Complainant is U-Haul International, Inc. of Phoenix, Arizona, United States of America, represented by in-house counsel.
Respondent is PrivacyP / Ken Gossett of Goldsboro, North Carolina, United States of America. 2. The Domain Names and Registrar
The Disputed Domain Names , , , , and are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 21, 2011. On February 22, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On February 23, 2011, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 24, 2011, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an Amended Complaint on February 25, 2011. The Center verified that the Complaint together with the Amended 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 Respondent of the Complaint, and the proceedings commenced on March 2, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 22, 2011. The Response was filed with the Center on March 21, 2011.
The Center appointed Steven M. Auvil as the sole panelist (the “Panel”) in this matter on April 1, 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. 4. Factual Background
For more than 60 years, Complainant, together with its subsidiary and affiliated companies (the “U-Haul System”), has been a leader in the do-it-yourself moving industry, promoting its goods and services under the mark U-HAUL. The U-Haul System has more than 15,000 locations, maintains and rents more than 100,000 rental trucks and 100,000 rental trailers, and operates more than 1,000 self storage facilities with more than 35 million square feet of rentable space.
Complainant owns, among numerous others, the following United States trademark registrations: (1) U-HAUL, U.S. Reg. No. 746,034, registered February 26, 1963; (2) U-HAUL (Stylized), U.S. Reg. No. 786,156, registered March 2, 1965; (3) U-HAUL, U.S. Reg. No. 795,733, registered September 7, 1965; (4) U-HAUL, U.S. Reg. No. 893,891, registered June 30, 1970; (5) U-HAUL & Design, U.S. Reg. No. 1,023,923, registered October 28, 1975; (6) U-HAUL HOUSEHOLD MOVING & Design, U.S. Reg. No. 1,023,924, registered October 28, 1975; (7) U-HAUL MOVING & STORAGE & Design, U.S. Reg. No. 1,085,695, registered February 14,1978; (8) U-MOVE U-STORE U-HAUL RENTALS & Design, U.S. Reg. No. 1,127,296, registered December 4, 1979; (9) U-HAUL HAS IT ALL, U.S. Reg. No. 1,609,442, registered August 7, 1990; (10) U-HAUL, U.S. Reg. No. 1,861,196, registered November 1, 1994; (11) 1-800-GO-U-HAUL, U.S. Reg. No. 1,965,385, registered April 2, 1996; (12) U-HAUL SPORT, U.S. Reg. No. 2,209,007, registered December 8, 1998; and (13) U-HAUL MOVING CENTER, U.S. Reg. No. 2,262,059, registered July 20, 1999. Each of these registrations consists of or contains the term U-HAUL and is registered for use in connection with various goods and services related to do-it-yourself moving.
The Disputed Domain Names were registered between 2004 and mid-2005. 5. Parties’ Contentions A. Complainant
Complainant contends that the U-Haul System was the creator of and has been the leader in the do-it-yourself moving industry for more than 60 years. Complainant states that the U-Haul System conducts tens of millions of transactions and receives billions of dollars in revenues each year. Complainant contends that a major component of its business is its website, “,” which Complainant uses to interact with its customers and attract business. Complainant’s customers can use the website to make reservations, find center locations, receive rate quotes on potential rentals, and conduct other business with Complainant. Complainant states that more than 160 million Internet users have visited its website since 2003.
Complainant contends that it has obtained substantial federal and common law trademark rights in the term U-HAUL. Complainant’s U-HAUL mark has been in use since the 1940s and is used in connection with the rental of moving trucks and trailers, the rental of storage space, and the rental and sale of related goods. In fact, Complainant contends that the U-HAUL mark is famous.
Complaint contends that the U-Haul System has invested considerable resources to develop and protect the goodwill in its U-HAUL brand. The U-Haul System spends tens of millions of dollars each year promoting the U-HAUL brand in Yellow Pages advertisements alone. The U-HAUL brand is also prominently featured on the U-Haul System’s vehicles, which are on the roads and visible to the public. In addition, the U-HAUL brand has appeared in numerous television programs and feature films.
