The Complainant is Reliable Carriers, Inc. of Canton, Michigan, United States of America represented by Kerr, Russell and Weber, PLC, United States of America.
The Respondent is American Car Transportation, Inc. of Margate, Florida, United States of America represented by Arnstein and Lehr, LLP, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2011. On January 17, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On January 17, 2011, GoD, Inc. 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 January 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2011. The Response was filed with the Center on February 11, 2011.
The Center appointed William R. Towns as the sole panelist in this matter on February 23, 2011. 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.
The Complainant filed an unsolicited supplemental submission with the Center on February 24, 2011. The Panel thereafter issued a Panel Procedural Order, accepting for the reasons stated therein the Complainant’s supplemental submission, and affording the Respondent an opportunity to submit a reply. The Panel further for the reasons stated in its Procedural Order denied the Respondent’s request that the Panel terminate the UDRP Complaint because of pending litigation filed by the Complainant in the United States District Court for the Eastern District of Michigan. The Panel’s Procedural Order is included as an annex to this decision.
As a result of a notification issue, the time period in which the Respondent could submit a reply under the Panel’s Procedural Order was extended by the Center through March 23, 2011. The Respondent submitted its reply to the Center on March 24, 2011. The date on which the Panel’s decision was to be submitted to the Center was extended to April 8, 2011. 4. Factual Background
The Complainant is an automobile transporter and has been engaged in this line of business for some forty (40) years. The Complainant asserts rights in the mark RELIABLE CARRIERS, INC. based on registration by the United States Patent and Trademark Office (USPTO) as well as common law rights arising from use. The record reflects that the mark was registered on April 6, 2010, on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act.1 The Complainant maintains it has used RELIABLE CARRIERS, INC. as an indicator of source for its car transportation services since 1983, with more than USD 600 million in sales revenues.2
According to information maintained by the concerned registrar GoD, Inc. in its WhoIs database, the disputed domain name initially was registered on October 16, 2008. The record before this Panel does not include historic WhoIs records for the disputed domain name, but the Respondent maintains that the initial domain name registrant was Brian Cardozo, who appears at one time to have been an officer in Xavier Breath, Inc., a Florida corporation (“Xavier Breath”). Records maintained by the Florida Department of State indicate that Xavier Breath was originally incorporated as Reliable Car Transportation, Inc., but changed its name on December 4, 2009.
After receiving information in December 2009 that Xavier Breath was operating a car transportation company and was using the disputed domain name with its website, the Complainant on December 21, 2009 sent a cease and desist letter to Xavier Breath.3 When Xavier Breath failed to respond, the Complainant on February 26, 2010, filed a civil action in the United States District Court for the Eastern District of Michigan against Xavier Breath d/b/a Reliable Car Transportation, asserting causes of action for trademark infringement and unfair competition, trademark dilution, and cyberpiracy under the U.S. Trademark Act (the “Lanham Act”).
Subsequently, in early June 2010, the Complainant received a communication from an attorney representing B&B Auto Transportation Enterprises, Inc. (“B&B”), a Florida corporation engaged in the same line of business as the Complainant, representing that Reliable Car Transportation, Inc. had sold its business and assets to B&B in December 2009, including all rights and interest in the disputed domain name. On June 17, 2010, the Complainant amended its Federal Court lawsuit to add B&B as a named defendant.
On September 7, 2010, the disputed domain name was transferred to the Respondent. This transfer was shielded from public view through the use of a privacy protection service, Domains By Proxy, Inc., which is affiliated with the concerned registrar, GoD, Inc. It was not until sometime in November 2010, after the Complainant had caused subpoenas to be served in the Federal Court action on GoD, Inc. and Domains By Proxy, Inc., that the Complainant first learned that the Respondent has acquired the disputed domain name. The Complaint that is the subject of this administrative proceeding under the Policy was filed with the Center on January 21, 2011. Subsequent to its commencement of this proceeding under the Policy, the Complainant amended its Federal Court action to add the Respondent as a named defendant.
