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Generic Top Level Domain Name (gTLD) Decisions |
U-Haul International, Inc. v. AK aka Art
Kratka
Claim Number: FA0209000124748
PARTIES
Complainant
is U-Haul International, Phoenix, AZ
(“Complainant”) represented by Rod S.
Berman, of Jeffer, Mangels, Butler
& Marmaro LLP. Respondent is Art Kratka AK, Hayward, CA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <uhal.com>,
registered with Innerwise, Inc.
PANEL
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.
James
P. Buchele, as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 3, 2002; the Forum received
a hard copy of the
Complaint on September 5, 2002.
On
September 24, 2002, Innerwise, Inc. confirmed by e-mail to the Forum that the
domain name <uhal.com> is
registered with Innerwise, Inc. and that Respondent is the current registrant
of the name. Innerwise, Inc. has
verified that Respondent is bound by the Innerwise, Inc. 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
September 24, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 14, 2002 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@uhal.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification,
the Forum transmitted
to the parties a Notification of Respondent Default.
On
October 23, 2002 pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James
P. Buchele 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.” 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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
1. Respondent’s <uhal.com> domain
name is confusingly similar to Complainant’s registered U-HAUL family of marks.
2. Respondent does
not have any rights or legitimate interests in the <uhal.com> domain name.
3. Respondent
registered and used the <uhal.com> domain name in
bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds many registrations
incorporating variations of its U-HAUL mark. Complainant registered with the
Principal Register
of the United States Patent and Trademark Office (“USPTO”)
U.S. Reg. Nos. 746,034 and 893,891 for its U-HAUL mark on February 26,
1963 and
June 30, 1970, respectively. Variations of Complainant’s U-HAUL mark have also
been listed with the Principal Register of
the USPTO.
In addition, Complainant has been using
the domain name <uhaul.com> since April 20, 1995. At this site, consumers
make reservations,
find U-HAUL locations, obtain rental rates, and access other
information related to the company.
Respondent registered its <uhal.com> domain name on January 6, 2002.
Currently, Respondent’s domain name resolves to a web page that is blank except
for a line of text
informing a user that, “uhal.com was registered with
domainsnext.com”. Respondent is not licensed or otherwise authorized to make
any use of the U-HAUL family of marks for any purpose.
DISCUSSION
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate
pursuant to paragraph 14(b) of
the Rules.
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
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.
Identical and/or Confusingly Similar
Complainant has established rights in the
U-HAUL family of marks through registration with the USPTO and subsequent
continuous use
of the marks.
Possessing a
domain name that is “confusingly similar” to a registered mark involves
registering a name with characteristics that
consist of mere cosmetic differences
between the name and the mark. The mere misspelling of a registered mark in a
domain name, especially
if that mark is well known, is not a substantive
alteration, and fails to prevent a finding of confusing similarity. See
Reuters Ltd. v. Global Net 2000, Inc.,
D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by
only one letter from a trademark has a greater tendency
to be confusingly
similar to the trademark where the trademark is highly distinctive); see
also Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the
domain name <compq.com> is confusingly similar to Complainant’s COMPAQ
mark because the omission of the letter “a” in the domain
name does not
significantly change the overall impression of the mark).
Furthermore,
as a generic top-level domain (such as “.com”) is required for every domain
name, this addition will not have any effect
on whether Respondent’s domain
name is confusingly similar to Complainant’s mark. See Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb.
11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as
a rule of thumb, that the domain name
of a particular company will be the
company name [or trademark] followed by ‘.com.’”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25,
2000) (finding that the top level of the domain name such as “.net” or “.com”
does not affect the domain
name for the purpose of determining whether it is
identical or confusingly similar). Finally, the absence of a hyphen from a
domain
name that is confusingly similar to a trademark is inconsequential. See
Chernow Communications Inc. v.
Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence
of punctuation marks, such as hyphens, does not alter the fact
that a name is
identical to a mark"). Respondent’s elimination of the hyphen from the
U-HAUL mark and the addition of “.com”
after its domain name is inconsequential when ascertaining the existence of confusing
similarity.
