PilotMall.com Inc. v. KEITH HALL / OHYEAH TRADE
Claim Number: FA1604001671188
Complainant is PilotMall.com Inc. (“Complainant”), Florida, United States. Respondent is KEITH HALL / OHYEAH TRADE (“Respondent”), Illinois, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <pilotmalls.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 20, 2016; the Forum received payment on April 20, 2016.
On April 20, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <pilotmalls.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 April 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2016 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@pilotmalls.com. Also on April 22, 2016, 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 May 16, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, 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. Therefore, the Panel may issue 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 any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
PilotMall.com is a principal service mark registered on November 5, 2003 by Complainant and approved December 14, 2004. Serial number 78323700, Registration number 2910915.
Online Internet Store that offers pilot books, FAA charts, flight bags, gps receivers, aviation headsets, aircraft intercoms, pilot supplies, professional pilot supplies, aviation software, logbook software, flight training software, transceivers, aviation watches, and accessories. FIRST USE: 19990101. FIRST USE IN COMMERCE: 19990101
Among other things, Complainant sells shoes online: http://www.pilotmall.com/category/piloti-shoes
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] Specify in the space below the manner in which the domain name( s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. UDRP Rule 3(b)(ix )(J ); UDRP Policy 'f[ 4( a)( i).
Complainant has established it has rights in the PilotMall.com mark through registration with the USPTO and continuous use since 1999.
Respondent's <pilotmalls.com> Domain Name is confusingly similar to the mark of the Complainant because the disputed domain name simply adds the letter "s" at the end of the mark. The addition of the letter "s" does not significantly distinguish the <pilotmalls.com> domain name from the PilotMall.com mark of Complainant. See CMGI, Inc. v. Reyes, 02000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to Complainant's CMGI mark); see also Wembley Nat's Stadium Ltd. v. Thomson, 02000-1233 (WIPO Nov. 16, 2000) (finding that the domain name <wembleystadium.net> is identical to the WEMBLEY STADIUM mark).
[b.] Specify in the space below why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name( s) that is/are the subject of the complaint. UDRP Rule 3(b)(ix)( 2); UDRP Policy ¶4(a)(ii ). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4( c).
Complainant respectfully submits that respondent has no "rights or legitimate interests" in the Domain Name because Complainant has not granted any permission to the Respondent to use the Domain Name.
Respondent has not been "commonly known by" the Domain Name. The name of the Respondent is almost identical to the name of Complainant. The Respondent's name is used to confuse the public.
Respondent is not making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue. Respondent is using the Domain Name to create a web site which tarnishes the trademark or service mark at issue.
[c.] Specify in the space below why the domain name( s) should be considered as having been registered and being used in bad faith. UDRP Rule 3(b)( ix)( 3); UDRP Policy ¶4( a)(iii ). The Panel may consider any relevant aspects included in, but not limited to UDRP Policy ¶4(b).
This domain name in question is confusing to customers and is being used in direct competition with the registered trademark holder for the sale of competing products (sneakers). Customers believe PilotMalls.com is affiliated with PilotMall. com. Respondents are not making a legitimate noncommercial or fair use of the domain name, for they clearly are seeking commercial gain by misleadingly diverting consumers to their own website.
Respondent is using the Domain Name to divert Internet traffic to a competing ecommerce web site. They are creating confusion and utilizing the domain name to divert and usurp Complainant’s customers.
The Respondent uses the Domain Name to attempt to attract customers for personal gain by creating confusion with Complainant' s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 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(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 (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 uses the PILOTMALL.COM mark in connection with an online Internet store. Complainant registered the PILOTMALL.COM mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,910,915, registered December 14, 2004). Registration with a governmental authority (such as the USPTO) adequately demonstrates Complainant’s rights in the PILOTMALL.COM mark under Policy ¶4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶4(a)(i).”). Complainant has adequately established Policy ¶4(a)(i) rights in the PILOTMALL.COM mark.
Complainant claims Respondent’s <pilotmalls.com> domain name is confusingly similar to the PILOTMALL.COM mark because it adds the letter “s” at the end of the word “MALL” in the mark. Such minor alterations to a mark are not sufficient to prevent confusing similarity under Policy ¶ 4(a)(i). See Ancestry.com Operations Inc. v. Nadeem Qadir a/k/a NA Seocho c/o NA a/k/a Bladimir Boyiko a/k/a Free Domains Parking c/o Andrey Vasiliev, FA 1327838 (Forum July 13, 2010) (finding the respondent’s <familytreemakers.com> domain name confusingly similar to the complainant’s FAMILY TREE MAKER trademark because the addition of the letter “s” was insufficient to distinguish the domain name from the mark). Respondent’s <pilotmalls.com> domain name is confusingly similar to the PILOTMALL.COM mark under Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) satisfied.
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). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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.”).
Complainant claims Respondent has no rights or legitimate interests in the <pilotmalls.com> domain name. Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Keith Hall/ OhYeah Trade” as registrant of record. This bears no relationship to the disputed domain name. Complainant has not authorized or licensed Respondent to use the PILOTMALL.COM mark. Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, there is no basis to find Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
Complainant claims Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <pilotmalls.com> domain name. Respondent is using the <pilotmalls.com> domain name to redirect Internet users to an ecommerce store for commercial goods (“Brand Shoes Online Outlet”). Such a redirection does not create rights or legitimate interests under Policy ¶¶ 4(c)(i) or (iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). Respondent’s <pilotmalls.com> domain name constitutes neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The domain name resolves to a competing e-commerce site from which Respondent presumably makes profit. Under such conditions, Respondent’s behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See OneWest Bank N.A. v. Matthew Foglia, FA1503001611449 (Forum April 26, 2015) (holding that the respondent’s use of the disputed domain name to direct Internet users to a website which competed with the complainant was evidence of bad faith pursuant to Policy ¶ 4(b)(iv)).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <pilotmalls.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, May 20, 2016
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