DECISION

Mears Destination Services, Inc. v. Armand Romero

Claim Number:  FA0302000146234

PARTIES

Complainant is Mears Destination Services, Inc., Orlando, FL (“Complainant”) represented by Carolyn M. Salzmann, of Akerman Senterfitt. Respondent is Armand Romero a/k/a Mearstowncar.com, Kissimmee, FL (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <mearstowncar.com>, registered with Network Solutions, 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 A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on February 20, 2003; the Forum received a hard copy of the Complaint on February 24, 2003.

On February 24, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <mearstowncar.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 4, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 24, 2003 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@mearstowncar.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 March 31, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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 makes the following assertions:

1. Respondent’s <mearstowncar.com> domain name is confusingly similar to Complainant’s MEARS and MEARS TOWN CAR SERVICE marks.

2. Respondent does not have any rights or legitimate interests in the <mearstowncar.com> domain name.

3. Respondent registered and used the <mearstowncar.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant has used the MEARS mark in relation to its transportation services in Central Florida since 1939.  Complainant’s transportation services include airport shuttle, charter and luxury transportation.  The luxury transportation services featured by Complainant are Lincoln Towncars.  Complainant’s drivers meet customers at the baggage claim of the airport, escort them to a Towncar and transport them to their resort, office or home.  Complainant owns and operates Central Florida’s largest fleet of luxury Towncars, and is the largest provider of such a service in Central Florida.

Complainant has registered its MEARS (Reg. No. 2,290,724) and MEARS TOWN CAR SERVICE (Reg. No. 2,290,708) with the United States Patent and Trademark Office.  Complainant also holds numerous registered marks that are variations on the MEARS mark including MEARS TRANSPORTATION GROUP (Reg. No. 2,290,710); MEARS LUXURY LIMOUSINES (Reg. No. 2,290,707); and MEARS DESTINATION SERVICES (Reg. No. 2,290,724).

Respondent, Armand Romero, is domiciled in Florida and is employed by Complainant’s main competitor, Associated Transportation of Florida, Inc.(“Associated”). Respondent registered the <mearstowncar.com> domain name on August 14, 2002.  Respondent is using the disputed domain name to display a website similar to the website Associated uses to advertise its services at <atflorida.net>.  When contacted by Complainant’s attorney, Respondent offered to sell the <mearstowncar.com> domain name to Complainant, although it did not name a price.

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 draw such inferences 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 and/or Confusingly Similar

Complainant has established that it has rights in the MEARS and MEARS TOWN CAR SERVICE marks through registration with the United States Patent and Trademark Office and use in relation to its transportation services since 1939.

Respondent’s <mearstowncar.com> domain name is confusingly similar to Complainant’s MEARS and MEARS TOWN CAR SERVICE marks because it incorporates the entirety of Complainant’s MEARS mark and merely omits the word “service” from Complainant’s MEARS TOWN CAR SERVICE mark.  The omission of a descriptive word in Complainant’s mark within a domain name does not create a distinct mark capable of overcoming a claim of confusing similarity pursuant to Policy ¶ 4(a)(i).  See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Down East Enter. Inc. v. Countywide Communications, FA 96613 (Nat. Arb. Forum Apr. 5, 2001) (finding the domain name <downeastmagazine.com> confusingly similar to Complainant’s common law mark DOWN EAST, THE MAGAZINE OF MAINE); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the Complainant’s “Asprey & Garrard” and “Miss Asprey” marks).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

Moreover, Respondent has failed to invoke any circumstances that could demonstrate rights and legitimate interests in the domain name.  When Complainant asserts a prima facie case against Respondent, the burden of proof shifts to Respondent to show that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  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 with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the Respondent has failed to invoke any circumstance that could demonstrate any rights or legitimate interests in the domain name).

Respondent is an employee of Complainant’s main competitor, Associated Transportation of Florida Inc.  Respondent is using the <mearstowncar.com> domain name to host a website that looks similar to Respondent’s employer’s website.  Based on the existence of Respondent’s relationship with Complainant’s competitor and the appearance of the website at the disputed domain name, the Panel infers that Respondent is using the domain name to divert Internet traffic to a website that promotes Complainant’s competitor.  This type of use is not considered to be a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Ziegenfelder Co. v. VMH Enter., Inc. D2000-0039 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests based on the fact that the domain names bear no relationship to the business of Respondent and that Respondent would only legitimately choose to use Complainant’s mark in a domain name if Respondent was seeking to create an impression that the two businesses were affiliated); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”).

Respondent is known to this Panel as Armand Romero.  Furthermore, Respondent works for Complainant’s main competitor.  There is no evidence on record refuting these two facts nor is there any evidence that suggests Respondent is commonly known as MEARS TOWN CAR or <mearstowncar.com>.  Thus, the Panel finds that Respondent has not established that it has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent works for Complainant’s main competitor and lives in the region of Florida where Complainant operates.  From this information the Panel infers that Respondent was on notice of Complainant’s MEARS and MEARS TOWN CAR SERVICE marks when it registered the <mearstowncar.com> domain name.  Registration of an infringing domain name despite actual knowledge of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse").

Respondent offered to sell the domain name to Complainant.  The Panel infers that Respondent registered the domain name with the intent of selling it to Complainant because Respondent could have no fathomable legitimate use for the <mearstowncar.com> domain name. Registration of a domain name with the intent of selling it to Complainant is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).  See Pocatello Idaho Auditorium Dist. v. CES Marketing Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner"); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Thus, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <mearstowncar.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  April 4, 2003

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