The disputed domain name currently resolves to the Respondent’s website, on which the Respondent holds itself out as a full service, nationwide auto transport company that “partner[s] with hundreds of dependable car transport trailer operators”, and offers auto transport services to the public. 5. Parties’ Contentions A. Complainant
The Complainant maintains it is an internationally known transporter of automobiles, and relies on rights in the mark RELIABLE CARRIERS, INC., and two other word plus design marks that include RELIABLE CARRIERS, INC. in the respective word elements.4 The Complainant asserts rights in the RELIABLE CARRIERS, INC. mark arising from the USPTO registration of the mark and from its use in commerce for more than 40 years. The Complainant asserts that the disputed domain name is confusingly similar to the Complainant’s mark, particularly when used with a website on which the Respondent promotes and offers car transportation services competing directly with those of the Complainant.
According to the Complainant, the Respondent lacks rights or legitimate interests in the disputed domain name because the Respondent, without the Complainant’s authorization, appropriated the dominant feature of the Complainant’s mark in order to capitalize on the initial interest confusion thereby created to attract Internet visitors to the Respondent’s website, where the Respondent offers virtually identical services to those of the Complainant, and attempts to pass its services off as those of the Complainant. The Complainant argues that such use does not constitute the use of the disputed domain name in connection with a bona fide offering of goods or services.
The Complainant further asserts that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, it is clear that the Respondent was aware of the Complainant and the Complainant’s mark when registering the disputed domain name, and equally clear that the Respondent is seeking to exploit and profit from the Complainant’s reputation and goodwill by using the disputed domain name in an attempt intentionally to attract, for commercial gain, Internet visitors to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship or affiliation of the Respondent’s website and the services offered at the site. The Complainant further argues that the Respondent has engaged in a “shell game” of transferring the disputed domain name in an effort to frustrate the Complainant’s Federal Court lawsuit, which according to the Complainant is further evidence of the Respondent’s bad faith intent. B. Respondent
The Respondent holds itself out as a full service auto transport brokerage company. The Respondent initially urged the Panel to exercise its discretionary power to terminate this administrative proceeding based on the pending litigation commenced by the Complainant in which the Complainant is already seeking the relief sought here.5 Further, the Respondent asserts that the Complainant has failed to demonstrate protectable and distinctive rights in the RELIABLE CARRIERS, INC. mark. The Respondent maintains that the mark is merely descriptive of the Complainant’s services, that registered rights in the mark were not obtained until after the initial registration of the disputed domain name. The Respondent submits that the Panel should not accept the USPTO’s registration as establishing that the Complainant has protectable rights in the mark, and further asserts that the Complainant has failed to present “an iota of evidence of secondary meaning” to support a claim of prior common law rights in the mark. In addition, the Respondent urges that the disputed domain name is not confusingly similar to the Complainant’s mark.
The Respondent further asserts that the disputed domain name was registered by Brian Cardozo in October 2008, and that Cardozo had no knowledge of the Complainant at the time of this registration. According to the Response, Cardozo registered the disputed domain name because reliability is a sought after attribute for car transport trailer operators, and because the disputed domain name is comprised of common, descriptive terms that respond to Internet searches for reliable companies whose services include transporting cars. According to the Response, Cardozo has maintained control of and beneficial interest in the disputed domain name at all material times since its initial registration.
The Respondent maintains that is has established rights and legitimate interests in the disputed domain name because, prior to any notice of this dispute, the Respondent was using the disputed domain name in connection with a bona fide offering of goods or services, namely the Respondent’s auto transport brokerage services. The Respondent further asserts that it has every right to register a domain name consisting of descriptive words even if the domain name is confusingly similar to another’s trademark.
The Respondent contends there is no evidence in the record to support a finding of bad faith registration and use. The Respondent argues that it is making a legitimate descriptive use of the disputed domain name. The Respondent observes that the Complainant cannot assert exclusivity over the use of the common term “reliable”, and asserts that hundreds of other companies also use this term to describe their goods or services.
