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Generic Top Level Domain Name (gTLD) Decisions |
Freightliner LLC v. LaPorte Holdings Inc.
Claim
Number: FA0411000371766
Complainant is Freightliner LLC (“Complainant”), represented
by Chanley T. Howell, of Foley & Lardner LLP,
One Independent Drive, Suite 1300, Jacksonville, FL 32202-5017. Respondent is LaPorte Holdings Inc. (“Respondent”), 2202 S. Figueroa St., Suite
721, Los Angeles, CA 90023.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <acessfreightliner.com>, registered with Nameking.com,
Inc.
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.
The
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
24, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on December 3, 2004.
On
November 29, 2004, Nameking.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <acessfreightliner.com> is
registered with Nameking.com, Inc. and that Respondent is the current
registrant of the name. Nameking.com, Inc. has verified
that Respondent is
bound by the Nameking.com, 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
December 7, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 27, 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@acessfreightliner.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
January 4, 2005, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the National Arbitration
Forum appointed the
Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <acessfreightliner.com>
domain name is confusingly similar to Complainant’s ACCESSFREIGHTLINER.COM
mark.
2. Respondent does not have any rights or
legitimate interests in the <acessfreightliner.com> domain name.
3. Respondent registered and used the <acessfreightliner.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Freightliner LLC, is the leading North American truck and specialty vehicle
manufacturer. Complainant has
registered numerous marks with the United States Patent and Trademark Office
(“USPTO”) including FREIGHTLINER (Reg.
No. 583,277), FREIGHTLINER CENTURY CLASS
(Reg. No. 2,034,349), FREIGHTLINER SERVICELINK (Reg. No. 2,059,949) and
FREIGHTLINER SERVICEPOINT
(Reg. No. 2,484,398). Complainant has operated a website at the <accessfreightliner.com>
domain name since February 8, 2002.
Complainant uses the ACCESSFREIGHTLINER.COM mark on letterhead, business
cards, advertising brochures and other advertising and marketing
materials. Complainant spends
substantial amounts of time, money and resources marketing and promoting the ACCESSFREIGHTLINER.COM
mark.
Respondent
registered the <acessfreightliner.com> domain name on February 28,
2003. Respondent’s domain name resolves
to a portal website that features links to competing trucking and truck-related
websites.
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.
Complainant has
established rights in the ACCESSFREIGHTLINER.COM mark, despite the fact that
Complainant has not registered this particular
mark with any trademark
authority. See SeekAmerica Networks Inc. v. Masood, D2000-0131
(WIPO Apr. 13, 2000) (finding that the Rules do not require that Complainant's
trademark or service mark be registered
by a government authority or agency for
such rights to exist); see also British
Broad. Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000) (noting that the
Policy “does not distinguish between registered and unregistered trademarks and
service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service
marks”).
Complainant’s
mark has gained secondary meaning through its use as a domain name since
February 8, 2002 and through Complainant’s
aggressive marketing and promotion
of the mark. Thus, Complainant has
effectively established common-law rights in the ACCESSFREIGHTLINER.COM
mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary
meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001)
(“[O]n account of long and substantial use of the said name
[<keppelbank.com>] in connection
with its banking business, it has
acquired rights under the common law.”).
Respondent’s <acessfreightliner.com>
domain name is identical to Complainant’s mark but for the deletion of one of
the letters “c” in the word “access.”
Such minor change is insufficient to negate a finding of confusing
similarity pursuant to Policy ¶ 4(a)(i).
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 State Farm
Mut. Auto. Ins. Co. v. Try Harder & Co., FA 94730 (Nat. Arb. Forum June
15, 2000) (finding that the domain name <statfarm.com> is confusingly
similar to Complainant’s
STATE FARM mark).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth in the
Complaint as true. See Am.
Online, Inc. v. Clowers, FA 199821 (Nat. Arb. Forum Nov. 14, 2003)
(finding that the failure to challenge a complainant’s allegations allows a
panel to accept
all of complainant’s reasonable allegations and inferences as
true); see also Wells Fargo & Co. v. Shing, FA
205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that the failure to respond to a
complaint allows a panel to make reasonable inferences
in favor of a
complainant and accept complainant’s allegations as true).
In addition, the
Panel construes Respondent’s failure to respond as an admission that Respondent
lacks rights and legitimate interests
in the disputed domain name. 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 Honeywell Int’l Inc. v. Domain Deluxe, FA 269166 (Nat. Arb. Forum June 29,
2004) (“The failure of Respondent to respond to the Complaint functions both as
an implicit
admission that Respondent lacks rights to and legitimate interests
in the domain names, as well as a presumption that Complainant’s
reasonable
allegations are true.”).
Furthermore,
nothing in the record establishes that Respondent is commonly known by the
disputed domain name. Moreover,
Respondent is not licensed or authorized to register or use domain names that
incorporate Complainant’s mark.
Therefore, the Panel concludes that Respondent lacks rights and
legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. 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 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 mark precede Respondent’s registration; (3)
Respondent is not commonly known by the domain
name in question).
Moreover,
Respondent has used the <acessfreightliner.com> domain name to
direct Internet users to competing truck manufacturers and truck-related
websites. Such competing use of a
domain name confusingly similar to Complainant’s ACCESSFREIGHTLINER.COM mark is
not a use in connection with
a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
domain name pursuant
to Policy ¶ 4(c)(iii).
See Am. Online, Inc. v. Fu,
D2000-1374 (WIPO Dec. 11, 2000) (“[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.”); see also Ameritrade Holdings Corp. v. Polanski, FA
102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that Respondent’s use of the
disputed domain name to redirect Internet users
to a financial services
website, which competed with Complainant, was not a bona fide offering of goods
or services).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) by registering a domain name that
is confusingly similar to
Complainant’s mark and using it to market competing truck manufacturers and
truck-related websites. See EthnicGrocer.com, Inc. v. Unlimited Latin
Flavors, Inc., FA 94385 (Nat. Arb. Forum July 7, 2000) (finding that the
minor degree of variation from Complainant's marks suggests that Respondent,
Complainant’s competitor, registered the names primarily for the purpose of
disrupting Complainant's business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July
18, 2000) (finding Respondent acted in bad faith by attracting Internet users
to a website that
competes with Complainant’s business).
Furthermore,
Respondent is capitalizing on the goodwill of the ACCESSFREIGHTLINER.COM mark
by using the disputed domain name to divert
Internet users to a website
featuring links to competing truck manufacturers and truck-related
websites. Since the disputed domain
name contains a confusingly similar version of Complainant’s mark, a consumer
searching for Complainant
would become confused as to Complainant’s affiliation
with the resulting website. The Panel
infers that Respondent receives click-through fees for redirecting Internet
users to these competing websites. Therefore,
Respondent’s opportunistic use of the disputed domain name represents bad faith
registration and use under Policy ¶ 4(b)(iv).
See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22,
2002) (finding that if Respondent profits from its diversionary use of
Complainant's mark when
the domain name resolves to commercial websites and
Respondent fails to contest the Complaint, it may be concluded that Respondent
is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
Respondent directed Internet users seeking Complainant’s site
to its own
website for commercial gain).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <acessfreightliner.com> domain name be TRANSFERRED
from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr.
(Ret.), Panelist
Dated:
January 17, 2005
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