NATIONAL ARBITRATION FORUM
DECISION
Carey
International, Inc. v. seattletowncar.com a/k/a Alex Sandler a/k/a Sima Sandler
Claim
Number: FA0506000489305
Complainant is Carey
International, Inc. ("Complainant"), represented by Sara L.
Edelman, of Davis & Gilbert LLP, 1740 Broadway, New York, NY
10019. Respondent is seattletowncar.com
a/k/a Alex Sandler a/k/a Sima Sandler
("Respondent"), 12608 SE 4th Place, Bellevue, WA 98005.
REGISTRAR AND
DISPUTED DOMAIN NAME
The domain name
at issue is <careylimointernational.com>, registered with Domaindiscover.
PANEL
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.
PROCEDURAL
HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
31, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 31, 2005.
On June 1, 2005,
Domaindiscover confirmed by e-mail to the National Arbitration Forum that the
domain name <careylimointernational.com>
is registered with Domaindiscover and that Respondent is the current registrant
of the name. Domaindiscover has
verified that Respondent is bound by the Domaindiscover registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the
"Policy").
On June 10,
2005, a Notification of Complaint and Commencement of Administrative Proceeding
(the "Commencement Notification"), setting a deadline of June 30,
2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent's registration as technical, administrative and billing
contacts, and to postmaster@careylimointernational.com
by e-mail.
Having received
no Response from Respondent, using the same contact details and methods as were
used for the Commencement Notification, the National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On July 17,
2005, 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." 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES'
CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent's <careylimointernational.com>
domain name is confusingly similar to Complainant's CAREY mark.
2. Respondent does not have any rights
or legitimate interests in the <careylimointernational.com> domain
name.
3. Respondent registered and used the
<careylimointernational.com> domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant,
Carey International, Inc., owns and operates limousine and transportation
related service companies worldwide.
Complainant has offered limousine and transportation services since 1921
in the United States and internationally since 1977. Complainant currently operates in over 75 countries and 460
cities worldwide.
Complainant
first used the CAREY mark in commerce in 1939 and owns several trademark
registrations with the ("USPTO") for the CAREY mark (Reg. No.
1,107,533 issued November 28, 1978; Reg. No. 1,375,117 issued December 10,
1985; Reg. No. 2,802,635 issued January 6, 2004).
Complainant owns
numerous trademark registrations for the CAREY mark in more than twenty-five
countries and uses the CAREY mark in over twenty-seven countries throughout the
world. Complainant also owns more than
one hundred domain names that incorporate the CAREY mark.
Respondent
registered the <careylimointernational.com> domain name on October
12, 2003. Respondent's domain name
resolves to a website that offers limousine and other transportation services
that directly compete with those offered by Complainant.
DISCUSSION
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."
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.").
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 has
established through extrinsic proof in this proceeding that it has rights in
the CAREY mark through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs.,
FA 221171 (Nat. Arb. Forum Feb. 18, 2004) ("Registration of the NASAL-AIRE
mark with the USPTO establishes Complainant's rights in the mark."); see
also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb.
Forum Nov. 11, 2003) ("Complainant's federal trademark registrations
establish Complainant's rights in the BLIZZARD mark.").
Moreover,
Respondent's <careylimointernational.com>
domain name is confusingly similar to Complainant's CAREY mark, as the domain
name fully incorporates the mark in its entirety and merely adds the
descriptive words "limo" and "international." See Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent's domain name combines the complainant's mark with a generic term
that has an obvious relationship to the complainant's business); see also Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain
name in dispute contains the identical mark of the complainant combined with a
generic word or term).
Furthermore, the
addition of the top-level domain ".com" is irrelevant in determining
whether the <careylimointernational.com>
domain name is confusingly similar to Complainant's mark. See Blue Sky Software Corp. v. Digital
Sierra, Inc., D2000-0165 (WIPO Apr. 27, 2000) (holding that the domain name
<robohelp.com> is identical to the complainant's registered ROBOHELP
trademark, and that the "addition of .com is not a distinguishing
difference"); see also Busy Body, Inc. v. Fitness Outlet Inc.,
D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic
top-level domain (gTLD) name '.com' is . . . without legal significance since
use of a gTLD is required of domain name registrants").
The Panel finds
that Policy 4(a)(i) has been satisfied.
