Roehl Transport, Inc. v. Kathy Stewart
Claim Number: FA1605001674211
Complainant is Roehl Transport, Inc. (“Complainant”), represented by Steven P. Lipowski of Ruder Ware, L.L.S.C., Wisconsin, United States. Respondent is Kathy Stewart (“Respondent”), Ohio, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <getyourcdl.com>, registered with Melbourne IT Ltd.
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 Forum electronically on May 10, 2016; the Forum received payment on May 10, 2016.
On May 10, 2016, Melbourne IT Ltd confirmed by e-mail to the Forum that the <getyourcdl.com> domain name is registered with Melbourne IT Ltd and that Respondent is the current registrant of the name. Melbourne IT Ltd has verified that Respondent is bound by the Melbourne IT Ltd 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 May 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@getyourcdl.com. Also on May 12, 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 June 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown 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
Complainant made the following contentions.
Complainant uses the GET YOUR CDL mark with respect to educational services, namely driver training and recruiting services in the field of truck driving. Complainant establishes common law rights in the mark through evidence of long-term use and advertising. See Compl., at Attached Ex. A. Respondent’s <getyourcdl.com> domain name is essentially identical to the GET YOUR CDL mark as it merely eliminates the spaces between words and adds the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <getyourcdl.com> domain. Respondent is not commonly known by the domain. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <getyourcdl.com> domain name. Rather, the domain resolves to an active website displaying links to both Complainant’s website and the websites of Complainant’s competitors. See Compl., at Attached Exs. B through F-3.
Respondent is using the <getyourcdl.com> domain name in bad faith. 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 by including competitive pay-per-click hyperlinks. Id.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of driver training and recruiting services in the field of truck driving.
2. Complainant has established common trademark rights in the GET YOUR CDL mark.
3. The <getyourcdl.com> domain name was registered on May 30, 2003.
4. The domain resolves to an active website displaying links to both Complainant’s website and the websites of Complainant’s competitors.
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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant uses the GET YOUR CDL mark with respect to educational services, namely driver training and recruiting services in the field of truck driving. Complainant argues that it owns common law rights in the GET YOUR CDL mark, which is permitted when a Complainant
can show secondary meaning in the mark based on use. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues that because the GET YOUR CDL mark has been used over time online in connection with Complainant, it has demonstrated common law rights in the mark for the purposes of Policy ¶ 4(a)(i). Additionally Complainant provides evidence of the <Roehl.Jobs/Get-Your-CDL> domain to show the online presence of the GET YOUR CDL mark. See Compl., at Attached Ex. A. Panels have held that long-time media presence, promotional material/advertising, and holding similar or identical domain names provide evidence of secondary meaning in a mark. See Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in September 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Panels have also held that continued use of a mark and advertising done to promote a mark can establish a complainant’s common law rights. See Surecom Corp. NV v. Rossi, FA 1352722 (Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999); see also AOL LLC v. DiMarco, FA 1275978 (Forum Sept. 9, 2009) (finding that the manner and amount of advertising done to promote a mark may suggest secondary meaning). Therefore, as the Panel agrees that Complainant has provided sufficient evidence to establish a secondary meaning in the GET YOUR CDL mark, it finds that Complainant has established common law rights in the 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 GET YOUR CDL mark. Complainant argues that Respondent’s <getyourcdl.com> domain is essentially identical to the GET YOUR CDL mark as it merely eliminates the spaces between the words of Complainant’s mark and adds the gTLD “.com.” Panels have found such alterations to a mark to be insufficient in overcoming a finding of confusing similarity under Policy ¶ 4(a)(i). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). Thus, the Panel agrees that Respondent’s <getyourcdl.com> domain is identical to the GET YOUR CDL mark under Policy ¶ 4(a)(i).
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 (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.”).
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 GET YOUR CDL trademark and to use it in its entirety in the domain name;
(b) The domain name was registered on May 30, 2003;
(c) The domain resolves to an active website displaying links to both Complainant’s website and the websites of Complainant’s competitors;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent is not commonly known by the disputed domain name. The Panel notes that Complainant’s Exhibit G, the WHOIS information regarding the disputed domain name, lists “Kathy Stewart” as registrant of record. The Panel also notes that Respondent has failed to submit a response in this proceeding. Therefore, in light of the available evidence, the Panel agrees that there is no basis to find Respondent commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii));
(f) Further, Complainant argues that Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <getyourcdl.com> domain name. Rather, Complainant contends that the domain name resolves to an active website displaying links to Complainant’s website, Respondent’s own website, and third-party competitors. See Compl., at Attached Exs. B through F-3 (comprehensive screenshots of website, and the resolving webpages from the links). Panels have found such use by a respondent consists of neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. 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)); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Forum May 11, 2007) (Panelist Tyrus R. Atkinson, Jr., dissenting) (finding that the respondent’s use of a confusingly similar domain name to advertise real estate services which competed with the complainant’s business did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s <getyourcdl.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
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 contends that 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 Panel again notes that Complainant argues that the domain name resolves to an active website displaying competitive hyperlinks. See Compl., at Attached Exs. B through F-3. As the Panel agrees with Complainant and holds that Internet user confusion subsequently results from the aforementioned competitive hyperlinks, and that Respondent is receiving click-through fees, it finds that Respondent’s behavior constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstors, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”).
Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <getyourcdl.com> domain name using the GET YOUR CDL trademark mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it 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 <getyourcdl.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 8, 2016
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