Generic Top Level Domain Name (gTLD) Decisions

The Complainant is St. Louis County Cab Company, St. Louis, MO, USA ("Complainant") represented by David B. Jennings, of Armstrong Teasdale LLP. The Respondent is Mitch Riley, University City, MO, USA ("Respondent").

The domain name at issue is "stlouiscountycab.com" registered with Internet Domain Registrars.

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge, has no known conflict in serving as a panelist in this proceeding.

Herman D. Michels as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on January 2, 2001; the Forum received a hard copy of the Complaint on January 3, 2001.

On January 2, 2001, Internet Domain Registrars confirmed by e-mail to the Forum that the domain name "stlouiscountycab.com" is registered with Internet Domain Registrars and that the Respondent is the current registrant of the name. Internet Domain Registrars has verified that Respondent is bound by the Internet Domain Registrars registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 5, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 25, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@stlouiscountycab.com by e-mail.

On January 16, 2001, pursuant to Complainant’s request to have the dispute decided by a One Member Panel, the Forum appointed Herman D. Michels as Panelist.

The Complainant requests that the domain name be transferred from the Respondent to the Complainant.

A. Complainant

Complainant contends that it used the service marks St. Louis County Cab and St. Louis County Cab Company, Inc. in connection with its business, the largest taxi cab and transportation service in the St. Louis metropolitan area and surrounding counties since 1935. It contends that it uses the St. Louis County Cab Company, Inc. as its tradename and is most commoningly know to the consuming public both by this name and its shortened version St. Louis County Cab and County Cab. Complainant contends that Respondent worked as a cab driver for it for three years and registered the domain name stlouiscountycab.com after leaving Complainant’s employ. Complainant contends that the domain name stlouiscountycab.com is identical to its service mark St. Louis County Cab and is confusingly similar to its service mark St. Louis County Cab Company, Inc.

Complainant contends that Respondent has no rights or legitimate interests with respect to the domain name stlouiscountycab.com; that to date Respondent is not using the domain name in connection with a bona fide offering of goods or services, and that it is not using the domain name for any legitimate non-commercial purpose.

Complainant contends that Respondent registered and is using the domain name stlouiscountycab.com in bad faith in that at the time Respondent registered the domain name it had actual knowledge of Complainant’s service marks, and that Complainant did not give Respondent permission to register the domain name using its service marks. Complainant further contends that Respondent has registered and is using the domain name stlouiscountycab.com in bad faith in order to interfere with Complainant’s business by confusing and misdirecting consumers who are seeking Complainant’s business on-line. Finally, Complainant contends that Respondent has registered the domain name stlouiscountycab.com in order to prevent Complainant from reflecting the mark in a corresponding domain name, has engaged in a pattern of conduct in violation of ICANN Policy Rule 4(b)(ii), and has used the domain name has a means to route users to another site of the registrant. Complainant argues that although geographically descriptive marks are not regarded as inherently distinctive, they can be protected as trademarks on proof that through usage they have become distinctive. This acquisition of distinctiveness or secondary meaning results when the consuming public has come to use a geographically descriptive mark in a new and secondary sense of indicating only one source and quality of goods or services. In this regard, the St. Louis County Cab marks, which are geographically descriptive, have acquired secondary meaning by way of Complainant’s continuous use of the mark since 1935 in connection with its taxi cab and transportation services in the St. Louis metropolitan area and surrounding counties.

In sum, Complainant contends that Respondent’s activities constitute unfair competition and infringe on its rights in the St. Louis County Cab, St. Louis County Cab Company, Inc. marks and that unless enjoined, will continue to cause substantial and irreparable harm to it and its business reputation and goodwill.

B. Respondent

Respondent contends that Complainant has not offered any prima facia evidence that common law protects trademark rights of geographically descriptive words, names or phrases; that while Complainant has used the service mark for 65 years, it has not registered the marks with the U.S. Patent and Trademark Office during that entire time. Respondent further contends that Complainant’s name is both generically and geographically descriptive and therefore it has no rights of trademark or service mark in the name St. Louis County Cab or St. Louis County Cab Company, Inc. Consequently, Respondent contends that its domain name stlouiscountycab.com cannot be deemed identical or confusingly similar under ICANN Rules.

