Park ‘N Fly Service Corporation v. Jamie Fitzpatrick
Claim Number: FA1606001679525
Complainant is Park ‘N Fly Service Corporation (“Complainant”), represented by Joel R. Feldman of Greenberg Traurig, LLP, Georgia, United States. Respondent is Jamie Fitzpatrick (“Respondent”), New York, United States
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <jfk52parkandfly.com>, registered with Network Solutions, 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 June 15, 2016; the Forum received payment on June 15, 2016.
On June 15, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <jfk52parkandfly.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 June 17, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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@jfk52parkandfly.com. Also on June 17, 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 July 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The Infringing Domain Name is confusingly similar to PNF’s PARK ‘N FLY mark. UDRP Rule 3(b)(ix)(1); UDRP ¶4(a)(i).
PNF was founded in 1967 as the first off-airport parking company specifically geared towards business travelers. Today, PNF operates 16 parking facilities under the PARK ‘N FLY mark in 14 markets across the U.S., including California, Florida, Texas, and Ohio. As a result of PNF’s use and registration of the PARK ‘N FLY mark for over 45 years, PNF enjoys strong rights in this mark for parking and transportation services. In addition, PNF provides general information about its parking and transportation services on <PNF.com>.
PNF owns several U.S. service mark registrations for the PARK ‘N FLY mark, including U.S. Reg. No. 1,111,956. This registration is incontestable under United States trademark law. This registration is conclusive evidence of: (1) the validity of the PARK ‘N FLY mark as a service mark; (2) the validity of the service mark registration; (3) PNF’s ownership of the PARK ‘N FLY mark; and (4) PNF’s exclusive right to use the PARK ‘N FLY mark in commerce. 15 U.S.C. § 1115(b); see also Park ‘N Fly Inc. v. Dollar Park And Fly, Inc., 469 U.S. 190 (1985); Reed Elsevier Inc. v. Domain Deluxe, FA 234414 (Forum Mar. 18, 2004). In other words, this Panel need not analyze the validity of the PARK ‘N FLY mark or perform any analysis of trademark law. Rather, the Panel need only mechanically apply the Policy to PNF’s incontestable service mark rights. See Park ‘N Fly Service Corp. v. National Park and Fly, Inc., FA 1404457 (Forum Oct. 11, 2011) (transferring <nationalparkandfly.com>); Park ‘N Fly Service Corp. v. Ermiyas Tiku, FA 1445888 (Forum May 29, 2012) (transferring <parkandflyonline.com>); Park ‘N Fly Service Corp. v. Ramped Up Media, FA 1473968 (Forum Dec. 10, 2012) (transferring <simpleparkandfly.com>); Park ‘N Fly Service Corp. v. Vaughn Hemingway, FA 1558958 (Forum June 10, 2014) (transferring <parknflycheap.com>).
PNF’s ownership of a federal service mark registration for PARK ‘N FLY is sufficient, under the UDRP, to establish rights in the PARK ‘N FLY mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Forum Apr. 15, 2002) (finding that complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Park ‘N Fly Service Corp. v. National Park and Fly, Inc., FA 1404457 (Forum Oct. 11, 2011); Park ‘N Fly Service Corp. v. Ermiyas Tiku, FA 1445888 (Forum May 29, 2012); Park ‘N Fly Service Corp. v. Ramped Up Media, FA 1473968 (Forum Dec. 10, 2012); Park ‘N Fly Service Corp. v. Vaughn Hemingway, FA 1558958 (Forum June 10, 2014). Therefore, PNF has rights in its PARK ‘N FLY mark under UDRP ¶4(a)(i) based on its registration of the mark with the United States Patent and Trademark Office.
Respondent’s Infringing Domain Name is confusingly similar to PNF’s PARK ‘N FLY mark because <jfk52parkandfly.com> is virtually identical to the PARK ‘N FLY mark. Under the UDRP, the three slight differences between the PARK ‘N FLY mark and the <jfk52parkandfly.com> domain name do not offset the overwhelming similarity between the Infringing Domain Name and PNF’s well-established mark.
First, Respondent has substituted “AND” for “‘N” in the Infringing Domain Name. Because AND and ‘N are terms that are used to conjoin two words, and are language equivalents, these terms are interchangeable. As a result, Respondent’s use of “ParkAndFly” within its domain name is likely to cause confusion with the virtually-identical mark PARK ‘N FLY. See, e.g., Plain ‘N Fancy Kitchens, Inc. v. Traverito Traverito, FA 964328 (Forum May 31, 2007) (“The Panel finds that the replacement of an ampersand with its language equivalent . . . fails to sufficiently distinguish the domain name from the protected word pursuant to Policy ¶4(a)(i)”); see also Park ‘N Fly Service Corp. v. Level Propane, FA 99656 (Forum Oct. 29, 2001) (holding that <parkandflyfree.com> is confusingly similar to PARK ‘N FLY mark); Park ‘N Fly Service Corporation v. National Park and Fly, Inc., FA 1404457 (Forum Oct. 11, 2011) (holding that <nationalparkandfly.com> is confusingly similar to the PARK ‘N FLY mark); Park ‘N Fly Service Corporation v. Ermiyas Tiku, FA 1445888 (Forum May 29, 2012) (holding that <parkandflyonline.com> is confusingly similar to the PARK ‘N FLY mark).
