Party Bus MN, LLC. v. Aleksey Silenko
Claim Number: FA1508001635309
Complainant is Party Bus MN, LLC. (“Complainant”), represented by Kyle T. Peterson of Patterson Thuente Pedersen, PA, Minnesota, USA. Respondent is Aleksey Silenko (“Respondent”), represented by Michael H. Frasier of Rubric Legal LLC, Minnesota, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rentmypartybus.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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2015; the Forum received payment on August 27, 2015.
On August 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <rentmypartybus.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 August 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 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@rentmypartybus.com. Also on August 31, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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. The Panel has issued its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a formal response from Respondent. That said, the Panel notes that Respondent has informally submitted to the Forum material which has also been taken into account and which is discussed shortly hereunder.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts trademark rights in RENT MY PARTY BUS and alleges that the disputed domain name is identical to the trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
As indicated, Respondent failed to submit a formal Response.
The factual findings pertinent to the decision in this case are that:
1. Complainant uses the trademark RENT MY PARTY BUS (“the trademark”) in respect of transportation services for weddings, clubbing, birthdays, proms, corporate events, concerts, and tours;
2. the trademark is the subject of United States Patent and Trademark Office ("USPTO") Reg. No. 4,781,194, filed on November 25, 2014 and registered on July 28, 2015;
3. the USPTO trademark registration carries a first use in commerce date of December 31, 2002;
4. the disputed domain name was registered on October 7, 2008;
5. the disputed domain name resolves to a website which offers essentially the same services as those provided by Complainant; and
6. there is no commercial agreement between the parties and Complainant has not authorized Respondent to use the trademark or to register any domain name incorporating the trademark.
Preliminary Issue: Informal Response / Concurrent Court Proceedings
A formal Response was not filed but Respondent submitted two exhibits that show proceedings initiated against Complainant (and others) in the United States District Court for the District of Minnesota (“the Court proceedings”).
Panel is under no obligation to take those documents into account in reaching its decision but has, in this case, read and taken limited notice of certain claims contained therein in order to assess whether or not (i) Complainant filed the Complaint in good faith in terms of paragraph 3(b)(xi) of the Rules; (ii) the dispute is outside the scope of the Policy; (iii) Panel should suspend or terminate these Administrative Proceedings in consideration of the Court proceedings.
Rule 3(b)(xi) requires Complaint to include a statement (if true) that to the best of Complainant’s knowledge, information and belief, there have been no other legal proceedings that have been commenced or terminated in connection with or relating to the disputed domain name. Since the Complaint is dated August 27, 2015 and was sent to the Forum that day, and since the Court proceedings were filed on September 21, 2015, there is no reason to question the statement made in the Complaint.
Panels have frequently held that disputes which are principally of a contractual or business nature are outside the scope of the UDRP and so complaints have been refused for those reasons alone. Likewise, panels have treated complex trademark disputes as inappropriate for resolution under the Policy. Usually it has been a question of degree and decisions made on the particular facts.
Further, panels have in consideration of pending court action either suspended or terminated UDRP proceedings in circumstances where it was clear that the outcome of that court action would be determinative of the proper ownership of the domain name at issue.
Here the factors which have caused this Panel to find that it has a proper mandate to decide the matter are that (a) the Policy can be applied on the facts as they are now presented; (b) the Court proceedings were initiated less than two weeks ago and their eventual outcome may be many months away; (c) the Respondent in these Administrative Proceedings is not a party to the Court Proceedings; and (d) the stated cause of action in the Court proceedings, namely, “fraudulent trademark registration; willful trademark infringement”, would not, even if successfully prosecuted by the named plaintiff, directly or immediately determine the ownership of the disputed domain name.
Accordingly, Panel proceeds to apply the Policy.
Primary Issues
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – an investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Since Complainant provides evidence of its USPTO registration for the trademark Panel is satisfied that it has trademark rights (see State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Nat. Arb. Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Nat. Arb. Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i)). Panel notes here the consensus opinion of prior UDRP panels that registration of the disputed domain name prior to the filing date of the trademark registration is irrelevant for the purposes of paragraph 4(a)(i) of the Policy. Panel also notes that whilst the USPTO registration carries a disclaimer to exclusive rights in the term “PARTY BUS”, that disclaimer has no effect where the compared terms are identical.
For
the purposes of comparing the trademark and the domain name, the generic top-level domain gTLD, “.com” can, in
this case, be ignored as non-distinctive. It then follows that the terms are
identical or as some panelists have expressed it,
“legally identical” (see Rollerblade, Inc. v. McCrady, D2000-0429
(WIPO June 25, 2000) finding that the top level of the domain name such as
“.net” or “.com” does not affect the domain name for the purpose of determining
whether it is identical or confusingly similar; see also, U.S. News &
World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination
of punctuation and the space between the words of Complainant’s mark, as well
as the addition of a gTLD does not sufficiently distinguish the disputed domain
name from the mark pursuant to Policy ¶ 4(a)(i).”)).
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
The publicly available WHOIS data identities the domain name registrant as “Aleksey Silenko” and so does not provide any evidence to indicate that Respondent might be known by the domain name. There is no evidence that Complainant has authorized Respondent to use the trademark and Complainant denies any such authorization. There is no evidence of bona fide use of the domain name since it is shown to resolve to a website advertising competing services (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).”).
Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
Without a Response Panel must rely on 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. In doing so, Panel is entitled to accept reasonable allegations and draw inferences 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 only matters for consideration here arise from (i) the registration of the domain name in 2008 before the trademark was filed, and (ii) the claims made in the Court proceedings, which may in one way or another point to use of the domain name by Respondent in connection with a bona fide offering of goods or services before notice of the dispute.
Although registration of the domain name predates filing of the USPTO application, Panel observes that the use-in-commerce date of the trademark, December 2002, significantly predating the creation date of the domain name. Without a Response and having regard to Complainant’s claim to common law trademark rights through use since 2002, there is no reason for Panel to infer that Respondent had made prior bona fide use of the trademark thus giving it rights or interests.
As for the Court proceedings, Panel has considered whether or not unsupported and, so far, unexamined, claims made in another action should stand in the place of a formal Response in these Administrative Proceedings. Panel finds that they should not and so its findings have been made on the basis already described.
In the absence of a reasoned Response the prima facie findings are not displaced. Panel finds that Respondent has no rights or interests in the domain name and so finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith. Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.’
Panel finds that Respondent’s conduct is caught by subparagraph 4(b)(iv). Panel has found the domain name to be identical to Complainant’s trademark. It follows that there is the requisite likelihood of confusion as to source or affiliation. The resolving website exists for commercial gain (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).
Complainant has established the third and final limb of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rentmypartybus.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: October 1, 2015
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