Respondent further contends that it has been the sole proprietor of a transportation business located in St. Louis County Missouri and that it has no intention of doing business as St. Louis County Cab Company, Inc. Respondent contends that it has been doing business for the last 3-1/2 years as Clayton Carriage Company and has advertised these services on the Internet. Respondent claims that although it owns several domain names all of which are generically related to the transportation service business and geographically related to the St. Louis or St. Louis County area, it is the rightful owner of each and every domain name including stlouiscountycab.com. In this regard it argues that has a two year window in which to begin using the name in connection with bona fide goods and services. Complainant, on the other hand, has not presented any evidence that it utilizes St. Louis County Cab as its primary service mark in its advertising and promotion and that the service mark is synonymous with the goods and services of Complainant. In any event, if Complainant used the St. Louis County Cab as its primary mark at one time, Respondent has shown that Complainant has abandoned this mark.

Respondent admits that it did have a business relationship as a subcontractor with Complainant from May of 1994 until June of 1997 but this does not constitute a violation of ICANN Policy Rule 2(b). Therefore, Respondent claims that it did not need permission from Complainant to register the domain name stlouiscountycab.com, nor did it need permission from Complainant to register other domain names. Respondent further contends that Complainant owns no rights to the name St. Louis County Cab and, therefore, cannot be in violation of ICANN Policy Rule 4(b)(ii). Finally, Respondent contends that Complainant promotes itself through the phrase County Cab and virtually all of its advertising and promotion is known to the consuming public as County Cab and, thus, Respondent is not in violation of ICANN Policy Rule (b)(v). Finally, Respondent contends that Complainant is attempting reverse domain name hijacking of the domain name stlouiscountycab.com and seeks a decision that Respondent is the rightful and legal owner of the domain name.

Complainant has used the marks St. Louis County Cab, St. Louis County Cab Company, Inc. and County Cab in connection with its business, the largest taxi cab and transportation service in the St. Louis metropolitan area and surrounding counties, since 1935. Complainant uses the St. Louis County Cab Company, Inc. as its tradename and is commonly known to the consuming public by both this name and a shortened version St. Louis County Cab. The Complainant is also well-known to the consuming public as County Cab. As a result of Complainant’s long and continuous use of these service marks, the marks have acquired substantial goodwill and recognition among consumers that is associated with Complainant’s business. Although Complainant has not registered the service marks St. Louis County Cab or St. Louis County Cab Company, Inc. with the U. S. Patent and Trademark Office, Complainant has all rights and interests in these service marks and, has the exclusive right to use them.

The domain name stlouiscountycab.com registered by Respondent is identical to Complainant’s marks St. Louis County Cab and is confusingly similar to St. Louis County Cab Company, Inc.

Respondent worked as a cab driver for Complainant for three years and registered the domain name stlouiscountycab.com after leaving Complainant’s employ. Respondent does not have any rights or interests in the domain name stlouiscountycab.com.

Respondent has registered and is using the domain name stlouiscountycab.com in bad faith. By using the domain name stlouiscountycab.com, Respondent intentionally attempted to attract for commercial gain Internet users to Respondent’s website by creating the likelihood of confusion with Complainant’s marks St. Louis County Cab and St. Louis County Cab Company, Inc. as to the source, sponsorship, affiliation or endorsement of Respondent’s website See Rule 4(b)(v).

Additionally, Respondent registered and is using the domain name stlouiscountycab.com in bad faith by virtue of the fact that Respondent registered the domain name primarily for the purpose of disrupting the business of Complainant. See Rule 4(b)(iii).