The Respondent concedes that a change in the name of the registrant of the disputed domain name was made, but denies that this was done for any improper or bad faith purpose. The Respondent asserts that the transfer of the disputed domain name was not in violation of paragraph 8 of the Policy, and that in any event the transfer of a domain name is not synonymous with the registration of the domain name, and therefore does not constitute evidence that the disputed domain name was registered in bad faith. Further, the Respondent disputes that its use of a privacy protection service constitutes any evidence of bad faith.
In light of the foregoing, the Respondent charges that the Complainant’s actions constitute an attempt at reverse domain name hijacking, since, according to the Respondent, the Complainant has established no trademark rights in the word “reliable” and cannot legitimately seek to exclude others from making a descriptive use of the term. The Respondent further argues that the Complainant has abused the UDRP process by filing an administrative complaint against the Respondent concerning the same claims and issues that the Complainant has asserted in its pending Federal Court lawsuit. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel initially addresses the question of whether the Complainant has established trademark or service mark rights in RELIABLE CARRIERS, INC. The term “trademark or service mark” as used in paragraph 4(a)(i) of the Policy encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria,WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc.,WIPO Case No. D2002-0005; The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association,WIPO Case No. D2001-0218. In the United States, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918). That is to say, the mark must be used such that a relevant segment of the public comes to recognize it as a symbol that distinguishes the Complainant’s goods and services from those of others.
As noted earlier, the USPTO registered the Complainant’s mark on its Principal Register pursuant to Section 2(f) of the Trademark Act. The Respondent initially argues that the Panel should give no weight to the USPTO’s registration of the Complainant’s RELIABLE CARRIERS, INC. mark because it is merely descriptive with respect to the Complainant’s services. Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is inherently distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Other panels have concluded more broadly that the complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S.A. and Hello Limited v. Idealab,WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700.
Given the limited scope of the Policy and this Panel’s narrowly circumscribed jurisdiction, this Panel’s inclination is to adopt the reasoning of the panels in the second line of cases referred to above. See Classmates Online, Inc. v. John Zuccarini, individually and dba RaveClub Berlin,WIPO Case No. D2002-0635. However even if, for purposes of reaching a decision in this case, the Panel would adopt the reasoning of the first line of cases, the Panel concludes that the Respondent has not made a sufficient showing to rebut the presumption of validity arising from the USPTO registration of the Complainant’s mark.
The Panel notes that the registration of the Complainant’s mark on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act, based on substantially exclusive and continuous use of a mark by the applicant in commerce for the five years, constitutes prima facie evidence that the mark has acquired distinctiveness (or secondary meaning) as used with the applicant’s goods or services. Evidence generally looked to as relevant in determining secondary meaning includes (1) the length and continuity of a mark’s use, (2) sales and revenues, (3) advertising and promotional activities, and (4) unsolicited media coverage. See First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir.1987). See also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Version (“WIPO Overview 2.0”), paragraph 1.7.
The Complainant has submitted evidence of secondary meaning based on such considerations. It is undisputed in the record before this Panel that the Complainant has used RELIABLE CARRIERS, INC., which is also the Complainant’s company name, for over 40 years in association with its services. The Complainant has submitted by sworn declaration evidence of over USD 600 million in sales during that time, including some USD 100 million in Florida. The Complainant has also submitted evidence of advertising and promotion. Given the length and continuity of the Complainant’s use of RELIABLE CARRIERS, INC., and the evidence of sales and advertising in the record, this Panel accepts that over time RELIABLE CARRIERS, INC. has come to be regarded by the relevant purchasing public as an indication of source for the Complainant’s services.
Accordingly, the Panel is not inclined in this case to second guess the USPTO determination that the Complainant’s mark has acquired distinctiveness through use in commerce.6 As Section 2(f) of the Trademark Act reflects, what is required for secondary meaning is “substantially exclusive and continuous use”, and not the total exclusion of any third party use. In the Panel’s judgment, evidence of third party use of the word “reliable” without more is not sufficient to call into question the USPTO’s determination that the Complainant was entitled to register RELIABLE CARRIERS, INC. under section 2(f) of the Trademark Act. Nor does it support an argument that the Complainant cannot establish common law rights in the mark. The Panel therefore finds that the Complainant has established rights in its RELIABLE CARRIERS, INC. mark by virtue of the mark’s registration on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act, and as a result of extensive and continuous use of the mark sufficient to give rise to common law rights.