Respondent’s <uhal.com>
domain name is confusingly similar to Complainant’s U-HAUL mark. Respondent has
simply misspelled the word “U-Haul” by removing the
hyphen, adding a “.com”,
and eliminating the letter “u”. None of these insignificant variations from the
U-HAUL mark prevent a finding
of confusing similarity; Respondent’s domain name
mimics Complainant’s well-known mark in both pronunciation and appearance.
Moreover,
it is a popular typo that has resulted in many Internet users accidentally
arriving at Respondent’s web site, when their actual intention
is to find
Complainant’s <uhaul.com> web site.
Accordingly, the Panel finds that the <uhal.com> domain name is confusingly similar
to Complainant’s registered mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
The burden of proving a lack of rights or
legitimate interests in a domain name rests initially upon Complainant. Under
Policy ¶¶
4(c)(i-iii), Respondent can rely on an offering of bona fide goods or
services connected with the disputed domain name, the fact
that it has been
commonly known by the domain name, or that it is making a legitimate
noncommercial or fair use of the domain name
to demonstrate a right or
legitimate interest in a domain name. If Complainant rebuts each of these
elements, it has satisfied its
burden by successfully addressing any of the
specified claims Respondent could make under Policy ¶¶ 4(c)(i-iii), therefore
shifting
the burden to Respondent. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that
Respondent has no rights or legitimate interests in
respect of the domain, the
burden shifts to Respondent to provide credible evidence that substantiates its
claim of rights and legitimate
interests in the domain name).
It is neither a bona fide offering of
goods or services nor legitimate noncommercial or fair use under Policy ¶¶
4(c)(i) and (iii)
when the holder of a domain name has done nothing to utilize
that name since it was registered. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13,
2000) (finding no rights or legitimate interests where Respondent failed to
submit a Response to the Complaint
and had made no use of the domain name in
question). The registration is even less legitimate if the domain was
registered for the
purpose of selling it for profit. See Kinko’s Inc. v. eToll, Inc., FA 94447
(Nat. Arb. Forum May 27, 2000) (finding that Respondent has no rights or
legitimate interests in the domain name where
it appeared that the domain name
was registered for ultimate use by Complainant); see also Wal-Mart Stores, Inc. v. Stork,
D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to
sell the domain name suggests it has no legitimate use).
In the present
dispute, Respondent has done nothing to develop its domain name other than to
add the text “uhal.com was registered
with domainsnext.com.” Moreover,
Respondent approached Complainant in an attempt to either sell its domain name
registration to Complainant,
or redirect users to Complainant’s web site for a
large fee. Respondent is not using its domain name, and by its conduct, has
shown
that it is only interested in using the domain in order to sell its
rights to Complainant. By submitting these facts to the Panel,
Complainant has
shown that Respondent is not making a bona fide offering of goods or services
by maintaining an empty web site, nor
is it fairly using its domain for
legitimate noncommercial uses by offering to sell its confusingly similar domain
name registration
to Complainant.
Furthermore, Complainant has not licensed
Respondent to use its mark and can find no data supporting the proposition that
Respondent
is commonly known by the domain name—in fact, due to the general
popularity of the U-HAUL mark, it is doubtful that any entity could
be commonly
known by Complainant’s mark. See U-Haul Int’l., Inc. v. Steven Freed, FA
103878 (Nat. Arb. Forum Mar. 1, 2002) (as Complainant has held rights to U-HAUL
for nearly forty years, it is difficult to imagine
that another entity could
possibly be known by any of the domain names in dispute other than
Complainant); see also Nike, Inc.
v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or
legitimate interests where one “would be hard pressed to find a person who
may
show a right or legitimate interest” in a domain name containing Complainant's
distinct and famous NIKE trademark). These showings
by Complainant, following
the criteria outlined in Policy ¶¶ 4(c)(i-iii), successfully address any claims
Respondent could make under
the Policy, thus adequately meeting its burden of
demonstrating Respondent’s lack of rights and legitimate interest in the domain
name.
Once a complainant has successfully
presented its prima facie case illustrating a respondent’s lack of
rights or legitimate interests in its domain name, the burden of demonstrating
rights and
legitimate interests in the domain name shifts to the respondent.
Respondent submitted nothing to the Panel in response to the Complaint.