Complainant contends that Respondent is a former employee of the U-Haul System. Complainant contends that after leaving the U-Haul System, Respondent apparently became angry with the U-Haul System and began using the Disputed Domain Names to divert traffic to a website where Respondent is selling various t-shirts, mugs, and hats that proclaim that “U-Haul Sucks.” Although the Disputed Domain Names were originally registered in Respondent’s name, Complainant contends that Respondent transferred the Disputed Domain Names to PrivacyP in an effort to conceal his identity.
Complainant contends that the Disputed Domain Names are confusingly similar to Complainant’s famous U-HAUL mark because each of the Disputed Domain Names incorporates the entirety of Complainant’s mark plus highly generic/descriptive terms. Complainant contends that the generic elements “truck” and “sales” added to the famous U-HAUL mark do not prevent confusion, but actually increase confusion, because the terms directly relate to Complainant’s widely known core business in truck and trailer rental and moving services.
Complainant contends that Respondent has no legitimate interest in using the Disputed Domain Names to misleadingly divert consumers to a website where Respondent is apparently making money selling t-shirts, hats, and other items. Complainant asserts that Respondent’s registration and use of the Disputed Domain Names was not authorized, licensed, or consented to by Complainant. Respondent registered the Disputed Domain Names more than 60 years after Complainant began using its U-HAUL mark and more than 40 years after U-HAUL was first registered in the United States. Complainant contends that Respondent knowingly registered and is using the Disputed Domain Names, which are confusingly similar to and infringing on the famous U-HAUL mark and, therefore, is not a bona fide use nor is it capable of conferring a right or legitimate interest. Furthermore, Complainant contends that the fact that Respondent may have registered the Disputed Domain Names on behalf of the U-Haul System or because he was once an employee of the U-Haul System, does not give Respondent a legitimate interest in the Disputed Domain Names. Complainant further contends that the fact that Respondent is re-directing the Disputed Domain Names to a website selling items that say “U-Haul Sucks” does not give Respondent a legitimate interest in the Disputed Domain Names. Complainant contends that Respondent’s use of the Disputed Domain Names is both commercial and with intent for commercial gain to misleadingly divert consumers or to tarnish the famous U-HAUL mark. Complaint contends that Respondent is misleadingly attracting consumers to Respondent’s website, i.e., that Respondent is fooling visitors into initially believing that they are going to get U-HAUL products and services, and then surprising consumers with a website selling shirts and hats criticizing U-HAUL services. Complainant contends that Respondent does not have the right to use the Disputed Domain Names in this manner.
Finally, Complainant contends that Respondent registered and is using the Disputed Domain Names in obvious bad faith because Respondent incorporated Complainant’s well-known U-HAUL mark into the Disputed Domain Names to drive traffic to Respondent’s website to make money. Complainant contends that Respondent’s registration of not one, but five domain names further shows that Respondent intended at least partly to prevent Complainant from enjoying the benefits of its mark and to disrupt the U-HAUL business. B. Respondent
In its Response, Respondent contends that he purchased the Disputed Domain Names to protect U-Haul System interests immediately prior to his employment with the U-Haul System. Respondent contends that he discovered that there were gaps in the U-Haul System online domains and that those gaps could be used against Complainant. Respondent contends that after he left the U-Haul System, he sent an email to Complainant asking whether Complainant had any interest in the Disputed Domain Names, but that Complainant responded that they were not interested. Accordingly, Respondent contends that Complainant consented to Respondent’s continuing ownership of the Disputed Domain Names.
Respondent disputes that he was trying to conceal his identify in using the Privacy Protect service. Rather, Respondent contends that he used the service to protect himself from unsolicited communications. Furthermore, Respondent states that he was never “angry” with the U-Haul System.
