The Complainant is Carey International, Inc. of Washington, DC, United States of America, represented by Davis & Gilbert LLP, United States of America.
The Respondent is Texas International Property Associates - NA NA of Dallas, Texas, United States of America. 2. The Domain Name and Registrar
The Domain Name is registered with Compana LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2010. On July 27, 2010, the Center transmitted by email to Compana LLC. a request for registrar verification in connection with the disputed domain names. On July 27, and July 31, 2010, Compana LLC. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 August 3, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 23, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2010.
The Center appointed Neil, J. Wilkof as the sole panelist in this matter on September 1, 2010. 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
The Domain Name is , registered on December 6, 2005 through Compana LLC on behalf of Texas International Property Associates, located in Dallas, Texas United States .
The Complainant states in its Complaint that it, including through its affiliate Carey Licensing, Inc. and various worldwide franchisees, is the owner of the CAREY mark in more than 25 countries, all registrations being generally in respect of limousine transportation-related services (Annex 3 to the Complaint contains print-outs purporting to provide details of these registrations). With respect to the United States, the Panel has conducted a search on the on-line website of the United States Patent and Trademark Office. In doing so, the Panel is acting in accordance with accepted practice.
Thus, the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, which is to be found on the Center’s website, contains the following question and answer at paragraph 4.5. “Can a panel perform independent research when reaching the decision?
Consensus view: A panel may visit the internet site linked to the disputed domain name in order to obtain more information about the respondent and the use of the domain name. The panel may also undertake limited factual research into matters of public record if it feels that it needs that assistance in reaching a decision. If the panel feels that it requires further information to make a decision in a proceeding then it can issue a panel order to the parties.”
See, e.g., Descente, Ltd. and Arena Distribution, S.A. v. Portsnportals Enterprises Limited, WIPO Case No. D2008-1768.
On the basis of this search, the Panel can confirm, as alleged by the Complainant, that the Complainant has registered the CAREY mark in the United States as follows:
CAREY, United States registration no. 1107533, registered on November 28, 1978, in international class 39.
CAREY, United States registration no. 1375117, registered on December 10, 1985, in international class 39.
CAREY, United States registration no. 3369944, registered on January 15, 2008, in international classes 35, 39 and 43.
It is noted that application for registration no. 3369944 was filed on October 26, 2006, which is a later date than that of the date of registration of the Domain Name. It is unnecessary for present purposes to further consider this trademark registration. Registration nos. 1107533 and 1375117 will hereinafter collectively be referred to as “the Mark”. 5. Parties’ Contentions A. Complainant
The Complainant, together with its subsidiaries and affiliates, owns and operates a world-wide enterprise of limousine and transportation-related companies. The Complainant launched its limousine and transportation services business under the CAREY mark in 1921. Since that time, the Complainant has developed its business for the provision of chauffeur-driven services spanning 75 countries and 460 cities worldwide, including in Chicago, Illinois, United States, which is one of the Complainant’s largest operating locations. The services provided in Chicago are frequently referred to as “Carey Chicago”.
The Complainant alleges that, as of April 28, 2010, the Respondent was using the home page of the website corresponding to the Domain Name to display two lists of hypertexts. One list, at the left-side of the home page, displays 11 hyperlinks, including that captioned “Kennedy to Chicago”. The second, list, located at the center-bottom of the home page, displays 12 hyperlinks, including “Chicago the Movie” and “Chicago Dating in Speed.” The top center of the home page contains a hyperlink bearing the caption “For resources and information Chicago and Downtown Chicago hotel” (Annex 6 to the Complaint).
The Complainant further alleges that the Respondent is the registrant of about 235,779 domain names (Annex 7). In that connection, the Complainant states the Respondent has been the respondent in approximately 114 disputes involving a domain name registration and that it has been ordered to transfer the challenged domain names to the complainants in each of these complaints (paragraph 19 of the Complaint).
On March 26, 2010, counsel for the Complainant sent a letter to the Respondent, stating that the registration and use of the Domain Name by the Respondent violated the rights of the Complainant and demanding that the Respondent transfer the Domain Name to the Complainant. No response from the Respondent was received by the Complainant (Annex 8 to the Complaint).
The Complainant alleges the following:
(1) The Domain Name is confusingly similar to the Complainant’s Mark.
(2) The Respondent has no rights or legitimate interests in the Domain Name.