The Panel now turns to the question of identity or confusing similarity under paragraph 4(a)(i) of the Policy. The Panel finds for purposes of paragraph 4(a)(i) that the disputed domain name is confusingly similar to the Complainant’s RELIABLE CARRIERS, INC. mark. The first element of the Policy stands essentially as a standing requirement.7 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the mark and domain name, when directly compared, are identical or confusingly similar. See Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662. This is commonly tested by comparing the mark and the disputed domain name in appearance, sound, meaning, and overall impression. Mile, Inc. v. Michael Burg,WIPO Case No. D2010-2011.
In this instance, the disputed domain name incorporates the RELIABLE portion of the Complainant’s word mark, which both parties albeit for different reasons assert is the dominant element of the mark. The resulting similarity between the disputed domain name and the Complainant’s mark is in no manner diminished by the addition of the descriptive words “car transportation”, which when used in conjunction with the dominant portion of the Complainant’s mark is likely to create Internet user confusion. See National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524. Based on a comparison of the Complainant’s mark and the disputed domain name, and for the threshold purposes of paragraph 4(a)(i) of the Policy, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of proof to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name is confusingly similar to the Complainant’s mark. The Respondent is using the disputed domain name to attract Internet users to a commercial website where the Respondent offers auto transportation services in direct competition with the Complainant. There is no indication that the Respondent, which operates under the name “American Car Transportation, Inc.”, has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized by the Complainant to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain names by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In this case, the Respondent argues that before any notice to it of the dispute, the Respondent was using the disputed domain name in connection with a bona fide offering of services, namely, auto transport brokerage services. In asserting such bona fides, the Respondent maintains that it is using the disputed domain name in a purely descriptive sense with respect to the services it offers, and claims to have been unaware of either the Complainant or the Complainant’s mark.
A number of panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of a complainant, at least in circumstances indicating that the respondent was not aware or reasonably should not have been aware of the complainant’s rights in the mark. See, e.g., National Trust for Historic Preservation v. Barry Preston,WIPO Case No. D2005-0424. Where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name’s value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062.
On the record of this case, the Respondent has not demonstrated to the satisfaction of this Panel that it registered the disputed domain name based on a good faith belief that its value was based on attraction as a dictionary word or descriptive term, nor that the Respondent’s use of the disputed domain name is consistent with its attraction as a descriptive term or phrase. The Panel finds the Respondent’s representation to have been unaware of the Complainant’s mark when registering the disputed domain name not to be credible. The Respondent claims to be active in the auto transport brokerage trade, partnering with hundreds of car transport trailer operators. That the Respondent was not aware of the Complainant, a nationwide auto transport company operating for some 40 years under the RELIABLE CARRIERS, INC. name and mark, strains credulity. Moreover, to the extent that the Response asserts that Brian Cardozo has control of the disputed domain name, and thus possibly the Respondent as well, the record establishes that Cardozo knew of the Complainant no later than December 21, 2009, as the recipient of the Complainant’s cease and desist letter sent to Xavier Breath. And given that Cardozo also claims to have been active in the auto transport industry for many years, the Panel considers it highly unlikely that he was not already aware of the Complainant when the disputed domain name was first registered in October 2008.
