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Marionnaud Parfumeries v. Balata, Inc. [2005] GENDND 500 (9 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Knight Transportation Inc. v. LaPorte Holdings, Inc.

Case No. D2004-1022

1. The Parties

The Complainant is Knight Transportation Inc., Phoenix, Arizona, United States of America, represented by Ryley Carlock and Applewhite, United States of America.

The Respondent is La Porte Holdings, Inc., Los Angeles, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <knightrans.com> is registered with NameKing.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2004. On December 8, 2004, the Center transmitted by email to NameKing.com a request for registrar verification in connection with the domain name at issue. On December 16, 2004, NameKing.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on January 7, 2005. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2005.

In accordance with the Rules, paragraph 5(a), the due date for Response was January 30, 2005. The Respondent did not submit any response. Accordingly, the Center sent the notification of Respondent Default on February 3, 2005. To date, no response has been received from Respondent.

The Center appointed Peter J. McGovern as the sole panelist in this matter on February 23, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

A. The Trademark

The Complainant, Knight Transportation Inc., alleges ownership of the rights in the trademark KNIGHT TRANSPORTATION for use in conjunction with interstate shipping and transportation by truck. The trademark was registered on the principle register with the United States Patent and Trademark Office on March 11, 1997. A copy of the certificate evidencing such registration was attached as Appendix C to the Complaint.

Complainant has used the KNIGHT TRANSPORTATION trademark in commerce and in connection with interstate shipping and transportation since 1989. The Complainant has offices in a number of states and provides services throughout the United States. As of December 31, 2003, the Complainant owned and operated 2,165 tractors and contracted to use an additional 253 tractors. Complainant maintains a trailer fleet of approximately 6,212 trailers. Complainant advertises its services by using the <knighttrans.com> domain name which was registered on December 10, 1997, (page 7 of Complaint)

As of February 26, 2004, the <knightrans.com> domain name was registered in the name of Henry Chan, Nassau, Bahamas as reflected in Appendix I of the Complaint. As of September 21, 2004, Henry Chan transferred the <knightrans.com> domain name to Horoshiy Incorporated, Curacao, as reflected in Appendix K of the Complaint.

As of October 20, 2004, the <knightrans.com> domain name was transferred to Respondent, LaPorte Holdings, Inc., Los Angeles, California, as reflected in Appendix N of the Complaint.

The Respondent has failed to answer the Complaint as reflected in the WIPO Arbitration and Mediation Center’s notification of Respondent Default on February 3, 2005.

B. Jurisdictional Basis

The dispute is within the scope of the Policy, and the single member panel has jurisdiction to decide the dispute. The Registrar’s registration agreement incorporates the Policy by reference.

On page five and nine of the Complaint, the Complainant avers that each of the three requirements of paragraph 4(a) of the Policy has been satisfied.

5. Parties Contentions

A. The Complainant

The Complainant is Knight Transportation, Inc., an Arizona corporation and is engaged in interstate shipping and transportation by truck.

(a) The Complainant alleges that the domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.

The Complainant avers that it owns a trademark registration for Knight Transportation and that it has used the KNIGHT TRANSPORTATION trademark in commerce in connection with interstate shipping and transportation since 1989.

Since 1989, Complainant has invested substantial resources in an effort to develop the goodwill associated with its KNIGHT TRANSPORTATION trademark.

Since 1994, Complainant’s stock has been publicly-traded on The NASDAQ Stock market – National Market System. Complainant has filed an annual periodic public reports with the United States Securities and Exchange Commission since 1994.

As of December 31, 2003, Complainant operated 2,165 tractors owned by Complainant and contracted to use an additional 253 tractors. Complainant’s trailer fleet consists of 6,212 trailers.

Complainant advertises its services by using the <knighttrans.com> domain name, which Complainant registered on December 10, 1997, with The Big Whois database.

As of February 26, 2004, the <knightrans.com> domain name was registered in the name of Henry Chan, Nassau, Bahamas.

As of September 21, 2004, Henry Chan transferred the <knightrans.com> domain name to Horoshiy, IncCuracao.