In
these circumstances Respondent’s failure to affirmatively demonstrate any
rights or legitimate interests in its domain name results
in a finding for
Complainant. See Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interest in the domain name because Respondent
never
submitted a Response nor provided the Panel with evidence to suggest
otherwise); see also Canadian
Imperial Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution
Sept. 23, 2000) (finding no rights or legitimate interests where no such right
or interest was immediately
apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Accordingly, the Panel finds that Respondent
does not have any rights or legitimate interests in its domain name under
Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
A registered trademark listed with the
Principal Register of the USPTO operates as constructive notice of the existence
of the mark.
It is evidence that a domain has been registered and used in bad
faith when a Respondent registers a domain name that is confusingly
similar to
a trademark despite actual or constructive notice of the mark. See U-Haul
Int’l., Inc. v. Steven Freed, FA 103878 (Nat. Arb. Forum Mar. 1, 2002)
(because of the fame attained by Complainant’s mark, it can be presumed that
Respondent knew
of U-HAUL before registering the disputed domain names); see
also Exxon Mobil Corp. v. Fisher,
D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and
constructive knowledge of Complainant’s EXXON mark given
the world-wide
prominence of the mark and thus Respondent registered the domain name in bad
faith).
Similarly, Policy ¶ 4(b)(i) enunciates an
example of bad faith use and registration when dealing with a popular mark. The
Policy states
that when the circumstances surrounding the registration of a
domain name indicate that the domain was, “acquired…primarily for the
purpose
of selling, renting, or otherwise transferring the domain name registration to
the complainant who is the owner of the trademark
or service mark…for valuable
consideration in excess of [Respondent’s] out-of-pocket costs,” bad faith use
and registration is evidenced.
Obtaining a domain name that is confusingly
similar to a registered mark in order to earn a profit from the sale of that
domain name
registration is a sign of bad faith registration and use. See Dollar Rent A Car Sys. Inc. v. Jongho,
FA 95391 (Nat. Arb. Forum Sept. 11, 2000) (finding that Respondent demonstrated
bad faith by registering the domain name with the
intent to transfer it to
Complainant for $3,000, an amount in excess of its out of pocket costs); see
also Dynojet Research, Inc. v. Norman,
AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad
faith when he requested monetary compensation beyond
out of pocket costs in
exchange for the registered domain name). Failure to utilize a domain name,
coupled with an offer for sale,
is even stronger evidence of bad faith. See Cruzeiro Licenciamentos Ltda v. Sallen,
D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain
name can qualify as bad faith if the domain name
owner’s conduct creates the
impression that the name is for sale).
In this dispute, Respondent registered <uhal.com>
decades after Complaint registered its mark with the USPTO. Since its
registration of the domain name over 10 months ago, Respondent
has not taken
any steps to develop a web site associated with the domain name. What
Respondent has done is initiate contact with
Complainant in an attempt to sell
or transfer its rights in the domain name for amounts in excess of its
out-of-pocket expenses.
After an initial offer to transfer the domain name for
$3,500, or to redirect its site to Complainant’s site for $1,500, Respondent
attempted to negotiate for a price no lower than $1,000. In response to a
letter from Complainant demanding transfer of the domain
name and notifying
Respondent that its domain name infringed on a registered trademark, Respondent
again responded with a counteroffer,
this time for $900.
From its initial offer and throughout its
subsequent offers, Respondent repeatedly requested that Complainant pay far
more than the
cost of registration for the domain name. As Respondent has done
nothing to develop the domain name, and has no maintenance costs
associated
with the domain name, even its most modest sale offer is excessive so as to
evidence bad faith. The fact that the web
site has been passively held for over
10 months also evidences that Respondent’s sole reason for registering the
domain name was
to profit by sale or transfer of its rights to Complainant. In
light of Respondent’s failure to respond in these proceedings, Complainant
has
shown sufficient evidence for the Panel to conclude that Respondent acquired <uhal.com>
in order to transfer or sell the domain name registration to Complainant for
profit. See Charles Jourdan
Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate
for the Panel to draw adverse inferences from Respondent’s failure to reply
to
the Complaint).
Accordingly, the Panel finds that
Respondent both registered and used its <uhal.com> domain name in
bad faith, and Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having established all three elements
under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <uhal.com> domain name be TRANSFERRED
from Respondent to Complainant.
James P. Buchele, Panelist
Dated: October 25, 2002
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