In light of the foregoing, the Panel considers that the Respondent more likely than not acquired the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s mark, so as to attract Internet users to the Respondent’s website, on which the Respondent offers auto transport services that essentially are the same as those offered by the Complainant. This also appears more likely than not to have been the intent of the original registrant of the disputed domain name. Under such circumstances, this is not a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319. See also Trade Me Limited v. Vertical Axis Inc,WIPO Case No. D2009-0093.8
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
After a thorough review of the record, the Panel concludes that the Respondent’s conduct in this case supports a finding of bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. Based on the facts and circumstances reflected in the record, the Panel does not consider the Respondent’s claim to have been unaware of the Complainant when registering the disputed domain name to be plausible. See Ticketmaster Corporation v. Spider Web Design, Inc.,WIPO Case No. D2000-1551. The Panel cannot envision how one claiming to have been in the auto transport brokerage business for many years, partnering during that time with hundreds of car transport trailer operators, could have been unaware of the Complainant, an auto transport company in business for more than 40 years using the RELIABLE CARRIERS, INC. name and mark. And if the Respondent’s assertion is true, it is equally difficult for the Panel to envision how the Respondent possibly could have remained unaware of the Complainant while still making a good faith effort to comply with the requirements of paragraph 2 of the Policy.
A considerable number of UDRP panels, including this Panel, have recognized the relevance of paragraph 2 of the Policy to the question of bad faith registration in appropriate cases. Paragraph 2 of the Policy requires a domain name registrant “to determine whether your domain name infringes or violates someone else’s rights.” This may create an obligation on a registrant to conduct some due diligence in order to determine whether the domain name at issue infringes any third party rights, especially if the registrant intends to use the domain name for commercial purposes. See Mile, Inc. v. Michael Burg, supra. In this case such as this, where the Respondent has chosen to make a commercial use of the disputed domain name by offering competing services virtually identical to those of the Complainant, the Panel finds paragraph 2 of the Policy clearly relevant to the question of bad faith registration.
The Respondent argues that a transfer of a domain name is not synonymous with a new registration, apparently in an attempt to circumvent consideration of paragraph 2 of the Policy. The Respondent’s argument, however, is sorely misplaced. The prevailing view of UDRP panelists is that the transfer of a domain name to a third party does amount to a new registration, requiring the issue of bad faith registration to be determined at the time the current registrant took possession of the domain name. HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. The record in this case does not clearly establish an unbroken chain of underlying ownership by a single entity, and even were the Panel inclined to accept the Respondent’s allegations that Cardozo at all material times has controlled the disputed domain name, it is more likely than not in this case that the change in the WhoIs registrant information, including the use of a privacy protection service, was made for purposes of concealment, most likely to frustrate assessment of liability in relation to the registration and use of the disputed domain name. See WIPO Overview 2.0, paragraph 3.7.
Nor is the Panel prepared to ignore a clear pattern of conduct in the nature of cyberflight reflected in the record. The phenomenon of cyberflight entails the systematic transfer of the domain name to different registrants following the initial domain name registrant’s receipt of notice of the complaint in order to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced respecting the domain name under the Policy or elsewhere. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra. In this instance, a pattern of conduct in the nature of cyberflight began at or near the time the Complainant first became aware of the registration of the disputed domain name and sent a cease and desist letter to Brian Cardozo, as an officer of Xavier Breath. It culminated in the transfer of the disputed domain name to the Respondent, under the cloak of a privacy protection service, during the pendency of the enforcement action commenced by the Complainant in U.S. Federal Court.
While this Panel does not consider a domain name registrant’s use of a privacy service in and of itself to constitute bad faith under the Policy, privacy services are subject to manipulation by a registrant seeking to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy or elsewhere. There is substantial indication of such manipulation in the record of this case. Neither the foray into cyberflight nor the employment of a privacy protection service in the questionable circumstances reflected in the record is consistent with what one would expect of a good faith registrant accused of cybersquatting. See, e.g., HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, supra.