(3) The Domain Name was registered and has been used in bad faith B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s failure to submit a response, the Panel shall decide this proceeding on the basis of the Complainant’s undisputed and reasonable representations and it shall draw inferences therefrom that it deems appropriate. Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:
(1) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name;
(3) The Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Accordingly, with a view to Section 4 above, the Panel finds that the Complainant has registered rights for the Mark in the United States and that these rights are prior to the registration date of the Domain Name. The Panel makes no finding concerning the ownership position of the Complainant in the mark CAREY in any jurisdiction other than the United States. Similarly, the Panel makes no finding on common law rights in the mark CAREYCHICAGO that may belong to the Complainant in the absence of any supporting evidence. Nevertheless, the rights of the Complainant in the Mark in the United States are sufficient for the Complainant to satisfy its burden on this point under paragraph 4(a)(i) of the Policy.
The Respondent has incorporated the Mark in its entirety in the Domain Name. Moreover, the Mark forms the first part of the Domain Name. When determining whether there is a confusing similarity between a mark and a domain name, greater weight may be given to the fact that the domain name contains in toto the mark that belongs to the Complainant and such mark constitutes the first part of the domain name.
The question remains whether the addition of the word “Chicago”, which is a place name, serves to distinguish the Domain Name from the Mark. The Panel rules that it does not so distinguish. The general principle was stated by a previous panel as follows: The “addition of a place name generally does not alter the underlying mark to which it is added.” American Online, Inc. v. Dolphin@Heart,WIPO Case No. D2000-0713 (August 24, 2000). That is the situation here. The addition of the place name “Chicago” does not serve to distinguish between the Domain Name and the Mark.
For all of the foregoing reasons, the Panel finds that the Domain Name is confusingly similar to the Complainant’s Mark. B. Rights or Legitimate Interests
Here, as well, the Respondent has failed to respond to the Complaint. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate. The Panel finds that the Complainant has carried its burden of proof on this element, and has demonstrated a prima facie case that the Respondent has no rights or legitimate interests.
There is no evidence that the Respondent has registered any mark that consists of, or contains, the Mark, or any material portion thereof, or that it has any right in the Mark on an unregistered basis. There is no evidence that the Complainant has entered into any agreement, authorization or license with the Respondent with respect to the use of the Mark. The only “use” by the Respondent of the Mark is in connection with its registration of the Domain Name. Moreover, the name of the Respondent bears no resemblance to the Domain Name nor is there any basis to conclude that the Respondent is commonly known by the Mark.
Having regard to the three suggested grounds set out in paragraph 4(c) of the Policy, on the basis of which a respondent may support a claim that it has rights or legitimate interests in the domain name, the Respondent has not submitted any Response to support such a claim. Based on the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
Here, as well, the Respondent has failed to respond to the Complainant. Therefore, the Panel may accept all reasonable allegations set forth by the Complainant as true and accurate.
Paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that point to bad faith conduct on the part of the Complainant, as follows:
(i) Circumstances indicate that the Respondent has registered the Domain Name primarily to sell or otherwise transfer it to the Complainant who is the owner of the trademark or to a competitor of the Complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the Domain Name.
(ii) The Domain Name has been registered to prevent the Complainant from reflecting its Marks in a corresponding domain name.
(iii) The Domain Name has been registered primarily for the purpose of disrupting the business of a competitor.
(iv) The use of the Domain Name indicates an intention to attract Internet users to the Respondent’s website, for commercial gain, by creating a likelihood of confusion with the Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel believes that the circumstances described in subsection 4(b)(iv) above of the Policy apply in this case and, as such, support the conclusion that the Respondent has acted in bad faith. In the Respondent’s choice and use of the Domain Name, the Panel has formed a view based on the particular circumstances of this case that the Respondent is likely attempting to intentionally mislead Internet users by deceptively attracting them to its site by exploiting the goodwill and reputation of the Complainant for the purpose of the Respondent’s commercial gain. The Internet user, when entering the Respondent’s website associated with the Domain Name, encounters links to various third party sites, none of which is related to the Complainant. In so doing, it is presumed that the Respondent reaps commercial benefit in an unauthorized manner.
In this Panel’s view, the Respondent has presumed knowledge of the Mark and the rights of the Complainant therein on the basis of the Complainant’s prior trademark registration in the Respondent’s jurisdiction. In such a situation, when the Respondent adopted the Mark as the principal component of the Domain Name, the Respondent’s selection of the Domain Name was done in bad faith in order to exploit the rights of the Complainant in the Mark. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Neil, J. Wilkof
Sole Panelist
Dated: September 17, 2010
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