Cantor’s Driving School, Inc. v. Ronit Tehrani
Claim Number: FA1607001683258
Complainant is Cantor’s Driving School, Inc. (“Complainant”), represented by Shaun J. Bockert of Blank Rome LLP, Pennsylvania, USA. Respondent is Ronit Tehrani (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cantordrivingschool.com>, <cantordrivingschoolca.com>, <cantordrivingschoolcali.com>, <cantordrivingschoolfl.com>, <cantordrivingschoolnv.com>, <cantordrivingschoolpa.com>, <cantorsdrivingschoolcali.com>, and <cantorsdrivingschoolsucks.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 July 11, 2016; the Forum received payment on July 11, 2016.
On Jul 12, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <cantordrivingschool.com>, <cantordrivingschoolca.com>, <cantordrivingschoolcali.com>, <cantordrivingschoolfl.com>, <cantordrivingschoolnv.com>, <cantordrivingschoolpa.com>, <cantorsdrivingschoolcali.com>, and <cantorsdrivingschoolsucks.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 July 12, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 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@cantordrivingschool.com, postmaster@cantordrivingschoolca.com, postmaster@cantordrivingschoolcali.com, postmaster@cantordrivingschoolfl.com, postmaster@cantordrivingschoolnv.com, postmaster@cantordrivingschoolpa.com, postmaster@cantorsdrivingschoolcali.com, and postmaster@cantorsdrivingschoolsucks.com. Also on July 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 August 16, 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 the domain names be transferred from Respondent to Complainant.
A. Complainant
a. Summary
Complainant, a successful driving school that has been in operation for over 40 years and has locations in three states, owns the U.S. federally registered service mark CANTOR’S DRIVING SCHOOL (the “CDS Mark”) for use in connection with various services, including driving instruction services. As a result of Complainant’s extensive use of the CDS Mark since at least as early as 1976, the mark has become renowned and has acquired significant goodwill.
Without authorization or consent from Complainant, Respondent registered the domain names <cantordrivingschool.com>; <cantordrivingschoolca.com>; <cantordrivingschoolcali.com>; <cantordrivingschoolfl.com>; <cantordrivingschoolnv.com>; <cantordrivingschoolpa.com>; <cantorsdrivingschoolcali.com>; and <cantorsdrivingschoolsucks.com> (the “Infringing Domains”) on May 20, 2016. Respondent was aware of Complainant’s mark because Respondent is a Co-Owner of a competing driving school named “Driven 2 Drive Premier Driving School”, and registered the domains to deprive Complainant of their use. Respondent’s use and registration of the Infringing Domains is a blatant attempt to unjustly capitalize on Complainant’s trademark, notoriety, and goodwill. Complainant brings this Complaint to retrieve the Infringing Domains from Respondent.
Initially, Respondent was using the Infringing Domains to redirect consumers to its own website <www.driven2drive.com/>. However, shortly thereafter Respondent relegated the Infringing Domains to “parking pages”. In effect, the domains are being squatted on by Respondent in a manner that prevents Complainant from registering and using the domain names directly matching Complainant’s trademark and that consumers, the trade, and the media would expect to associate with the CDS Mark.
Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (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:
(i) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In recognition of Cantor’s Driving School, Inc.’s superior rights, and its satisfaction of the requirements under paragraph 4(c) of the Policy, it is respectfully requested that the infringing domain names: <cantordrivingschool.com>; <cantordrivingschoolca.com>; <cantordrivingschoolcali.com>; <cantordrivingschoolfl.com>; <cantordrivingschoolnv.com>; <cantordrivingschoolpa.com>; <cantorsdrivingschoolcali.com>; and <cantorsdrivingschoolsucks.com>, be transferred to Complainant.
In support of the complaint, Complainant argues as follows:
b. The Infringing Domains are Confusingly Similar to the Complainant’s Mark
The Infringing Domains are confusingly similar to the CDS Mark, both individually and collectively. Complainant owns the CDS Mark for use in connection with various services, including but not limited to the driving instruction services.
Many of the Infringing Domains incorporate Complainant’s CANTOR’S DRIVING SCHOOL mark in its entirety, while the others merely remove the “s” from the Cantor Mark. As such, the Infringing Domains are identical or virtually identical to the CDS Mark. The fact that Respondent’s domain names incorporate the entirety of Complainant’s service mark is, without more, a sufficient basis to establish the first element under paragraph 4(a) of the Policy. See Bugatti of America v. Taro Yamada c/o Personal, FA0907001275398 (NAF Nov. 8, 2007) (finding <Bugattinewulm.com> confusingly similar to Complainant’s registered mark BUGATTI ); see also, UBS AG v. Hok Sun Chan, FA0607000755015 (NAF 8/31/2006) (“The <ubspactual.com> mark is confusingly similar to Complainant’s UBS mark. Respondent’s domain name contains Complainant’s UBS mark in its entirety.”). Because the Infringing Domains are identical to the CDS Mark, Complainant’s potential and existing customers have been misdirected to Respondent, and may (as of right now) be unable to locate Complainant’s business via Infringing Domains. Thus, consumers, the trade, and the media are likely to believe that there is no website associated with the CDS Mark. Complainant therefore submits that the requirement under Policy 4(a)(i) has been satisfied.
c. Respondent Has No Legitimate Right to the Infringing Domains
Respondent has no rights or legitimate interests with respect to the Infringing Domains. There can be no doubt that Respondent’s only purpose is to withhold the domains from Complainant. Moreover, Respondent has utilized the domains to redirect consumers to its own website. The redirection of Complainant’s consumers is not a legitimate interest. See, e.g., Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (Respondent’s use of the disputed domain name to redirect Internet users to a website that competed with Complainant was not a bona fide offering of goods or services).
