Complainant is Carey International, Inc. of Washington, Washington DC, United States of America (“US”), represented by Davis & Gilbert LLP, US.
Respondent is Carey Airport Limo of Philadelphia, Pennsylvania, US. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 25, 2013. On April 26, 2013, the Center transmitted by e-mail to the Registrar a request for registrar verification in connection with the Domain Name. On April 29, 2013, the Registrar transmitted by e-mail to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an e-mail communication to Complainant on April 30, 2013 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 May 1, 2013.
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 May 2, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 22, 2013. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 23, 2013.
The Center appointed Robert A. Badgley as the sole panelist in this matter on May 30, 2013. 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
Complainant is a large limousine and transportation service provider which has operated for nearly a century. Complainant’s chauffeur-driven limousine services operate in 75 countries and 460 cities worldwide, including Respondent’s home city of Philadelphia, Pennsylvania, US.
Complainant holds various trademark registrations in 25 countries, including the service mark CAREY which was first registered in November 1978 with the United States Patent & Trademark Office (“USPTO”). This mark was first used in commerce to identify and distinguish Complainant’s travel management and related services in February 1939. Complainant’s main Internet site is located at , which was registered in 1994.
Respondent registered the Domain Name on July 3, 2012. The Domain Name resolves to a website offering limousine and transportation-related services very similar to those offered by Complainant. Respondent refers to itself at the site as “Carey Limo” and “Carey Airport Limo,” and purports to offer airport limousine services in Connecticut, New York, New Jersey, and Pennsylvania.
Complainant sent Respondent a cease-and-desist letter on March 4, 2013, and sent follow-up letters. Respondent never responded. 5. Parties’ Contentions A. Complainant
The salient facts alleged by Complainant are set forth in the previous section, and the relevant arguments raised by Complainant will be set forth below in the appropriate places of the Discussion and Findings section. Complainant asserts that it has satisfied the three elements of the Policy and is entitled to a transfer of the Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:
(i)the Domain Name is identical or confusingly similar to a trademark or service mark 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 being used in bad faith. A. Identical or Confusingly Similar
There is no dispute that Complainant holds longstanding rights in the mark CAREY through registration and use. The Domain Name incorporates Complainant’s distinctive mark in its entirety, and appends the words “airport and limo.” The addition of these descriptive words to the CAREY mark does not diminish the confusing similarity between the Domain Name and the mark. Indeed, because Complainant’s services include limo rides to and from airports, the addition of these descriptive words only deepens the confusion between the mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited,WIPO Case No. D2001-0122. Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor,WIPO Case No. D2003-0174, correctly observed: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not effectively rebut any of Complainant’s assertions. Nor did Respondent reply to Complainant’s cease-and-desist letter. In short, Respondent has not tried to rebut any of Complainant’s factual assertions or set forth its own bona fides.
There is no evidence that Respondent has ever been authorized to use Complainant’s mark in a domain name or otherwise. Likewise, there is no evidence that Respondent is commonly known by the Domain Names, or has made substantial preparations to use the Domain Name in connection with a bona fide offering of goods or services. Rather, Respondent’s website appears to offer services in direct competition with those of Complainant.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the Domain Name in “bad faith”:
(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or
(ii) that Respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website 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 website or location or of a product or service on Respondent’s website or location.
The Panel finds bad faith under Policy paragraph 4(b)(iv). Respondent’s site offers services in direct competition with those of Complainant, and Respondent clearly seems to be trying to pass itself off as Complainant for the purpose of siphoning business from Complainant. The Panel therefore concludes that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion between Complainant’s mark and the Domain Name.
Accordingly, the Panel finds that Policy paragraph 4(a)(iii) is satisfied. 7. Decision
For 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 Complainant.
Robert A. Badgley
Sole Panelist
Date: June 7, 2013
Full & Egal Universal Law Academy