Respondent contends that he has always attempted to operate the Disputed Domain Names without use of Complainant’s trademark representations, logos, or phrases. Respondent further contends that Complainant has never trademarked “uhaulsales” or “uhaultrucksales.” Respondent contends that because the exact phrases are not trademarked, Complainant cannot assert that infringement has occurred. Respondent admits that the Disputed Domain Names contain the term U-HAUL, but contends that the web pages reached from the Disputed Domain Names do not purport to be part of the U-Haul System, nor do they use any of the U-Haul System’s logos, fonts, colors, or phrases. Respondent contends that when consumers land on the website reached from the Disputed Domain Names, consumers easily realize that the site is a for profit sales site that sells products that are not flattering to Complainant. Respondent contends that its use of the Disputed Domain Names for the sale of these products constitutes a bona fide offering of goods and that these goods are offered to the thousands of dissatisfied clients of Complainant as a way to express their dissatisfaction with Complainant. Respondent further contends that any consumer who does not wish to purchase the items can simply close the page and re-search for the destination the consumer intended to reach. Respondent also contends that several other retailers sell the same types of gear and that a search for the term “u haul sucks” returns more than 65,000 pages of articles, web sites, blogs, and other items for sale. Respondent contends that the U-Haul System has admitted to “not taking enough actions” and that the U-Haul System has bought at least one other domain name incorporating the U-HAUL mark. Respondent argues that Complainant sees intrinsic value in the Disputed Domain Names and is not merely concerned with the use of its trademark, but rather is “attempting to essentially steal” what Respondent has owned for years.
Respondent contends that the Disputed Domain Names were registered and are being used in good faith and not to harm Complainant. Again, Respondent contends that the Disputed Domain Names were originally registered and held as a benefit to Complainant. In fact, Respondent asserts that, during his employment with the U-Haul System, the Disputed Domain Names were re-directed to Complainant’s site. Respondent contends that he “monetized” the Disputed Domain Names after Complainant said that it had no interest in them, that Respondent is not a competitor with Complainant, that the Disputed Domain Names were not registered to prevent Complainant from reflecting the mark in corresponding domain names, and that the Disputed Domain Names were not registered primarily to disrupt Complainant’s business or in an intentional attempt to attract users for commercial gain by creating a likelihood of confusion.
Finally, Respondent contends that Complainant has known that Respondent owned the Disputed Domain Names for years (since the mid-2000s) and that Complainant could have attempted to contact Respondent, presumably to purchase the Disputed Domain Names, but failed to do so. 6. Discussion and Findings
The Panel’s jurisdiction is limited to a determination of whether Complainant has proved the necessary elements of a claim for transfer or cancellation of the Disputed Domain Names under the Policy and the Rules. Policy, paragraph 4(a). The discussion and decision will be governed by the terms of the Policy.
To obtain relief, the Policy, paragraph 4(a), requires Complainant to prove each of the following elements:
(1) that the Disputed Domain Names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) that Respondent has no rights or legitimate interests in the Disputed Domain Names; and
(3) that the Disputed Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Disputed Domain Names are confusingly similar to Complainant’s U-HAUL mark.
As an initial matter, the Panel finds that Complainant has amply demonstrated that it has rights in the U-HAUL mark. Indeed, a previous UDRP Panel found that Complainant’s U-HAUL mark is “a very famous mark in the truck rental and moving fields.” U-Haul International, Inc. v. Accurate Business Systems,WIPO Case No. D2003-0512 (ordering the domain names and be transferred to Complainant). This Panel agrees that Complainant’s mark is a well-known and distinctive mark in which Complainant has rights.