Taking into consideration all of the foregoing, the Panel concludes that the Respondent most likely registered and is using the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s RELIABLE CARRIERS, INC. name and mark. See Aubert International SAS and Aubert France SA v. T Co., supra. The Panel further is of the view that the Respondent registered and is using the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319. In the Panel’s view, such bad faith is underscored by a clear pattern of cyberflight, coupled with the Respondent’s use of a privacy protection service in highly questionable circumstances, and a likely disregard of the requirements of paragraph 2 of the Policy.9
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. E. Reverse Domain Name Hijacking
In view of the foregoing, the Panel finds the Respondent’s claim of reverse domain name hijacking to be without merit. 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 disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: April 8, 2011 ADMINISTRATIVE PANEL PROCEDURAL ORDER NO. 1 Reliable Carriers, Inc. v. American Car Transportation, Inc. Case No. D2011-0092
The Panel issues this Procedural Order for purposes of addressing the following preliminary matters:
1. The Respondent’s request that the Panel exercise its discretion under paragraph 18(a) of the Rules to suspend this proceeding based on a pending federal lawsuit.
2. The Complainant’s unsolicited supplemental filing submitted to the Center on or about February 24, 2011. Request For Suspension Or Termination Of The Udrp Proceeding
Paragraph 18(a) of the Rules provides as follows:
“(a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.”
Under paragraph 18(a) the legal proceeding must be “in respect of a domain-name dispute”. This is at least partially true here. The Complainant’s recently filed Third Amended Complaint in the federal court action alleges that the Respondent has engaged in cyberpiracy in violation of federal law in respect of the disputed domain name. It is also broadly alleged, however, that the Respondent further has engaged in trademark infringement, trademark dilution and unfair competition under both federal and states laws.
In the particular circumstances of this case, the Panel declines to suspend or terminate this administrative proceeding under paragraph 18(a) of the Rules. While the Complainant’s lawsuit was commenced in February 2010, the Respondent was not joined as a co-defendant in the pending federal court litigation until recently. Notwithstanding paragraph 8(a) of the Policy, the disputed domain name was transferred to the Respondent during the pendency of the litigation (on or about September 7, 2010), and the Respondent’s identity as the holder of the domain name was shielded from public scrutiny through the use of a privacy protection service.
The Panel in this instance finds no convincing reason why it should not proceed to a decision strictly under the Policy, as opposed to awaiting a judicial determination of all of the issues raised in the federal litigation. The administrative proceeding under the Policy concerns only control of the disputed domain name, and not any of the other remedies involved in the federal litigation. This Panel’s decision is not binding on the court, and in no manner precludes the assertion of other claims or defenses in the litigation. See Western Florida Lighting, Inc. v. Samantha Ramirez, SamiRami, SESCO Lighting, Inc., and Cynthia Parker-Chillemi,WIPO Case No. D2008-1122.
Accordingly, the Respondent’s request for suspension or termination of this administrative proceeding is denied. Supplemental Submissions
The Policy and the Rules demonstrate a strong preference for single submissions – that is, the Complaint and the Response. See, e.g., Parfums Christian Dior S.A. v. Jadore,WIPO Case No. D2000-0938; Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus,WIPO Case No. D2000-0166. Panels typically have allowed supplemental submissions in extraordinary circumstances, such as discovery of new evidence, issuance of new statutes or case decisions, or arguments by the respondent that the complainant could not reasonably have anticipated. See Tiara Hotels & Resorts LLC v. John Pepin,WIPO Case No. D2009-0041.
In this instance, the Complainant has asserted rights in the mark RELIABLE CARRIERS, INC. based upon its registration by the United States Patent and Trademark Office (USPTO). The record reflects that the mark was registered on the USPTO Principal Register pursuant to section 2(f) of the Trademark Act. For purposes of Section 2(f), substantially exclusive and continuous use of a mark by the applicant in commerce for at least five years before the date on which the claim of distinctiveness is made may be accepted by the USPTO as evidence that the mark has acquired distinctiveness as used with the applicant’s goods or services.
The Respondent has argued, inter alia, that the Panel should disregard the USPTO’s registration of the Complainant’s mark on the grounds that the mark is either generic or merely descriptive with respect to the services for which the registration issued. Further, the Respondent argues that the Complainant has submitted no evidence of secondary meaning that otherwise would support an assertion by the Complainant of common law rights in the mark. In its supplemental submission, the Complainant argues that it is entitled under the Policy to rely upon the USPTO’s determination that its mark was entitled to registration under Section 2(f) of the Trademark Act. However, the Complainant also has tendered evidence which in the Panel’s opinion arguably is probative of secondary meaning.
