ShipCarsNow, Inc. v Wet Web Design LLC
Claim Number: FA1501001601260
Complainant is ShipCarsNow, Inc. (“Complainant”), represented by Michael K. Bydalek of Kutak Rock LLP, Nebraska, USA. Respondent is Wet Web Design LLC (“Respondent”), Delaware, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <shipcarnow.com>, registered with WILD WEST DOMAINS, LLC.
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.
Daniel B. Banks, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 22, 2015; the National Arbitration Forum received payment on January 22, 2015.
On January 22, 2015, WILD WEST DOMAINS, LLC confirmed by e-mail to the National Arbitration Forum that the <shipcarnow.com> domain name is registered with WILD WEST DOMAINS, LLC and that Respondent is the current registrant of the names. WILD WEST DOMAINS, LLC has verified that Respondent is bound by the WILD WEST DOMAINS, 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 23, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 12, 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@shipcarnow.com. Also on January 23, 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.
A timely Response was received and determined to be complete on February 9, 2015.
An Additional Submission was received from Complainant on February 18, 2015 and determined to be complete.
An untimely Additional Submission was received from Respondent. The Additional Submission was received after the panel had prepared and sent in the decision in this case. The untimely Additional Submission was not considered by the panel.
On February 17, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered its SHIPSCARSNOW mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,870,405, registered Nov. 2, 2010). Complainant has used the mark on or in connection with the transportation of vehicles by rail, truck or vessel since January 2007. The <shipcarnow.com> domain name deletes the letter “s” from the mark and adds the generic top-level domain (“gTLD”) “.com.” The disputed domain name is nearly identical and, certainly confusingly similar to Complainant's mark.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known as the domain name, the Respondent has no permission from Complainant to use the mark, nor has Respondent ever possessed licensing rights to use SHIPCARSNOW in domain names. Further, Respondent uses the domain name to host a website that offers competing services, and such use fails to constitute a bona fide offering or a legitimate noncommercial or fair use. Respondent uses the disputed domain with an improper intent to free ride on the goodwill associated with Complainant's trademark and misleadingly divert customers in direct competition with Complainant.
Respondent has registered and is using the domain name in bad faith. First, Respondent has engaged in a pattern of bad faith registrations. Second, Respondent has disrupted Complainant’s business through its use and registration of the mark. Third, Respondent is attempting to profit from a likelihood of confusion. Fourth, Respondent had active or constructive notice of Complainant’s rights in the mark.
The "creation date" of the disputed domain is November 11, 2006. However, this is not the date Respondent "registered the domain name." Instead, the date the disputed domain name was transferred to Respondent is the date of registration for purposes of determining bad faith. While the WHOIS record is silent as to the date of transfer to Respondent, the earliest date it could have been transferred can be deduced from Delaware business records which show that Respondent was formed on October 10, 2014. Respondent could not have registered the domain name before that date because Respondent did not exist before then.
There is evidence that customer confusion has occurred. One consumer submitted a negative review directed at Complainant thinking that services rendered by persons associated with Respondent were actually rendered by Complainant. That consumer apologized after realizing her mistake. Clearly Respondent is misleadingly diverting customers to the disputed domain for commercial gain.
B. Respondent
The Response in this case is a letter addressed to "To Whom It May Concern" filed by Chris Nadler who states that he owns "shipcarnow.com" and has owned this domain for more than eight years. It has always been an auto transport website. He attaches a receipt from GoDaddy.com from the day he says it was purchased. He states that he has never claimed to ship by rail and nowhere on his website will you find any content for shipping by rail. He has been in the auto transport business since 1998. Wet Website Design (7wet.com) manages the domain and website for him. He also attaches a copy of his logo and website and says that they are nothing like Complainant's logo and website.
C. Additional Submissions
Complainant submitted an additional submission which raises procedural defects in the Response for its lack of certification and its failure to rebut the complainant's arguments. Complainant says that in light of these defects, no additional submission is warranted, however, Complainant states that the Response presents some new material that Complainant wants to address.