The Disputed Domain Names are confusingly similar to Complainant’s U-HAUL mark because they fully incorporate that mark. See PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (“incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark”). When comparing the Disputed Domain Names with the mark in which Complainant has rights, it is well established under the Policy that the top-level domain, i.e., in this case, the gTLDs “.com” and “.net,” should not be considered. See, e.g., Busy Body, Inc. v. Fitness Outlet Inc.,WIPO Case No. D2000-0127 (stating that “the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants”). Here, each of the Disputed Domain Names consists of the distinctive U-HAUL mark and the addition of the generic term “sales” or “truck sales.” The addition of the term “sales” or “truck sales,” however, does not obviate the confusing similarity between the Disputed Domain Names and Complainant’s distinctive and well-known U-HAUL mark. See, e.g., Oki Data Americas, Inc. v. Albert Jackson,WIPO Case No. D2004-0087 (holding that the inclusion of the generic term “printer” in was confusingly similar to complainant’s trademark OKIDATA); PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS COMPUTER INDUSTRY (a/k/a EMS),WIPO Case No. D2003-0696 (adding generic words to a distinctive mark “does not change the overall impression of the designations as being a domain names [sic] connected to the [c]omplainant”); America Online, Inc. v. Chris Hoffman,WIPO Case No. D2001-1184 (use of short phrases with well-known mark still found confusingly similar to that mark); Rolex Watch U.S.A., Inc. v. Spider Webs, Ltd.,WIPO Case No. D2001-0398 (“The addition of the words ‘watch’ and ‘relojes’ (the Spanish word for wristwatches), generic terms that refer to the goods in connection with which the ROLEX trademark is used . . . does nothing to change the fact that the Domain Names incorporate the ROLEX mark.”). In fact, both the terms “sales” and “truck sales” are “associated with the Complainant and its business, strengthening rather than weakening the confusing similarity.” Playboy Enterprises International, Inc. v. John Taxiarchos,WIPO Case No. D2006-0561 (concluding that when an additional word is “associated with the [c]omplainant and its renowned activities” the additional word strengthens rather than weakens the confusing similarity).
For these reasons, the Panel concludes that the Disputed Domain Names are confusingly similar to the U-HAUL mark, a mark in which Complainant has rights. B. Rights or Legitimate Interests
Under the Policy, legitimate interests in a domain name may be demonstrated by showing that: (i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the Disputed Domain Names or a name corresponding to the Disputed Domain Names in connection with a bona fide offering of goods or services; (ii) Respondent has been commonly known by the Disputed Domain Names; or (iii) Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. Policy, paragraph 4(c).
The burden of proving absence of a right or legitimate interest in a disputed domain name falls on the complainant, but panels have long recognized that the information needed to prove such a right or legitimate interest is normally in the possession of the respondent. In order to avoid requiring complainants to prove a negative, which will often be impossible, panels have typically accepted that once a complainant has established a prima facie case that a respondent lacks rights or legitimate interests, the burden of production passes to the respondent to show that it does indeed have such a right or legitimate interest. See, e.g., Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Names. For the reasons that follow, the Panel finds that Complainant has made a prima facie case and that Respondent’s arguments are insufficient to rebut Complainant’s prima facie case.
The second and third circumstances identified in paragraph 4(c) do not apply to the present case because it is undisputed that: (1) Respondent is not commonly known by the Disputed Domain Names and (2) Respondent is using the Disputed Domain Names for commercial gain. Additionally, the Panel finds that: Respondent is not a licensee of Complainant, nor is there any evidence that he has received any authorization, permission, or consent to register and use either the U-HAUL mark or any of the Disputed Domain Names; Complainant has prior rights in the U-HAUL mark that pre-date Respondent’s registration of the Disputed Domain Names; Respondent is using the term U-HAUL in the Disputed Domain Names in a trademark sense to refer to Complainant and Complainant’s services; and Respondent is using the Disputed Domain Names to redirect users to a website that sells merchandise criticizing Complainant and its services. The Panel does not agree with Respondent’s assertion that Complainant implicitly consented to Respondent’s continuing ownership of the Disputed Domain Names. Specifically, Respondent contends that he sent an email to Complainant “advising that [he] owned these domains and asked if they had in any interest in them.” Respondent further contends that “[t]he response from [Complainant] was that they had all the domain presence required to meet their growth initiatives and that they would not be interested in these domains.” However, Respondent did not attach to the Response either a copy of his email to Complainant or a copy of Complainant’s purported reply. Accordingly, on the evidence before the Panel, there were no such emails and the Panel finds that Respondent’s unsupported allegations of the existence of such emails are not credible.