As such, Respondent’s only use for the domain name is to trade off of the goodwill of the CDS Mark in order to confuse Internet users into thinking that by entering the domain name, they would be taken to a website operated by Complainant. Instead, these users have been diverted to Respondent’s website and, later, a “parked” website. This is neither a legitimate non-commercial use, nor a fair use of the CDS Mark. See, e.g., Harcourt, Inc. v. Chan, FA 214531 (Nat. Arb. Forum Jan. 14, 2004) (“Diversion to competing websites, advertising or pornography is not a bona fide offering of goods or services and is not a legitimate noncommercial or fair use of the domain name.”) (emphasis added).
Paragraph 4(c) of the Policy establishes three non-exclusive factors through which a respondent can establish rights to, and legitimate interest in, a dispute domain name. An analysis of these three factors lends clear support to Complainant’s position. First, Respondent cannot establish use of, or establish demonstrable preparations to use, the Infringing Domains (or a name corresponding to the domain name) in connection with a bona fide offering of goods or services. Second, Respondent cannot show that it has ever been commonly known by the Infringing Domains or has ever acquired any trademark or trademark rights in the Infringing Domains. Third, Respondent cannot show that it has made a legitimate noncommercial or fair use of the Infringing Domains. Given Respondent’s inability to satisfy any of the three factors delineated in Policy Paragraph 4(c), Complainant respectfully submits that Respondent has no legitimate right to the Infringing Domains.
d. Respondent Both Registered and is Using the Infringing Domains in Bad Faith Respondent registered and uses the Infringing Domains in bad faith. Respondent had actual knowledge of Complainant’s rights in the CDS Mark at the time it registered the subject domain name. Such knowledge serves as strong evidence of bad faith registration and use. 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 Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”). Respondent’s own LinkedIn® profile identifies Respondent as the Co-Owner of Driven 2 Drive, one of Complainant’s biggest competitors. Respondent registered and continues to hold the subject domains in order to prevent their legitimate use by Complainant.
Notwithstanding the above, bad faith under Policy ¶4(c)(iii) reasonably may be inferred from Respondent’s passive holding of the subject domain name. Several factors support this inference: (1) the Infringing Domains are identical to a widely known trademark; (2) Respondent registered the Infringing Domains despite knowledge of Complainant’s rights in the CDS Mark; and (3) it is difficult, if not impossible, to conceive of a legitimate active use of the Infringing Domains by Respondent (in light of Complainant’s broad trademark rights). In similar circumstances, UDRP Panelists have reasonably inferred bad faith use. See Banco Bilbao Vizcaya Argentaria, S.A. v. Victor Edet Okon, WIPO Case No. D2004-0245; Telstra Corp. Limited v. Nuclear Marshmallows, WIPO, No. D2000-0003; DCI S.A. v. Link Commercial Corporation, WIPO Case No. D2000-1232; CareerBuilder, LLC v. Finity Development Group, WIPO Case No. D2006-0615; CBS Broadcasting Inc. v. Edward Enterprises, WIPO, No. D2000-0242; Guerlain S.A. v. Peikang, WIPO, No. D2000-0055.
Nor must Complainant “wait for some future use of the disputed domain name … to occur in order to demonstrate Respondent’s bad faith use.” Comerica Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0615. “The fact that this misappropriation may occur in any as yet undetermined manner at an uncertain future date does not negate Respondent’s bad faith. On the contrary, it raises the specter of continuing bad faith abuse by Respondent of Complainant’s Mark, name and related rights and legitimate business interests.” Id. In view of all the surrounding circumstances, it is respectfully submitted that the Infringing Domains have been registered and are being used by Respondent in bad faith under Policy ¶4(c)(iii).
Moreover, Respondent has used the domain names in an attempt to attract consumers by redirecting visitors to the domains to its own website. This is a clear example of bad faith on the part of Respondent. See, e.g., G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). As such, Respondent’s use and registration of the Infringing Domains is in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 names registered by Respondent are 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 names; and
(3) the domain names have been registered and are 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 operates a driver education and training school in three states. Complainant registered the CANTOR’S DRIVING SCHOOL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,874,041, registered Dec. 22, 2015). Complainant has adequately established its rights in the CANTOR’S DRIVING SCHOOL mark under Policy ¶ 4(a)(i) due to its registration with a governmental authority (in this case, the USPTO). See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office.).