Second, Respondent has added “JFK” and 52 to the PARK ‘N FLY mark. “JFK” is the airport code John F. Kennedy airport, where Respondent is located. Because this term is geographic and describes Respondent’s location, it does not distinguish the Infringing Domain Name from PNF’s PARK ‘N FLY mark. See, e.g., The One Group LLC v. Above.com Domain Privacy, FA 1438097 (Forum May 11, 2012) (holding that <stknyc.com> is confusingly similar to the STK mark because “NYC” is a geographic abbreviation and does not eliminate confusing similarity). Likewise, “52,” the number signifying the number of weeks in a year, is not a source-identifying term. See, e.g., Microsoft Corporation v. Tran Van Thong, FA 1533611 (Forum Jan. 9, 2014) (holding that <microsoft247.com> is confusingly similar to the MICROSOFT mark because “247” is “a common numeric expression for ‘twenty-four hours, seven days a week’”). Because “JFK” and “52” are not source-identifying terms, they do not distinguish the Infringing Domain Name from the PARK ‘N FLY brand.
Third, Respondent has added the gTLD “.com” to PNF’s PARK ‘N FLY mark. This does not distinguish the Infringing Domain Name from PNF’s PARK ‘N FLY mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
[b.] Respondent does not possess any legitimate rights or interests in the Infringing Domain Name. UDRP Rule 3(b)(ix)(2); UDRP ¶4(a)(ii).
Respondent cannot establish legitimate rights or interests in the Infringing Domain Name because PNF already owns the PARK ‘N FLY mark, and the Infringing Domain Name attempts to capitalize on the goodwill associated with the PARK ‘N FLY mark. Under UDRP ¶4(c), Respondent can only establish legitimate rights or interests in the Infringing Domain Name if:
(1) before notice of the dispute, it was using the domain name in connection with a bona fide offering of goods or services;
(2) it is commonly known by the domain name; or
(3) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain.
See UDRP ¶4(a)(ii); 4(c). Respondent cannot demonstrate any of these three requirements.
Respondent is using the Infringing Domain Name to advertise Respondent’s own airport parking and airport parking reservations services. Respondent is not connected to PNF; rather, Respondent is PNF’s competitor. So Respondent’s use of the Infringing Domain Name to unfairly compete with PNF is not a bona fide offering of goods or services pursuant to UDRP ¶4(c)(i) or a legitimate noncommercial or fair use of the domain name. 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 a bona fide offering of goods or services pursuant to UDRP ¶4(c)(i)); Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”); Park ‘N Fly Service Corp. v. Ramped Up Media, FA 1473968 (Nat Arb. Forum Jan. 21, 2013) (“The Panel finds that Respondent’s use of the disputed domain name to advertise its own parking reservation service is not a bona fide offering of goods and services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”); Park ‘N Fly Service Corp. v. Ermiyas Tiku, FA 1445888 (Forum June 24, 2012) (“Respondent’s use of the confusingly similar <parkandflyonline.com> domain name [to unfairly compete with Complainant’s business] does not give Respondent rights or legitimate interests in the disputed domain name as the use is neither a Policy ¶4(c)(i) bona fide offering of goods or services, nor is it a Policy ¶4(c)(iii) legitimate noncommercial or fair use”); Park ‘N Fly Service Corp. v. Vaughn Hemingway, FA 1558958 (Forum June 10, 2014) (“Generally, a respondent cannot have a bona fide offering of goods or services when a domain name is used to host a business competing directly with the complainant”).
There is no evidence within the WHOIS information that Respondent is commonly known as “JFK52ParkAndFly” or “jfk52parkandfly.com.” Therefore, Respondent does not possess any legitimate rights or interests based on his name.
[c.] Respondent registered and is using the Infringing Domain Name in bad faith.
UDRP Rule 3(b)(ix)(3); UDRP ¶4(a)(iii).
Respondent registered and is using the Infringing Domain Name in bad faith in violation of UDRP Rule 3(b)(ix)(3). Under UDRP ¶4(a)(iii), if Respondent is using the Infringing Domain Name to intentionally attempt to attract Internet users to his website by creating a likelihood of confusion with PNF’s PARK ‘N FLY mark, Respondent is acting in bad faith.
Based on PNF’s longstanding and widespread use of the well-known PARK ‘N FLY mark in the airport parking and transportation industry, Respondent’s registration of the Infringing Domain Name, to offer directly-competitive services, was clearly intended to trade off of consumer recognition of the PARK ‘N FLY mark.
