San Miguel Mountain Ventures, LLC v. Martina Zammit
Claim Number: FA2303002036094
Complainant is San Miguel Mountain Ventures, LLC (“Complainant”), represented by Jeffrey Joyce of Eaton Peabody, PA, Colorado, USA. Respondent is Martina Zammit (“Respondent”), Malta.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <tellurideexpress.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to Forum electronically on March 16, 2023; Forum received payment on March 16, 2023.
On March 17, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <tellurideexpress.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 March 21, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 10, 2023 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@tellurideexpress.com. Also on March 21, 2023, 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, Forum transmitted to the parties a Notification of Respondent Default.
On April 16, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Richard Hill as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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 states that it is a provider of ground transportation services, in particular in the well-known Telluride resort area, most commonly transporting passengers from airports to their destinations. In addition to airport transportation, Complainant also provides wedding and event transportation services, charter transportation services such as wine tours, trailhead shuttle services, and late-night taxi services. Under its TELLURIDE EXPRESS mark Complainant provides its services to approximately 60,000 passengers per year, and currently operates a fleet of approximately 75 vehicles that are branded with the mark. Complainant has extensively advertised its mark since 1999, including through its website at the disputed domain name from September 24, 1999 until September 24, 2020, when the domain registration was accidentally allowed to expire, and the domain name was registered by Respondent. Complainant currently advertises its services through a different domain name, and on social media.
Complainant alleges that the disputed domain name is identical or confusingly similar to its TELLURIDE EXPRESS mark as it incorporates the mark in its entirety and merely adds the “.com” generic top-level-domain name ("gTLD").
According to Complainant, Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been authorized by Complainant to use its TELLURIDE EXPRESS mark. Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate non commercial or fair use. Instead, the resolving website consists of a portion of the content Complainant had on its website at that time it lost the registration, but with nonfunctional links. In effect, the resolving website appears to be the Complainant’s actual home page but with no functional content, and importantly, all links for reserving Complainant’s services are non-functional. As a result, when consumers attempt to use the resolving website to reserve what they believe are Complainant’s services, they find that the reservation system does not function. This damages Complainant’s reputation and business.
Further, says Complainant, Respondent registered and uses the disputed domain name in bad faith. Respondent’s website disrupts Complainant’s reputation and business, as it mimics Complainant’s legitimate website while not offering any services.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark TELLURIDE EXPRESS and uses it to market transportation services.
Complainant’s rights in its mark date back to 1999.
The disputed domain name was registered in 2020.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The resolving website consists of a portion of the content Complainant had on its website at the disputed domain name before it lost the registration of the disputed domain name in 2020, but with non functional links to the kinds of transportation services provided by Complainant.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant presents evidence of the registration of the trade name TELLURIDE EXPRESS; the Panel finds that this is not sufficient to establish trademark rights under the Policy.
Complainant also presents evidence showing that it registered the disputed domain name in 1999, and used it to market and to provide its transportation services well before Respondent’s registration of the disputed domain name. Further, Complainant presents evidence showing that used its TELLURIDE EXPRESS mark in various promotional and advertising materials. Common law rights may be established through evidence of secondary meaning in the mark such as longstanding use, evidence of an identical domain name, media recognition, and promotional material and advertising. See Marquette Golf Club v. Al Perkins, 1738263 (Forum July 27, 2017) (finding that Complainant had established its common law rights in the MARQUETTE GOLF CLUB mark with evidence of secondary meaning, including “longstanding use; evidence of holding an identical domain name; media recognition; and promotional material/advertising.”). Common law rights are sufficient to establish rights in a mark under Policy ¶ 4(a)(i). 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). Therefore, the Panel finds that Complainant established common law rights in its TELLURIDE EXPRESS mark, with rights predating the registration of the disputed domain name.
The disputed domain name incorporates Complainant’s TELLURIDE EXPRESS mark in its entirety and merely adds the “.com” gTLD. The addition of a gTLD fails sufficiently to distinguish a disputed domain name from a mark per Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Therefore the Panel finds that the disputed domain name is identical to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has not licensed or otherwise authorized Respondent to use its TELLURIDE EXPRESS mark. Respondent is not commonly known by the disputed domain name: under Policy ¶ 4(c)(ii), WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Here, The WHOIS information for the disputed domain name lists the registrant as “Martina Zammit”. Therefore the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
The resolving website consists of a portion of the content Complainant had on its website at the disputed domain name before it lost the registration of the disputed domain name in 2020, but with non functional links to the kinds of transportation services provided by Complainant. Both the disputed domain name itself, and the content of the resolving website, falsely suggest that they are associated with the Complainant. That is not a fair or legitimate use of the disputed domain name. Indeed, according to paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Jurisprudential Overview 3.0): “Fundamentally, a respondent’s use of a domain name will not be considered ‘fair’ if it falsely suggests affiliation with the trademark owner …”. See 201 Folsom Option JV, L.P. and 201 Folsom Acquisition, L.P. v. John Kirkpatrick, D2014-1359 (WIPO, Oct. 28, 2014). Thus the Panel finds that Respondent fails to use the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(a)(i) or (iii). And the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Consumers visiting the resolving website are likely to be confused as to whether Respondent and/or its website is affiliated in some way with Complainant; and/or the disputed domain name or the associated website are endorsed, authorized, or sponsored by Complainant, none of which are true. This is a form of bad faith use of the disputed domain name. See Bank of America Corp. v. Out Island Props., Inc., FA 154531 (Forum June 3, 2003) (bad faith established “[s]ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website.”); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)). The Panel therefore finds that Respondent registered and uses the disputed domain in bad faith in the sense 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 <tellurideexpress.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: April 17, 2023
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