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Generic Top Level Domain Name (gTLD) Decisions |
U-Haul International, Inc. v. ALCorp.
N.A.
Claim Number: FA0209000124739
PARTIES
Complainant
is U-Haul International, Inc.,
Phoenix, AZ (“Complainant”) represented by Rod
S. Berman, of Jeffer, Mangels,
Butler & Marmaro, LLP.
Respondent is ALCorp. N.A.,
Westlake Village, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com>,
registered with AWRegistry Services.
PANEL
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known
conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits 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 6, 2002, AWRegistry Services confirmed by e-mail to the Forum that
the domain names <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com>
are registered with AWRegistry Services and that Respondent is the current
registrant of the names. AWRegistry Services verified
that Respondent is bound
by the AWRegistry Services 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 12, 2002, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of October 2, 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@uhaulem.com, postmaster@uhaulem4cheap.com, postmaster@uhaulem4less.com,
postmaster@uhaulit4less.com, postmaster@uhauliteasy.com,
postmaster@uhaulman.com,
and postmaster@4uhauling.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 21, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed Hon.
Carolyn Marks Johnson 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 names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant’s Submission makes the
following assertions:
i.
Respondent’s
<uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com> domain names are confusingly similar to
Complainant’s registered U-HAUL marks.
ii.
Respondent has no rights or legitimate interests in the <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com>
domain names.
iii.
Respondent registered and used the <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com> domain names
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 its U-HAUL
mark with the
Principal Register of the United States Patent and Trademark
Office (“USPTO”), U.S. Registration Numbers 746,034 and 893,891, 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 <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 each of its <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com> domain names on May 2, 2000.
Currently, all of Respondent’s domain names resolve to a generic page informing
a user that the domain
is “coming soon,” followed by a series of various links
and a search engine. Respondent is not licensed and is not 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 Complainant's
undisputed
representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and
will draw such inferences as it considers
appropriate pursuant to paragraph
14(b) of the Rules.
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.
Identical to and/or Confusingly Similar
Complainant established in this
proceeding that it has 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 addition of generic or slang
terms or the addition of simple
descriptive words to a registered trademark,
especially if that mark is well known, is not a substantive enough alteration
to prevent
a finding of confusing similarity. See Arthur
Guinness Son & Co. (Dublin) Ltd. v.
Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of Complainant
combined with a generic word
or term); see also Oki Data Americas, Inc. v. ASD Inc., D2001-0903 (WIPO
Nov. 6, 2001) (“the fact that a domain name incorporates a Complainant’s
registered mark is sufficient to establish
identical or confusing similarity
for purposes of the Policy despite the addition of other words to such marks”);
see also Am. Online, Inc. v.
iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that
Respondent’s domain name <go2AOL.com> was confusingly similar to
Complainant’s
AOL mark).
Furthermore,
as a 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 each of its domain names is inconsequential when ascertaining the
existence of confusing similarity.
Additional generic words within
Respondent’s domain names also fail to prevent them from being confusingly
similar to Complainant’s
mark. For three of the domain names, Respondent simply
added the letters “em”, an abbreviated version of the word “them”. For two
other domain names, the letters “it” were added instead. For some of these
variations of “Uhaul -em or –it”, Respondent added additional
descriptive
phrases such as “4 less”, “4 cheap”, or “easy”. As a result, Respondent has
created phrases such as “You haul (U-haul)
them for cheap” or “You haul
(U-haul) it for less”, taking advantage of Complainant’s mark to suggest some
association with Complainant.
In all of these domain names the dominant feature
of the name remains the U-HAUL mark, slightly altered by generic and
descriptive
words, yet nevertheless confusingly similar to Complainant’s mark.
In the remaining two domain names,
Respondent has either added the generic word “man” or the descriptive prefix
“4” followed by the
suffix “ing” to Complainant’s mark. Again, the dominant
feature of the domain name is the U-HAUL mark, and the addition of these
generic and descriptive words does not defeat a claim of confusing similarity. See
Sony Kabushiki Kaisha v. Inja, Kil,
D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an
ordinary descriptive word…nor the suffix ‘.com’ detract
from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is
satisfied).
Accordingly, the Panel finds that the
domain names are confusingly similar to Complainant’s mark under Policy ¶
4(a)(i).
Rights to or Legitimate Interests
Once a Complainant has successfully
presented a prima facie case illustrating Respondent’s lack of rights or
legitimate interests in the disputed domain name, the burden of demonstrating
such
rights and legitimate interests in the domain name shifts 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).