In the Response, Chris Nadler apparently purports to own the "shipcarnow.com" domain. However, the Whosis records show that the Respondent is the owner.
The Response asserts that nowhere on the disputed website is there any content for shipping by rail. However, there are clearly rail cars depicted on the top center portion of the home page at the disputed domain which is certainly rail shipping content.
It has not been refuted that Respondent acquired the domain name at least as late as October 10, 2014. And there several problems with Respondent's purported "receipt." First, the receipt could not be an image of a receipt issued in 2006 because the logo depicted on the receipt was not used by GoDaddy.com, LLC until as late as 2013. Second, a GoDaddy billing specialist stated that there was no record of the receipt in their system; that it was probably fake; that a receipt with that kind of number probably could not have been issued within even two years of 2006; and, the disputed domain is not registered to GoDaddy.
Complainant also presents two additional cases that involved Mr. Nadler which allegedly show a pattern of bad faith conduct.
1- the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
2 - Respondent has no rights or legitimate interests in respect of the domain name.
3 - the domain name has been registered and is being used 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 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.
Complainant registered its SHIPSCARSNOW mark with the USPTO. (e.g., Reg. No. 3,870,405, registered Nov. 2, 2010). Complainant has used the mark on or in connection with the transportation of vehicles by rail, truck or vessel. The Panel notes that registration with the USPTO is sufficient evidence to show rights in a trademark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the <shipcarnow.com> domain name is confusingly similar to the SHIPCARSNOW mark. Complainant argues that the domain name deletes the letter “s” and adds the gTLD “.com.” The Panel here finds that the deletion of the letter “s” and the addition of a gTLD do not distinguish a domain name from a mark. See Keystone Publ’g., Inc. v. UtahBrides.com, D2004-0725 (WIPO Nov. 17, 2004) (finding that the <utahwedding.com> domain name was confusingly similar to the complainant’s UTAHWEDDINGS.COM mark because the domain name simply lacked the letter “s”). Thus, the Panel finds the domain name to be confusingly similar to SHIPCARSNOW mark.
The 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. The panel finds that Complainant has provided sufficient evidence to make a prima facie case. 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 Respondent is not commonly known as the domain name, nor has Respondent ever been licensed to use the SHIPCARSNOW mark. The Panel notes that “Wet Web Design LLC Wet Web Design LLC” is listed as the registrant of record for the disputed domain name. The Panel finds that Respondent has no rights or legitimate interests under 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 argues that Respondent has failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues that Respondent is using the <shipcarnow.com> domain name to host a website that offers services that compete with those offered under the SHIPCARSNOW mark. The Panel notes that the website resolving from the disputed domain name offers auto transportation services similar to those services described under Complainant’s mark. The Panel finds that Complainant has rights that predate rights belonging to Respondent, and that Respondent’s use of the domain name is not a bona fide offering or a legitimate noncommercial or fair use. See 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).”).
The Panel finds that Respondent registered the domain name for the purpose of disrupting Complainant’s business and redirecting users to Respondent's competing website. Respondent is using the domain name to offer services that compete with those services offered under the SHIPCARSNOW mark. The website resolving from the disputed domain name offers auto transportation services similar to those services described under Complainant’s mark. And, although the creation date in the WHOIS information is listed as November 11, 2006, Respondent received the domain name via transfer no earlier than October 10, 2014 as that is the date Respondent was formed. The date of transfer to Respondent should be treated as the registration date for purposes of determining bad faith under Policy ¶ 4(b)(iii). Therefore, the Panel finds that Complainant has rights in the mark that predate Respondent’s registration of the domain name, and finds that Respondent's conduct demonstrates Policy ¶ 4(b)(iii) bad faith. See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The panel also finds that Respondent’s bad faith is demonstrated by an attempt to profit from a likelihood of confusion with the SHIPCARSNOW mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or service on Respondent’s website. Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant's mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <shipcarnow.com> domain name be TRANSFERRED FROM RESPONDENT TO COMPLAINANT.
Daniel B. Banks, Jr., Panelist
Dated: February 26, 2015
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