national arbitration forum

DECISION

Starving Students, Inc. v. Moving in ca.com

Claim Number:  FA0410000339575

PARTIES

Complainant is Starving Students, Inc. (“Complainant”), represented by David J. Steele of Christie, Parker & Hale LLP, 3501 Jamboree Road, Suite 6000, Newport Beach, CA, 92660.  Respondent is Moving in ca.com (“Respondent”), P.O. Box 570211, Tarzana, CA, 91406.

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <starvingstudentsmoving.com and <starvingstudentsmovers.com>, registered with Tucows Inc.

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 electronically October 7, 2004; the National Arbitration Forum received a hard copy of the Complaint October 7, 2004.

On October 7, 2004, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the domain names <starvingstudentsmoving.com> and <starvingstudentsmovers.com> are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. verified that Respondent is bound by the Tucows Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 12, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2004, 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@starvingstudentsmoving.com and postmaster@starvingstudentsmovers.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On November 16, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 National Arbitration 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 makes the following assertions:

1. The domain names that Respondent registered, <starvingstudentsmoving.com> and <starvingstudentsmovers.com>, are confusingly similar to Complainant’s STARVING STUDENTS mark.

2. Respondent has no rights to or legitimate interests in the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names.

3. Respondent registered and used the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names in bad faith.

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

FINDINGS

Complainant, Starving Students, Inc., established with extrinsic proof in this proceeding that it was established in 1973 as a one-man moving company and has been a nationally recognized company running hundreds of moving trucks from Los Angeles to New York.  Complainant has been the substantially exclusive user of the STARVING STUDENTS mark in the United States since at least as early as 1979.  Complainant owns trademark rights in the STARVING STUDENTS mark through registration with the United States Patent and Trademark Office (e.g., Reg. No. 1,140,534, issued October 14, 1980).

Respondent registered the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names October 15, 2002, and June 7, 2003, respectively.  Respondent is using the disputed domain names to redirect Internet users to its competing commercial website hosting advertisements and information about its own moving company and services. 

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 the Panel considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires Complainant to 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 with extrinsic proof in this proceeding that it has rights in the STARVING STUDENTS mark through its continuous use in commerce and by registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

The domain names Respondent registered, <starvingstudentsmoving.com> and <starvingstudentsmovers.com>, are confusingly similar to Complainant’s STARVING STUDENTS mark because the domain names fully incorporate the mark and merely add the descriptive terms “moving” and “movers,” which describe Complainant’s moving business.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

Respondent’s addition of a descriptive term and “.com” to Complainant’s mark does not preclude the Panel from finding that the domain names are confusingly similar to the STARVING STUDENTS mark.  See 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); see also Snow Fun, Inc. v. O'Connor, FA 96578 (Nat. Arb. Forum Mar. 8, 2001) (finding that the domain name <termquote.com> is identical to Complainant’s TERMQUOTE mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights to or Legitimate Interests

Complainant established that it has both rights to and legitimate interests in the mark contained in its entirety in these two domain names that Respondent registered.  Complainant alleges that Respondent has no such rights and no authority to use Complainant’s mark.  Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights and legitimate interests in the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or legitimate interests in the domain name.”).

Respondent uses the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names to redirect Internet users to Respondent’s commercial website offering moving services identical to those offered by Complainant.  Respondent’s use of the domain names is evidence that the domain names have not been used for bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that they have not been used for a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); 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, Respondent is not authorized or licensed to register or use domain names that incorporate Complainant’s mark.  The record shows on its face that Respondent is not commonly known by the domain names.  Therefore, the Panel concludes that Respondent lacks rights and legitimate interests in the domain names pursuant to Policy ¶ 4(c)(ii).  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) Respondent is not a licensee of Complainant; (2) Complainant’s prior rights in the domain name precede Respondent’s registration; (3) Respondent is not commonly known by the domain name in question); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent registered and used the disputed domain names in bad faith.  Complainant further submitted proof of Respondent’s use of the domain names to redirect Internet users seeking Complainant’s services to Respondent’s competing offers.  Respondent registered the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain names for the purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website in a manner that attempts to directly compete with Complainant.  Registration of a domain name containing the mark of another for the primary purpose of disrupting the business of that competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark).

Moreover, Respondent is appropriating Complainant’s mark to lead Complainant’s customers to advertising for moving services.  The Panel finds that Respondent is intentionally creating a likelihood of confusion to attract Internet users for Respondent’s commercial gain pursuant to Policy ¶ 4(b)(iv). This also supports findings of bad faith.  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

Accordingly, it is ordered that the <starvingstudentsmoving.com> and <starvingstudentsmovers.com> domain name be TRANSFERRED from Respondent to Complainant.

Hon. Carolyn Marks Johnson, Panelist

Dated: November 30, 2004

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2004/1402.html