Although Respondent may not have made any use of the domain name in question since registering the domain name on March 13, 1999, Respondent’s passive holding is evidence of bad faith use of a domain name. See E. & J. Gallo Winery v. Oak Inv. Group, D2000-1213 (WIPO Nov. 12, 2000) (finding bad faith where (1) Respondent knew or should have known of the Complainant’s famous GALLO marks and (2) Respondent made no use of the domain name "winegallo.com"); Body Shop International PLC v. CPIC NET and Hussain, D2000-1214 (Nov. 26, 2000) (finding bad faith where (1) Respondent failed to use the domain name and (2) Respondent registered the domain name as an opportunistic attempt to gain from the goodwill of the Complainant). Additionally Respondent registered the domain name in connection with his taxi cab business and transportation service which competes with that of Complainant’s taxi cab business and service. See Rule 4(b)(iii). See VeriSign, Inc. v. Nandini Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding bad faith where Respondent has connections with a competitor of the Complainant’s business and Respondent indicated that she intended to enter the same business).

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the Complainant must prove each of the following three elements to obtain an order that a domain name should be canceled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the 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.

The domain name stlouiscountycab.com registered by Respondent is identical to Complainant’s service mark St. Louis County Cab and is confusingly similar to Complainant’s service mark St. Louis County Cab Company, Inc. See Sunglass Hut Corp. v. AAANET, Inc., FA 94370 (Nat. Arb. Forum May 11, 2000) (finding that the domain name sunglasshut.com is confusingly similar to the mark SUNGLASSHUT); Ty, Inc. v. O.Z. Names D000-0370 (WIPO June 27, 2000) (finding that the domain names beniebaby.com, beniesbabies.com, beniebabies.com are confusingly similar to Complainant’s mark beniebabies; See Sydney Opera House Trust v. Trilynx Pty. Ltd., D2000-1224 (WIPO Oct. 31, 2000) (finding that the domain name <sydneyoperahouse.net> is essentially identical to the complainant’s famous trademark SYDNEY OPERA HOUSE).

Complainant has all rights and legitimate interests in the service marks St. Louis County Cab Company, Inc. and St. Louis County Cab and has the exclusive right to use these marks. Respondent does not have any substantial rights or legitimate interests in respect to the domain name stlouiscountycab.com. See Charles Gourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where one Respondent is not a licensee of Complainant); (2) Complainant’s prior rights in the service mark preceded Respondent’s registration of its domain name and (3) Respondent is not commonly known by the domain name in question). See Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the Respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before the notice of the domain name dispute, the domain name did not resolve to a website, and the Respondent is not commonly known by the domain name).

Respondent registered and is using the domain name stlouiscountycab.com in bad faith. Respondent was employed by Complainant as a cab driver for three years and was clearly aware of the Complainant’s marks when registering the domain name in question. Additionally, Respondent made no use of the domain name in question since registering the domain name on November 13, 1999. See E. & J. Gallo Winery v. Oak Inv. Group, Supra; Body Shop Int’l PLC v. CPIC NET and Hussain, Supra. Moreover, Respondent registered the domain name in connection with a commercial offering of goods and services that competes with Complainant’s goods and services and disrupts Complainant’s business. See VeriSign, Inc. v. Nandini Tandon Supra. Finally, Respondent registered the domain name stlouiscountycab.com with the intention of disrupting the business of Complainant by creating a likelihood of confusion with Complainant’s service marks. See Ethnicgrocer.Com Inc. v. Unlimited Latin Flavors, Inc. FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the minor degree of variation from Complainant’s marks suggests that the Complainant’s competitor, registered the names primarily for the purpose of disrupting the Complainant’s business).

Based upon the above findings and conclusions, and pursuant to Rule 4(i) of Rules of the Uniform Domain Name Dispute Resolution Policy and The National Arbitration Forum’s Supplemental Rules of ICANN’s Uniform Domain Resolution Policy, I hereby order that (1) the domain name stlouiscountycab.com registered by Respondent Mitch Riley be transferred forthwith to Complainant St. Louis County Cab Company, Inc. and (2) Respondent Mitch Riley cease and desist from any and all use of the domain name stlouiscountycab.com.