DECISION

FMR Corp. v. Weldon Coach

Claim Number:  FA0406000289039

PARTIES

Complainant is FMR Corp. (“Complainant”), represented by Sean F. Heneghan, 31 Reading Hill Avenue, Melrose, MA 02176.  Respondent is Weldon Coach  (“Respondent”), 831 Beacon St., Newton, MA 02459.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <bostoncoach.net>, registered with Go Daddy Software, Inc.

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on June 22, 2004; the Forum received a hard copy of the Complaint on June 24, 2004.

On June 23, 2004, Go Daddy Software, Inc. confirmed by e-mail to the Forum that the domain name <bostoncoach.net> is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 June 28, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 19, 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@bostoncoach.net 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 July 27, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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 <bostoncoach.net> domain name is identical to Complainant’s BOSTONCOACH mark.

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

3. Respondent registered and used the <bostoncoach.net> domain name in bad faith.

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

FINDINGS

Complainant, FMR Corp., is the parent company of the affiliated group of businesses known as Fidelity Investments and is the owner of the BOSTONCOACH mark and trade name.  Complainant exercises its right in the mark by using it in connection with executive sedan, limousine and group transportation services in hundreds of cities across the United States, Canada, Europe and the Asia-Pacific. 

Complainant holds trademark registrations with the United States Patent and Trademark Office for the BOSTONCOACH mark (Reg. Nos. 2,168,014 and 2,294,068, issued June 23, 1998 and November 23, 1999, respectively).  In addition, Complainant is the owner of Canadian Trade Mark Registration Nos. 535,902 and 554,243, both of which incorporate the BOSTONCOACH trademark.  Complainant also operates <bostoncoach.com>, which offers customers access to many of its services via the Internet.

Respondent, Weldon Coach, is a full service professional sedan and executive van transportation company that services the Greater Boston area and New England.  Respondent registered the disputed domain name <bostoncoach.net> with the registrar Go Daddy Software, Inc. on December 9, 2003, more than eighteen years after Complainant had adopted and began using the BOSTONCOACH trademark and more than eight years after Complainant registered the <bostoncoach.com> domain name.  Respondent has used the domain name in connection with its own website, featuring services virtually identical to, and directly in competition with Complainant’s transportation services.

Additionally, Respondent has attempted to offer the <bostoncoach.net> domain name registration for sale to Complainant in the course of several e-mail exchanges, requesting Complainant to call if it was interested in purchasing the <bostoncoach.net> domain name registration.  Ultimately, the disputed domain name was not purchased or transferred and the domain name currently directs Internet users to a page splash for Online Directors, Inc., offering Web hosting and advertising 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 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 BOSTONCOACH mark through registration with the United States Patent and Trademark Office and through continued use of its marks in commerce for the last eighteen years.  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 name registered by Respondent, <bostoncoach.net>, is identical to Complainant’s BOSTONCOACH mark because the only difference between the two is the addition of the “.net” generic top-level domain.  The addition of a generic top-level domain is not a distinguishing difference.  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 Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) stating "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"; see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark; see also Nike, Inc. v. Coleman, D2000-1120 (WIPO Nov. 6, 2000) finding that the domain name <nike.net> is identical to Complainant’s famous NIKE mark.

Furthermore, Respondent’s use of the <bostoncoach.net> domain name renders it confusingly similar to the public because Respondent uses the domain name in connection with virtually identical services as that offered by Complainant through its BOSTONCOACH mark.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (the “likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding the domain name <mannbrothers.com> confusingly similar to Complainant’s MANN BROTHERS mark “so as to likely confuse Internet users who may believe they are doing business with Complainant or with an entity whose services are endorsed by, sponsored by, or affiliated with Complainant; hence, satisfying the confusing similarity requirement”; see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist.

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

Rights or Legitimate Interests

Complainant has established that it has rights to and legitimate interests in its mark and has alleged that Respondent has no such rights or legitimate interests in the domain name that contains in its entirety Complainant’s mark.  Due to Respondent’s failure to respond to the Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name.  In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have such rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”; see also 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 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.

Additionally, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true.  See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is wholly appropriating Complainant’s mark in its domain name to advertise Respondent’s transportation services.  Respondent is using the <bostoncoach.net> domain name to redirect Internet users to a website that advertises and offers transportation services identical to those offered by Complainant.  The Panel finds that Respondent’s use of a domain name that is identical to Complainant’s BOSTONCOACH mark to redirect Internet users interested in Complainant’s services to a commercial website that offers identical transportation services is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website; see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”; see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant.

Moreover, Respondent offered no evidence and nothing in the record suggests that Respondent is commonly known by the <bostoncoach.net> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name; 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

Respondent registered the <bostoncoach.net> domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competed with Complainant.  Registration of a domain name for the primary purpose of disrupting the business of a 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; see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters.

Moreover, Respondent is wholly appropriating Complainant’s mark to lead Complainant’s customers to advertising for transportation services.  The Panel finds that Respondent is using the domain name to intentionally create a likelihood of confusion and attract Internet users for Respondent’s commercial gain pursuant to Policy ¶ 4(b)(iv).  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.

Furthermore, upon receiving Complainant’s cease-and-desist letter, Respondent attempted to solicit an offer from Complainant to purchase the <bostoncoach.net> domain name registration from Respondent.  The Panel finds bad faith pursuant to Policy ¶ 4(b)(i) has been established because Respondent, a competitor of Complainant, attempted to sell the disputed domain name registration to Complainant.  See Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (“general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”); see also Moynahan v. Fantastic Sites, Inc., D2000-1083 (WIPO Oct. 22, 2000) finding bad faith where Respondent offered to sell the Domain Name to Complainant for $10,000 when Respondent was contacted by Complainant; see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) finding that the attempted sale of a domain name is evidence of bad faith; see also John C. Nordt Co., Inc. v. Jewelry Exch., FA 96789 (Nat. Arb. Forum Apr. 11, 2001) finding that Respondent exhibited bad faith when Respondent, a competitor of Complainant, attempted to sell a domain name, which was identical to Complainant’s MOTHER’S RING mark, to Complainant for a profit.

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 <bostoncoach.net> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  August 9, 2004

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