Complainant is Carey International, Inc. of Washington D.C., United States of America, represented by Davis & Gilbert LLP, United States of America.
Respondent is Robert Patz, Coastal Media of Bellingham, Washington, United States of America. 2. The Domain Name and Registrar
The Disputed 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 May 10, 2016. On May 11, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. An amended Complaint was filed with the Center on May 13, 2016 to correct an administrative formality regarding mutual jurisdiction.
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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on May 17, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 6, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on June 8, 2016.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on June 10, 2016. 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 provider of chauffeured limousine services and ground transportation logistics management. Complainant is the owner of United States of America Trademark Registration Numbers 1,107,533, 1,375,117, and 3,369,944 for the trademark CAREY in block lettering and in a stylized format. Complainant also owns domain names incorporating its trademark, including and . The first of Complainant’s registrations for its CAREY mark was registered on November 28, 1978, claiming first use as of February 1, 1939.
The Disputed Domain Name, , was registered on April 3, 2012. The Disputed Domain Name previously resolved to a website where Respondent offered transport services in competition with Complainant. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has provided chauffeured limousine services and ground transportation logistics management services under the name CAREY for the past 75 years. It has built up a strong reputation and significant goodwill in the CAREY mark. Complainant asserts that it has the exclusive right to use the CAREY mark in connection with limousine and related transportation services in the United States of America and internationally.
Complainant asserts that it recently learned that Respondent has registered the Disputed Domain Name, , through which Respondent has been running a business purposefully similar to, and intended to compete with, Complainant. Although Respondent is not currently operating a website linked to the Disputed Domain Name, Respondent was operating a limousine service via a website linked to the Disputed Domain Name as of early 2016. Complainant asserts that Respondent’s operation of a competing transportation business using the Disputed Domain Name is likely to confuse or mislead customers into believing that Respondent is affiliated with or related to Complainant.
Complainant asserts that it requested Respondent to transfer the Disputed Domain Name to it, but Respondent has failed to respond or accede to such requests.
Complainant asserts that the Disputed Domain Name is nearly identical to Complainant’s CAREY trademark, the only difference being the addition of the geographically descriptive term “of Seattle”. Complainant asserts that the words “of Seattle” are insufficient to distinguish the Disputed Domain Name from Complainant’s CAREY mark. Further, Complainant asserts that Respondent’s use of the CAREY mark combined with a geographic term in the Disputed Domain Name creates a domain name confusingly similar to the CAREY mark.
Complainant asserts that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name, because Complainant has not authorized Respondent to use the CAREY mark and has no affiliation with Respondent, and Respondent is therefore not making a bona fide use of the Disputed Domain Name.
Complainant asserts that Respondent’s use of the Disputed Domain Name is not a fair use, that Complainant has never authorized Respondent to use the CAREY mark, either through a license or franchise agreement or otherwise, and that Complainant has no relationship with Respondent.
Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith because it is being used as a platform from which the Respondent misled consumers into believing that Respondent’s business was affiliated with or related to Complainant’s. As such, Complainant asserts that Respondent’s registration and subsequent unauthorized use of the Disputed Domain Name was primarily for the purpose of disrupting the business of Complainant. Complainant asserts that Respondent is not making a noncommercial or fair use of the Disputed Domain Name, but instead has misleadingly sought to divert consumers for its own financial gain. Complainant asserts that Internet users and Complainant are both adversely affected by Respondent’s bad-faith use of the Disputed Domain Name. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Applicable Policy Provisions
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements in order to prevail in this proceeding:
(i) the Disputed 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 Disputed Domain Name; and
(iii) the Disputed Domain Name has been registered and is being used in bad faith.
The Policy states that the following circumstances shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that [Respondent has] registered or acquired the disputed 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 documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [Respondent has] registered the disputed 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) [Respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other online location, by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-exhaustive, and a UDRP panel may consider other circumstances as constituting registration and use of a domain name in bad faith.
A respondent may demonstrate rights in or legitimate interests to a domain name by any of the following, without limitation:
“(i) Before any notice to you 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, 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 are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.”
Policy, paragraph 4(c). Where a respondent is in default, a UDRP panel may draw such inferences as it considers appropriate. Rules, paragraph 14(b). B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to Complainant’s registered CAREY marks. The Panel agrees with Complainant that adding the geographically descriptive phrase “of Seattle” to Complainant’s mark will increase, not decrease, the confusing similarity, and will falsely suggest that Respondent is the authorized user of the CAREY mark in Seattle. See C & A Veltins GmbH & Co. KG v. Heller Highwater Inc.,WIPO Case No. D2004-0466; AT&T Corp. v. WorldclassM,WIPO Case No. D2000-0553.
The Panel finds that Complainant has provided sufficient evidence to establish paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
Complainant has made a prima facie case that Complainant has not authorized Respondent to use the CAREY mark and has no affiliation with Respondent, through a license or franchise agreement or otherwise, that Complainant has no relationship with Respondent, and that Respondent is not making a bona fide use of the Disputed Domain Name.
Respondent’s prior use of the Disputed Domain Name in connection with a website promoting the same type of services offered by Complainant under its mark is not a bona fide use of the Disputed Domain Name. See Dial-A-Mattress Operating Corp. v. N, Inc.,WIPO Case No. D2001-0240. The Panel also notes that the Disputed Domain Name no longer resolves to an active website.
Once Complainant makes its prima facie case, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition(“WIPO Overview 2.0”), paragraph 2.1. Respondent failed to come forward with allegations or evidence demonstrating rights or legitimate interests in the Disputed Domain Name. As Respondent failed to file a Response, it may be presumed that Respondent has no rights or legitimate interests in the Disputed Domain Name. See Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse,WIPO Case No. D2000-1221. As a result, Complainant has established paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
The Panel finds that Complainant has provided sufficient evidence to satisfy paragraph 4(b)(iv) of the Policy, namely that by using the Disputed Domain Name, Respondent intentionally intended to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
Respondent’s website promoted competing services identical to Complainant’s services identified by its mark, under the confusingly similar name “Carey of Seattle”, through a domain name that is confusingly similar to Complainant’s registered trademark. These facts clearly evidence the registration and use of a domain name in bad faith as outlined in paragraph 4(b)(iv) of the Policy.
The fact that there was no active content on the website at the Disputed Domain Name at the time this Complaint was filed does not affect the outcome. Complainant has proven that the Disputed Domain Name was linked to a website offering competing services identical to Complainant’s, under a name confusingly similar to Complainant’s trademark, and content was only removed from the website after Complainant wrote to Respondent. As Complainant notes, nothing prevents Respondent from replacing the content on its website at any time. Under the totality of the circumstances, Respondent’s removal of such content after receiving Complainant’s letter does not prevent a finding that the Disputed Domain Name was registered and used in bad faith as outlined in paragraph 4(b)(iv) of the Policy. See WIPO Overview 2.0, paragraph 3.2. 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 Disputed Domain Name, , be transferred to Complainant.
Jordan S. Weinstein
Sole Panelist
Date: June 14, 2016
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