Complainant
asserts that Respondent has no rights or legitimate interests in the disputed
domain name, and Respondent, in not submitting a response, has failed to rebut
this assertion. Thus, the Panel may
interpret Respondent's failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <careylimointernational.com>
domain name pursuant to Policy
4(a)(ii). See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that,
by not submitting a response, respondent has failed to invoke any circumstance
which could demonstrate any rights or legitimate interests in the domain name);
see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec.
31, 2002) ("Respondent's failure to respond not only results in its
failure to meet its burden, but also will be viewed as evidence itself that
Respondent lacks rights and legitimate interests in the disputed domain
name.").
Moreover, Respondent
is using the confusingly similar domain name to operate a competing website
that promotes limousine and other transportation related services. Such competitive use is not a use in
connection with 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). See Ameritrade
Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002)
(finding that respondent's use of the disputed domain name to redirect Internet
users to a financial services website, which competed with complainant, was not
a bona fide offering of goods or services); see also Avery Dennison Corp. v.
Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that respondent
had no rights or legitimate interests in the disputed domain name where it used
complainant's mark, without authorization, to attract Internet users to its
business, which competed with complainant).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant's famous mark. Thus, the
Panel finds that Respondent has not established rights and legitimate interests
in the <careylimointernational.com>
domain name pursuant to Policy
4(c)(ii). See Tercent Inc. v.
Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating "nothing in
the respondent's WHOIS information implies that the respondent is 'commonly
known by' the disputed domain name" as one factor in determining that
Policy 4(c)(ii) does not apply); see
also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar.
14, 2000) (finding no rights or legitimate interests where the respondent was
not commonly known by the mark and never applied for a license or permission
from the complainant to use the trademarked name).
The Panel finds
that Policy 4(a)(ii) has been
satisfied.
Respondent has
registered and used the <careylimointernational.com>
domain name in bad faith pursuant to Policy
4(b)(iii) by using the domain name, which contains a confusingly similar
version of Complainant's CAREY mark, to market competing limousine and
transportation related services. Such
use constitutes disruption and is evidence that Respondent registered and used
the domain name in bad faith pursuant to Policy 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000)
(finding respondent acted in bad faith by attracting Internet users to a
website that competes with complainant's business); see also
EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., FA 94385 (Nat.
Arb. Forum July 7, 2000) (finding that the minor degree of variation from
complainant's marks suggests that respondent, complainant's competitor,
registered the names primarily for the purpose of disrupting complainant's
business).
The Panel infers
that Respondent receives click-through fees for diverting Internet users to
competing websites because Respondent's <careylimointernational.com> domain name is confusingly similar
to Complainant's CAREY mark, consumers accessing Respondent's domain name may
become confused as to Complainant's affiliation with the resulting
website. Thus, the Panel finds that
Respondent's commercial use of the disputed domain name constitutes bad faith
registration and use pursuant to Policy
4(b)(iv). See Qwest
Communications Int'l Inc. v. Ling Shun Shing, FA 187431 (Nat. Arb. Forum
Oct. 6, 2003) ("Respondent's attempt to commercially benefit from the
misleading domain name is evidence of bad faith pursuant to Policy 4(b)(iv)."); see also Drs. Foster
& Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000)
(finding bad faith where the respondent directed Internet users seeking the
complainant's site to its own website for commercial gain).
Furthermore,
Respondent registered the <careylimointernational.com>
domain name with actual and constructive knowledge of Complainant's rights in
the CAREY mark due to Complainant's registration of the mark with the United
States Patent and Trademark Office and the obvious connection between
Complainant's business and the products and services offered by
Respondent. Registration of a domain
name that is confusingly similar to another's mark despite actual or constructive
knowledge of the mark holder's rights in the mark is evidence of bad faith
registration and use pursuant to Policy
4(a)(iii). See Digi Int'l v.
DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) ("[T]here is a
legal presumption of bad faith, when the respondent reasonably should have been
aware of the complainant's trademarks, actually or constructively."); see
also Orange Glo Int'l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002)
("[T]he complainant's OXICLEAN mark is listed on the Principal Register of
the USPTO, a status that confers constructive notice on those seeking to
register or use the mark or any confusingly similar variation thereof."); see
also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding
that respondent had actual and constructive knowledge of complainant's EXXON
mark given the worldwide prominence of the mark and thus respondent registered
the domain name in bad faith); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding 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").
The Panel finds
that Policy 4(a)(iii) has been
satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <careylimointernational.com>
domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
July 28, 2005
Click Here to return to the main Domain
Decisions Page.
Click Here to return to our Home Page
NATIONAL ARBITRATION FORUM