Complainant claims Respondent’s disputed domain names are confusingly similar to Complainant’s mark. The disputed domain names contain the entire mark, omit the space between the words and punctuation, in six instances remove the “s” from “CANTOR’S,” and add a geographic term or the word “sucks” along with the gTLD “.com.” A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. See, e.g., Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016). Likewise, the absence of spaces and punctuation must be disregarded under a Policy ¶4(a)(i) analysis because domain name syntax prohibits them. See Gurney’s Inn Resort & Spa Ltd. v. Whitney, FA 140656 (Forum Feb. 19, 2003) (“Punctuation and spaces between words are not significant in determining the similarity of a domain name and a mark because punctuation and spaces are not reproducible in a domain name.”). The presence of a geographic term can be ignored under a Policy ¶ 4(a)(i) analysis, especially if it is related. See 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.”). The presence of a derogatory term (such as sucks) can be ignored under a Policy ¶ 4(a)(i) analysis. See Chevron Intellectual Property LLC v. andrew toro, FA 1487014 (Forum Apr. 11, 2013) (finding, “The affixation of negative terms does not defeat a finding of confusing similarity” where the respondent registered the domain <chevronthinkswerestupid.com>). Finally, simply removing the letter “s” does not alter the disputed domain names significantly enough to distinguish them from the mark under Policy ¶ 4(a)(i), leading to the inescapable conclusion they are confusingly similar. The domain names can still be (and are) confused with Complainant’s mark. See Staples, Inc. v. Whois Privacy Shield Services, FA 1617690 (Forum June 5, 2015) (holding that “Changing a single letter (especially when it is the final letter) is a minor enough change to support a finding of confusing similarity under Policy ¶4(a)(i).”). The disputed domains are confusingly similar to the CANTOR’S DRIVING SCHOOL 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 cannot show it has ever been commonly known by the infringing domain names. The WHOIS information does not disclose any registration name which appears related to the disputed domain names. Absent other information from (or explanation by) Respondent, the Panel concludes Respondent is not commonly known by the domain names solely based upon the information in the WHOIS. See Am. W. Airlines, Inc. v. Paik, FA 206396 (Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”). Complainant has (barely) met its burden under Policy ¶ 4(c)(ii).
Complainant claims Respondent is making not 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). Originally, the domain names forwarded to Respondent’s web sites. Now the resolving web sites are dynamic parking pages which include sponsored advertising (which generally appears unrelated, such “Original Penguin Official”, “Clarks Official Site” and “Car Insurance - $19 month.” It is clear Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. A respondent’s use of a disputed domain to display unrelated hyperlinks 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). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii).
The <cantorsdrivingschoolsucks.com> domain name deserves special mention. There is nothing in the record which indicates this is a bona fide gripe site. Respondent does not make the claim. The screen shot indicates it was a dynamic parking page when this proceeding commenced. As of the date of this decision, the domain name does not include even a dynamic parking page. It has no content because the domain name only gives a “server not found” error message. Therefore, the domain name fails the basic content test for a “gripe site.” A respondent cannot have a bona fide “gripe site” without some gripes.
The Panel finds Policy ¶ 4(a)(ii) satisfied.
This Panel believes Respondent registered and used the domain names to deliberately disrupt Complainant’s business under Policy ¶ 4(b)(iii). Internet users would seek out Complainant and be forwarded to Respondent’s web site. Respondent started a gripe site with the intention of harming Complainant’s business (although there is no evidence this ever succeeded). This amounts to trying to deliberately disrupt Complainant’s business.
Complainant claims Respondent uses the disputed domain names to profit from Internet users’ confusion by displaying links to products and services. Originally, the domain names forwarded to Respondent’s competing driving school. Now they forward to dynamic parking pages. In this case, GoDaddy is the registrar. GoDaddy offers a cash parking program (with the domain owner getting 80% of the advertisement revenue). Even GoDaddy’s regular parking program offers a free parking page in exchange for allowing sponsored advertisements on the parking page. A respondent engages in bad faith registration and use where it uses a domain to display hyperlinks on a dynamic parking page. See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HINN / 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.”). It is clear forwarding domain names to Respondent’s competing business constitutes bad faith registration and use. Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
Complainant claims Respondent registered the disputed domain with actual knowledge of Complainant’s mark because of the long and well-established reputation of Complainant’s CANTOR’S DRIVING SCHOOL mark in the driver education industry (an industry Respondent is in). There is no doubt Respondent indirectly competes with Complainant as a founder and owner of “Driven 2 Drive Premier Driving School.” Complainant and Respondent both operate in the greater Philadelphia area, so they operate in the same geographical area. It seems obvious Respondent knew about Complainant’s mark when she registered the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Respondent registered and used the disputed domain name with actual knowledge of Complainant’s mark, constituting bad faith under Policy ¶ 4(a)(iii).
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 <cantordrivingschool.com>, <cantordrivingschoolca.com>, <cantordrivingschoolcali.com>, <cantordrivingschoolfl.com>, <cantordrivingschoolnv.com>, <cantordrivingschoolpa.com>, <cantorsdrivingschoolcali.com>, and <cantorsdrivingschoolsucks.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Thursday, August 18, 2016
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