By directing traffic away from PNF’s official website, the Infringing Domain Name disrupts PNF’s business for Respondent’s commercial gain. This constitutes bad-faith registration and use under UDRP ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶¶4(b)(iii) [and] (iv)”); Marriott Int’l Inc. v. MCM Tours, Inc., FA 444510 (Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii)”); Park ‘N Fly Service Corp. v. Ramped Up Media, FA 1473968 (Forum Apr. 24, 2014) (“Respondent’s disputed domain name connects to a website which advertises Respondent’s own airport parking reservation services. Respondent’s use of the disputed domain name to advertise its own airport parking reservation services constitutes attraction for commercial gain, showing bad faith use and registration of the domain name under Policy ¶4(b)(iv)”).
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 PARK ‘N FLY mark in connection with its business in providing off-airport parking. Complainant registered the PARK ‘N FLY mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,111,956, registered Jan. 23, 1979), and its registration establishes rights in the mark. A complainant’s registration with any governmental authority (such as the USPTO) is sufficient to establish rights in the 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 established Policy ¶ 4(a)(i) rights in the PARK ‘N FLY mark.
Complainant claims Respondent’s <jfk52parkandfly.com> domain name is confusingly similar to the PARK ‘N FLY mark because it merely eliminates punctuation and spacing, replaces ‘N with the equivalent word “and,” adds the geographic term “JFK,” the numerical value “52,” and the gTLD “.com.” A TLD (whether it is a gTLD, sTLD or a ccTLD) must be disregarded under a Policy ¶ 4(a)(i) analysis because every domain name is required to have a TLD. The domain also lacks the spaces between the words of the mark. Spaces are prohibited characters under domain name syntax, so their absence must be disregarded under a Policy ¶ 4(a)(i) analysis. JFK is a location where Complainant conducts business. Such alterations to a mark are insufficient to prevent a finding a finding of confusing similarity under Policy ¶ 4(a)(i). See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (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).”); see also Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Plain ‘N Fancy Kitchens, Inc. v. Traverito Traverito, FA 964328 (Forum May 31, 2007) (“The Panel finds that the replacement of an ampersand with its language equivalent . . . fails to sufficiently distinguish the domain name from the protected word pursuant to Policy ¶4(a)(i)”) (emphasis added); see also Microsoft Corporation v. Tran Van Thong, FA 1533611 (Forum Jan. 9, 2014) (holding that <microsoft247.com> is confusingly similar to the MICROSOFT mark because “247” is “a common numeric expression for ‘twenty-four hours, seven days a week’”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). Respondent’s <jfk52parkandfly.com> domain name is confusingly similar to the PARK ‘N FLY mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 <jfk52parkandfly.com> domain name. Respondent is not commonly known by the disputed domain name. The domain name was originally registered with a privacy service. The present WHOIS information lists “Jamie Fitzpatrick” as the registrant of record. Respondent has failed to submit a response in this proceeding. In light of the record, there is no basis to find Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name).
Complainant claims Respondent is making neither (i) a bona fide offering of goods or services, nor (ii) a legitimate noncommercial or fair use through the <jfk52parkandfly.com> domain name. The domain name resolves to a website offering competing services anonymously, which certainly does not attempt to distinguish Respondent from Complainant. While Complainant did not make the claim, it appears to this Panel that Respondent was attempting to pass itself off as Complainant. Such competitive use by a respondent is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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 <jfk52parkandfly.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).
Finally, Respondent used a privacy service to register the domain name. This means Respondent did nothing to publicly associate itself with the domain name. Therefore, Respondent has acquired no rights merely by registering the domain name.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
Complainant claims Respondent is using the <jfk52parkandfly.com> domain name in bad faith. Respondent has disrupted Complainant’s business under Policy ¶ 4(b)(iii) through its anonymous competing use. Respondent has attracted Internet users to its site for commercial gain by creating confusion as to the source of the website Policy ¶4(b)(iv). Such behaviors constitute bad faith under both Policy ¶¶ 4(b)(iii) and (iv). See Fitness International, LLC v. ALISTAIR SWODECK / VICTOR AND MURRAY, FA1506001623644 (Forum July 9, 2015) (“Respondent uses the at-issue domain name to operate a website that purports to offer health club related services such as fitness experts, fitness models, fitness venues, exercise programs, and personal training, all of which are the exact services offered by Complainant. Doing so causes customer confusion, disrupts Complainant’s business, and demonstrates Respondent’s bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶4(b)(iv).”).
Complainant claims Respondent had actual knowledge of Complainant's rights in the PARK ‘N FLY mark. Respondent's offering of competing services at the resolving website certainly suggests Respondent had actual knowledge of Complainant's mark. This means Respondent registered and used the domain name in bad faith under Policy ¶4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, Respondent registered the domain name using a privacy service. In the commercial context, this raises a rebuttable presumption of bad faith registration and use. Respondent has taken no steps to rebut this presumption. This Panel is willing to find bad faith on this ground alone.
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 <jfk52parkandfly.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, July 29, 2016
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