uhaulreservationcenter.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 January 22, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 11, 2015 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@uhaulreservationcenter.com. Also on January 22, 2015, 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 13, 2015 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
Complainant made the following contentions
Complainant has trademarked the phrase UHAUL and uses it to identify its broad and vast enterprise of renting storage facilities and storage vehicles to individuals seeking to move various goods or chattels from one location to another. The Panel should agree that the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 746,034, registered Feb. 26, 1963) registration is sufficient to show such rights when Respondent dwells in Arkansas. This <uhaulreservationcenter.com> domain name is confusingly similar to the UHAUL mark in that it affixes the highly generic “reservationcenter” phrase along with a gTLD.
Respondent has no right or legitimate interest in the <uhaulreservationcenter.com> domain name. Respondent is not and cannot have been commonly known by this domain name because the licensing agreement between the parties made Respondent a dealer but did not allow it to use the UHAUL mark in Internet domain names, and in any event there is no longer any valid relationship between the parties. Further, Respondent used to be a dealer of Complainant’s goods until a recent dispute. This dispute concerned Respondent’s registration of the <uhaulreservationcenter.com> domain name. Complainant wanted to sort out this matter informally by having Respondent simply transfer the domain name. Respondent claimed he would do no such thing unless Complainant furnished him with a fee. Complainant thereafter terminated the dealership relationship. Subsequent to this, Respondent redirected this <uhaulreservationcenter.com> domain name to Complainant’s foremost competitors in the open marketplace.
Respondent further has registered and is using the <uhaulreservationcenter.com> domain name in bad faith. Respondent’s motive to sell the domain name is plain as day here because Respondent’s five-word e-mail responding to Complainant’s request for transfer pursuant to the parties’ dealership agreement was as thus: “The website is for sale” See Compl., at Attached Ex. 6. Respondent is trying to profit through a likelihood that Internet users will enter the domain name suspecting to find official websites run by Complainant, because Respondent links the website to advertising of Complainant’s competitors. See Compl., at Attached Ex. 7. Respondent registered the domain name in violation of an existing dealership agreement with Complainant, illustrating that Respondent indeed had actual knowledge of Complainant’s rights and thus registered the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in renting out storage facilities and storage vehicles to individuals seeking to move various goods or chattels from one location to another and the provision of related goods and services.
2. Complainant is the registered owner of the trademark for UHAUL registered with the United States Patent and Trademark Office ("USPTO") ( Reg. No. 746,034,) on Feb. 26, 1963.
3. The <uhaulreservationcenter.com> domain name was registered May 31, ` 2014.
4. Respondent redirected the <uhaulreservationcenter.com> domain name to Complainant’s foremost competitors in the open marketplace.
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 trademarked the phrase UHAUL and uses it to identify its broad and vast enterprise of renting storage facilities and storage vehicles to individuals seeking to move various goods or chattels from one location to another. Complainant submits that this Panel should agree that the USPTO (e.g., Reg. No. 746,034, registered Feb. 26, 1963) registration is sufficient to show such rights when Respondent dwells in Arkansas. The USPTO registration does stand as good evidence of Policy ¶ 4(a)(i) rights. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s UHAUL mark. Complainant argues that this <uhaulreservationcenter.com> domain name is confusingly similar to the UHAUL mark in that it affixes the highly generic “reservationcenter” phrase along with a gTLD. The Panel finds that “reservationcenter” implies a forum for reserving UHAUL services, and as such amplifies the confusing similarity of the Internet domain name. 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)). The Panel further agrees that the addition of the “.com” gTLD does little to affect the domain name in any way. 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).
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 UHAUL mark and has used it in its entirety in the domain name;
(b)Respondent has redirected the <uhaulreservationcenter.com> domain name to Complainant’s foremost competitors in the open marketplace;
(c)Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant asserts that Respondent is not and cannot have been commonly known by this domain name because the licensing agreement between the parties made Respondent a dealer but did not allow it to use the UHAUL mark in Internet domain names, and in any event there is no longer any valid relationship between the parties. The Panel notes that “Yancey Price” is the listed registrant of the domain name. Yancey Price, the Respondent, has failed to show why it should be found to be commonly known by this domain name and accordingly this “Yancey Price” cannot be found to be commonly known by the domain name. See, e.g., LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) (“Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”);
(e) Complainant submits that how Respondent used to be a dealer of Complainant’s goods until a recent dispute. Complainant argues that this dispute concerned Respondent’s registration of the <uhaulreservationcenter.com> domain name. Complainant wanted to sort out this matter informally by having Respondent simply transfer the domain name. Respondent instead requested that Complainant furnished him with a fee. See Compl., at Attached Ex. 6. Complainant thereafter terminated the dealership relationship. The Panel agrees that Respondent’s intent to profit by way of reselling the domain name to his former business dealer is evidence of Respondent’s lack of any bona fide offering of goods or services under Policy ¶ 4(c)(i). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); Associated Materials, Inc. v. Perma Well, Inc., FA 154121 (Nat. Arb. Forum May 23, 2003) (finding that, although the respondent was a distributor of the complainant’s product, the respondent did not have permission to use the complainant’s mark in its registered domain name and, therefore, was not using the domain name as a bona fide offering of goods or services or a legitimate noncommercial or fair use);
(f) Complainant also notes that subsequent to this, Respondent redirected this <uhaulreservationcenter.com> domain name to Complainant’s foremost competitors in the open marketplace. The Panel notes that Annex 7 shows how the disputed domain name is being used to redirect users to PENSKE rental services, showing how Respondent Yancey Price wants to use Complainant’s own trademarks to promote competing services unlawfully. This Panel agrees that Respondent clearly has no bona fide offering under Policy ¶ 4(c)(i), or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) in using the domain name for the promotion of such competing services. 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).
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 submits that Respondent’s motive to sell the domain name is plain as day here because Respondent’s five-word e-mail responding to Complainant’s request for transfer pursuant to the parties’ dealership agreement was as thus: “The website is for sale” See Compl., at Attached Ex. 6. The Panel agrees that such a brusque offer to sell a domain name in face of a legitimate attempt to resolve the dispute is indicative of Policy ¶ 4(b)(i) bad faith. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
Secondly, Complainant argues that Respondent is trying to profit through a likelihood that Internet users will enter the domain name suspecting to find official websites run by Complainant, because Respondent links the website to advertising of Complainant’s competitors. See Compl., at Attached Ex. 7. The Panel agrees that use of the disputed domain name to promote directly competing PENSKE services is indicative of a Policy ¶ 4(b)(iv) intent to profit from a likelihood of Internet user confusion in bad faith. See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).
Thirdly, Complainant submits that Respondent registered the domain name in violation of an existing dealership agreement with Complainant, illustrating that Respondent indeed had actual knowledge of Complainant’s rights and thus registered the domain name in bad faith. 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 the UHAUL 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.
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 <uhaulreservationcenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: February 14, 2015
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