The Panel finds that the third circumstance identified in paragraph 4(c) does not apply to the present case because the Panel believes that Respondent’s offering of goods is not bona fide as required by the Policy. Respondent does not dispute that he is a former employee of Complainant and that he was fully aware of Complainant and its services at the time he acquired the Disputed Domain Names. There is no question that Respondent deliberately incorporated Complainant’s well-known U-HAUL mark into the Disputed Domain Names and that the Disputed Domain Names are being used to entice consumers and to sell goods that are not made, sponsored, affiliated, or endorsed by Complainant. It is well settled under the Policy that a knowingly infringing use of a trademark to offer goods and services is not a bona fide offering of goods and services under the Policy. See Chanel, Inc. v. Estco Technology Group,WIPO Case No. D2000-0413 (ordering transfer of the domain names and where the respondent intended to use the domain names to offer pay-per-search services to internet clients seeking information on Chanel and other fashion houses).
The fact that the Disputed Domain Names are being redirected to a commercial criticism site does not in this case ground a legitimate interest under the Policy. Respondent is certainly free to publicize his views on Complainant’s services. “However, such freedom of expression does not incorporate an automatic right or legitimate interest in domain names which are confusingly similar to the Complainant’s trademarks.” U-Haul International, Inc. v. Affordable Web Productions,WIPO Case No. D2003-0511. This is particularly true where the Disputed Domain Names resolve to a site that is undisputedly a for profit sales site offering merchandise that is damaging to Complainant’s reputation. The use of Complainant’s mark in the Disputed Domain Names entices the public to enter the disparaging site in the mistaken belief that the site is that of Complainant, and the Disputed Domain Names employ Complainant’s trademarks as tools of that damaging deception. Id. Consumers would realize that the site is not maintained by Complainant only after they had actually accessed the site—at which point, however, they have already been diverted and misled. In short, the Panel finds that Respondent does not have a legitimate interest in misleadingly using Complainant’s U-HAUL mark in a trademark sense as part of the domain name associated with a criticism site, where the site is being used for commercial purposes.
Accordingly, the Panel concludes that Respondent’s use cannot be considered a bona fide offering of goods or services and, therefore, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Names. C. Registered and Used in Bad Faith
Complainant contends that Respondent registered and is using the Disputed Domain Names in bad faith.
The Policy identifies the following circumstances that, if found, are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that Respondent has registered or has acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the Disputed Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the Disputed Domain Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Disputed Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product on Respondent’s web site or location.
Policy, paragraph 4(b).
As already mentioned, Respondent was well aware of Complainant and its business when Respondent registered the Disputed Domain Names, which in and of itself evidences bad faith on Respondent’s part. See PepsiCo, Inc. v. “null”, aka Alexander Zhavoronkov,WIPO Case No. D2002-0562 (“blatant appropriation of a universally recognized trademark is of itself sufficient to constitute bad faith”); see also Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”). The Panel finds that Respondent’s choice of the Disputed Domain Names was deliberate, with prior knowledge of Complainant’s mark. Moreover, it is reasonable to infer that Respondent was determined to profit from the Disputed Domain Names, in that Respondent questions why Complainant would agree to purchase another domain name incorporating the U-HAUL mark but not make any such attempts to purchase the Disputed Domain Names. Indeed, the Panel is of the opinion that Respondent registered or acquired the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Disputed Domain Names to Complainant for valuable consideration.
Furthermore, in using the Disputed Domain Names, Respondent has plainly intentionally attempted to attract for commercial gain Internet users to its website in the belief that its site has some connection with Complainant’s mark as to source, sponsorship, affiliation, or endorsement, when in fact there is no such connection. Respondent’s bad faith is further evidenced by its primary purpose of diverting Complainant’s clients to a site that (for a profit) disparages Complainant, tarnishes Complainant’s reputation, and interferes with Complainant’s business. Indeed, Complainant has submitted evidence and Respondent admits that the Disputed Domain Names resolve to a for profit sales site that sells products that are not flattering to Complainant. In other words, Respondent is using the Disputed Domain Names in order to intentionally trade on the goodwill in the U-HAUL mark and to attract traffic to its website for commercial gain. This is a manifest act of bad faith.
Therefore, the Panel concludes that the bad faith element of the Policy is satisfied. 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 Names, , , , , and be transferred to Complainant.
Steven M. Auvil
Sole Panelist
Dated: April 14, 2011
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