As of October 20, 2004, the <knightrans.com> domain name was again transferred to Respondent, LaPorte Holdings, Inc., ATTN: knightrans.com, Los Angeles, California. Based on the corresponding registration creation dates in Henry Chan’s domain name record and in the Respondent’s record, Complainant believes Henry Chan retains an interest in the <knightrans.com> domain name.

b) Respondent uses its <knightrans.com> domain name in connection with a website that offers services that compete with Complainant’s services.

Respondent’s <knightrans.com> domain name is confusingly similar to Complainant’s registered trademark KNIGHT TRANSPORTATION and <knighttrans.com> domain name.

The Complainant further alleges the Respondent has no rights or legitimate interests in respect of the <knightrans.com> domain name.

Respondent is not using the <knightrans.com> domain name in connection with any bona fide offering of goods or services, as contemplated under paragraph 4(c)(1) of the Policy.

Respondent was not commonly known by the domain name <knightrans.com> prior to Complainant’s adoption and use of the KNIGHT TRANSPORTATION trademark, and has not acquired any trademark or service mark rights with respect to Complainant or Complainant’s KNIGHT TRANSPORTATION registered trademark.

Respondent is not making a legitimate noncommercial or fair use of the <knightrans.com> domain name.

Respondent is intentionally using the <knightrans.com> domain name for Respondent’s commercial gain by misleading and diverting Complainant’s consumers and by diluting and tarnishing Complainant’s KNIGHT TRANSPORTATION trademark.

c) The Complainant further alleges the <knightrans.com> domain name was registered and is being use in bad faith.

Respondent uses the <knightrans.com> domain name to provide links to websites that sell services that compete with services offered by Complainant, including interstate shipping and transportation by truck.

Consumers searching for information about Complainant have been and will continue to be confused as to Complainant’s affiliation with Respondent and the services offered under the <knightrans.com> domain name.

The transferors from which Respondent acquired the <knightrans.com> domain name have a history of registering domain names in bad faith by registering domain names similar to a number of Complainant’s trademarks for the purpose of diverting business from the complainants and causing consumer confusion.

Respondent registered the domain name <knightrans.com> primarily for the purpose of disrupting Complainant’s business. Consumers in search of Complainant’s business that misspell Complainant’s <knighttrans.com> domain are diverted to Respondent’s <knightrans.com> domain, which offers services in direct competition with Complainant.

By using the domain name <knightrans.com>, Respondent has intentionally attracted, or attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or of a product or service advertised on Respondent’s website.

In accordance with Paragraph 4(i) of the Policy, and for the reasons described above, Complainant requests that the Administrative Panel appointed in this administrative proceeding issue a decision that the <knightrans.com> domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

As noted above, Respondent is in default pursuant to Paragraph 5(e) and Paragraph 14 of the Rules and Paragraph 7(c) of the Supplemental Rules because no response was received from Respondent by the applicable deadline.

Unlike in a U.S. court proceeding, however, a default does not automatically result in a finding for a Complainant. Rather, under Paragraph 4(a) of the Policy, it remains Complainant’s burden to establish that all three of the required criteria for a transfer of the domain name or other remedy have been met.

Under Paragraphs 5(e) and 14(a) of the Rules, the effect of a default by Respondent is that the Panel shall proceed to a decision on the Complaint. Under Paragraph 14(b), the Panel is empowered to draw such inferences from Respondent’s default as it considers appropriate.

6. Discussion and Findings

A. Regulations Applicable to Consideration of the Merits

The Panel now proceeds to consider this matter on the merits in light of the Complaint, the lack of Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to Paragraph 15(a) of the Rules. In the Panel’s view, given that both parties to this dispute appear to be based in the United States, applicable authority shall include relevant principles of United States trademark law.

Paragraph 4(a) of the Policy provides that Complainant must prove, with respect to the domain name, each of the following:

(i) The domain name is identical or confusingly similar to a trademark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is used in bad faith

Paragraph 4(b) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the domain names for purposes of Paragraph 4(a)(iii) above would be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances, any one of which, if proved by Respondent, would demonstrate Respondent’s rights or legitimate interests in the domain names for purposes of Paragraph 4(a)(ii).

B. Effect of the Default

In this case, the Panel finds that as a result of the default, Respondent had failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The Panel does not, however, draw any inferences from the default other than those that have been established or can fairly by inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence.