Whether, and under what circumstances, a UDRP panel may disregard a valid and subsisting national trademark registration for purposes of the Policy is a question on which panels have expressed differing views. Some panel decisions have held that registration of a mark is prima facie evidence of validity, creating a rebuttable presumption that the mark is distinctive, which respondents have the burden of refuting. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc.,WIPO Case No. D2000-0047. Other panels have concluded that the complainant’s holding of a registered mark is sufficient without more to establish rights under the Policy, and that a respondent’s claim that registration should not have been granted or should be revoked is a matter for the courts or trademark authority of the relevant country. See, e.g., Hola S. A. v. Idealab,WIPO Case No. D2002-0089. See also Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini,WIPO Case No. D2001-0700.
After careful consideration, and acknowledging a divergence of opinion among UDRP panelists, this Panel has determined to accept the Complainant’s supplemental submission with respect solely to the foregoing issues. In the interest of fairness, the Panel will afford the Respondent an opportunity, should it desire, to submit a reply, also limited strictly to these issues. The Respondent’s reply should be submitted to the Center and served on the Complainant no later than Friday, March 11. 2011.
In view of the foregoing, the due date for the Panel to submit its decision to the Center will be extended to March 25, 2011.
William R. Towns
Sole Panelist
Dated: March 6, 2011
1 For purposes of Section 2(f), substantially exclusive and continuous use of a mark by the applicant in commerce for at least five years before the date on which the claim of distinctiveness is made may be accepted by the USPTO as evidence that the mark has acquired distinctiveness as used with the applicant’s goods or services.
2 The Complainant also relies upon prior registrations for two “design plus word” marks, one including the word element RELIABLE CARRIERS, INC. SPECIALIZED AUTOMOTIVE TRANSPORTATION, and the second including the word element RELIABLE CARRIERS, INC. OFFSHORE RACING. The Complainant disclaimed exclusive rights in both “RELIABLE CARRIERS, INC.” and “SPECIALIZED AUTOMOTIVE TRANSPORTATION” in the first of these two marks. The Complainant also disclaimed exclusive rights in “CARRIERS” and “INC.” respecting the registration of RELIABLE CARRIERS, INC.
3 The cease and desist letter was addressed to Brian Cardozo, as an officer of Xavier Breath.
4 Refer to Note 2 supra.
5 As noted above, the Panel declined to terminate this proceeding under the Policy for the reasons set out in the Panel’s Procedural Order.
6 Decisions applying the reasoning of the first line of cases described above have typically found that trademark registrations that are automatic or unexamined are not owed the same deference under the UDRP as are examined proceedings. The latter category notably includes U.S. Federal trademark registrations. See WIPO Overview 2.0, paragraph 1.1.
7 See WIPO Overview 2.0, paragraph 1.2.
8 If, as the Response asserts, Cardozo maintained control over the disputed domain name at all material times, the Panel further finds that the Respondent had notice of the dispute at the time it acquired the disputed domain name by transfer. In any event, it is axiomatic that rights or legitimate interests may not be established when the registration and use of the domain name has been in bad faith. For the reasons discussed more fully in the following heading, the Panel concludes in the circumstances of this case that the disputed domain name was registered and is being used in bad faith.
9 The Panel reaches the same conclusion regardless of whether the issue of bad faith registration is assessed at the time of the transfer of the disputed domain name to the Respondent or at the time of the initial registration of the disputed domain name. As noted earlier, the Panel has concluded from the record that the initial registrant of the disputed domain name was aware or should reasonably have been aware of the Complainant on the earlier date of registration. Particularly as it concerns the initial registrant’s state of mind, in the Panel’s view this is a case in which “inferences of original intent based on subsequent conduct” may appropriately be drawn. See Mile, Inc. v. Michael Burg, supra.
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