A Complainant can meet this burden by
successfully addressing any claims Respondent could make under Policy ¶¶
4(c)(i-iii) in its
defense. See Body
Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000)
(finding “that on the evidence provided by Complainant and in the absence of
any submissions from
Respondents, that the Complainant has established that (i)
the Respondents are not using and have not used, or are not demonstrating
and
have not demonstrated, an intent to use the said domain name in connection with
a bona fide offering of goods or services; (ii)
the Respondents are not and
have not been commonly known by the said domain name; and (iii) the Respondents
are not making legitimate
noncommercial or fair use of the said domain name,
without intending to mislead and divert consumers or to tarnish Complainant’s
<THE BODY SHOP> trademark and service mark”).
Complainant shows in its submission that
Respondent is using its domain names in connection with neither bona fide
offerings of goods
or services nor legitimate noncommercial or fair uses, both
examples of rights and legitimate interests under Policy ¶¶ 4(c)(i) and
(iii).
Respondent’s domain names have not been legitimately used since their
registration on May 2, 2000, and contain no information
other than links to
other competing websites. See Computer
Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum
Sept. 8, 2000) (finding that Respondent’s website, which is blank but for links
to other websites, is
not a legitimate use of the domain names); see also Ticketmaster Corp. v. DiscoverNet, Inc.,
D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where
Respondent generated commercial gain by intentionally
and misleadingly
diverting users away from Complainant's site to a competing website).
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
other
than Complainant and its authorized representatives. 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.
In these circumstances, Respondent’s use
of its domain names to refer Internet users to competitors of Complainant,
coupled with its
inability to affirmatively demonstrate any rights or
legitimate interests in the domain names, can only result 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 Boeing Co. v.
Bressi, D2000-1164 (WIPO Oct. 23, 2000) (finding no rights or legitimate
interests where Respondent has advanced no basis on which the Panel
could
conclude that it has a right or legitimate interest in the domain names, and no
use of the domain names has been established);
see also 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 Complaint
and had made no use of the
domain name in question).
Accordingly, the Panel finds that
Respondent does not have any rights or legitimate interests in the domain names
under Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Although the
Policy lists four circumstances that may constitute evidence of bad faith
registration and use, the circumstances described
therein are not exhaustive,
but are rather merely illustrative of situations clearly defining bad faith
registration and use. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000)
(finding that the criteria specified in 4(b) of the Policy is not an exhaustive
list of bad faith
evidence); see also Home Interiors & Gifts, Inc. v. Home Interiors, D2000-0010
(WIPO Mar. 7, 2000) (“[J]ust because Respondent’s conduct does not fall within
the ‘particular’ circumstances set out
in ¶4(b), does not mean that the domain
names at issue were not registered in and are not being used in bad faith”).
One example
of bad faith registration and use not enumerated in the Policy is
the concept of “passively holding” a domain, especially one that
is confusingly
similar to a registered mark.
A well-known, registered trademark
operates as constructive notice of the existence of the mark. It is evidence
that a domain name
has been registered and used in bad faith when Respondent
registers a domain name that is confusingly similar to a trademark, especially
one listed with the Principal Register of the USPTO. 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 worldwide prominence of the
mark and thus Respondent registered the domain name in bad faith).
Furthermore, passive holding of a domain
name, without any further justification or demonstrable preparations for use,
infers bad
faith use and registration of the domain name. See Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain
name or website that connects with the
domain name, and that passive holding of
a domain name permits an inference of registration and use in bad faith); See
also Mondich & Am. Vintage Wine
Biscuits, Inc. v. Brown, D2000-0004 (WIPO Feb. 16, 2000) (holding that
Respondent’s failure to develop its website in a two year period raises the
inference
of registration in bad faith).
Respondent used the U-HAUL registered
mark in its domain names, either despite or because of the mark’s fame and
status, actions that
evidence bad faith registration. In addition, Respondent
has made no use of its domain names since its registration of those domain
names on May 2, 2000. It has passively held the domain names for over two
years. Together, these two principles underscore the fact
that when Respondent
registered the confusingly similar domain names and subsequently failed to
develop those domains, Respondent
exhibited bad faith use and registration. The
facts in this dispute support no other conclusion. See TV Globo Ltda v. Globoesportes.com,
D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name
in dispute is obviously connected with a well-known
mark, (2) Respondent
deliberately chose a domain name which is the mark of the largest TV operator
in the world’s largest Portuguese
speaking country, and (3) Respondent failed
to develop the site). In light of the fact that Respondent has made no submission
to
the contrary, it is acceptable to infer bad faith use on behalf of
Respondent with regards to their passively held domain names.
Accordingly, the Panel finds that
Respondent both registered and used its domain names 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 <uhaulem.com>,
<uhaulem4cheap.com>, <uhaulem4less.com>, <uhaulit4less.com>,
<uhauliteasy.com>, <uhaulman.com>,
and <4uhauling.com> domain
names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks
Johnson, Panelist
Dated: November 4, 2002.
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