In particular, by defaulting and failing to respond, Respondent has failed to offer the Panel any of the types of evidence set forth in Paragraph 4(c) of the Policy from which the Panel might conclude that Respondent has any rights or legitimate interests in the domain name, such as use or preparation to use the domain names prior to notice of the dispute, being commonly known by the domain name, or making legitimate non commercial or fair use of the domain name.

Moreover, as discussed below, Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question Complainant’s argument that Respondent has acted in bad faith.

C. Identical or Confusingly Similar

The <knightrans.com> domain name is confusingly similar to the Complainant’s registered mark KNIGHT TRANSPORTATION.

The only difference between the Complainant’s domain name which is <knighttrans.com> and Respondent’s domain name which is <knightrans.com> is the elimination of the one “t” in the name <knighttrans.com>.

A domain name is confusingly similar to a trademark where the domain name incorporates the mark in its entirety. Minnesota Mining & Manufacturing v. JonLR, WIPO Case No. D2001-0428 (May 30, 2001).

Confusion will occur here whenever an Internet user is seeking the official website of Knight Transportation, Inc. By the deletion of a single “t” in <knighttrans.com> the Panel finds that the domain name is confusingly similar to the trademark and is totally identical to the domain name for the exception of a single “t”. Complainant’s Complaint that Respondent uses its domain name in connection with a website that offers services that compete with Complainant’s services is accepted as true in light of the Respondent’s failure to answer the Complaint.

The Panel also finds that the domain name, which simply shortens the second word of Complainant’s trademark and deletes the space between the words “knight” and “transportation”, confusingly similar to Complainant’s trademark KNIGHT TRANSPORTATION, all the more so because of Complainant’s use of a similar shortening in its own domain name.

D. Whether Respondent has rights or legitimate interests in the domain name

There is no evidence in the record that Respondent has any legitimate interests in the domain name. The Complainant states in the Complaint that the Respondent has no rights or legitimate interests in the domain name. This supported contention is un-rebutted and the Panel finds it credible.

The Panel concludes that none of the three illustrative circumstances set forth in Paragraph 4(c) of the Policy demonstrates any rights in the legitimate interests in the domain name on the part of the Respondent.

The Panel finds that the Respondent has not made a legitimate noncommercial or fair use of the <knightrans.com> domain name.

The Panel finds that the Complainant has never authorized, licensed or otherwise permitted Respondent to use its registered mark or any confusingly similar variation thereof.

The Panel finds that the Respondent is intentionally using the <knightrans.com> domain name for Respondent’s commercial gain by misleading and diverting Complainant’s customers, and by diluting and tarnishing Complainant’s KNIGHT TRANSPORTATION trademark.

Panel accepts Complainant’s assertion of Respondent’s website being a commercial website. Respondent’s use of domain name does not qualify as a “noncommercial” use under paragraph 4(c)(iii) of the Policy.

E. Registered and Used in Bad Faith

Complainant is required to establish that Respondent has registered and used the domain name in bad faith.

Paragraph 4(b) of the policy sets out illustrative circumstances of registration and use of a domain name in bad faith.

The Panel finds that the Respondent registered and used the domain name <knightrans.com> in bad faith primarily for the purpose of intentionally attracting, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source sponsorship, affiliation or endorsement of Respondent’s website or of a product or service on the Respondent’s website.

The Panel finds that Respondent’s unauthorized and unapproved redirection of consumers searching for Complainant to the Respondent’s website where it provides competing services is solely for the purpose of achieving commercial gain and constitutes bad faith registration and use. Netwizards, Inc. v. Spectrum Enterprises, WIPO Case No. D2000-1768 (April 4, 2001).

The Panel concludes that the Respondent has registered and used the domain name in bad faith pursuant to Paragraph 4(b) of the Policy.

In light of the findings and analysis by the Panel, the Panel decides that the Complainant has met its burden of proving its rights in the KNIGHT TRANSPORTATION mark, and that Respondent’s domain name is confusingly similar to Complainant’s trademark, and that the Respondent has no rights or legitimate interests in respect to the domain name. The domain name has been registered and is being used by Respondent in bad faith.

7. Decision

For all the foregoing reasons, and in accordance with Paragraph 4(i) of the Policy and 15 of the Rule, the Panel orders that the domain name <knightrans.com> be transferred to the Complainant.

Peter J. McGovern
Sole Panelist

Dated: March 8, 2005