The Complainant is Uber Technologies, Inc., United States of America, represented by Greenberg Traurig, LLP, United States of America (“United States”).
The Respondent is Paul Svensen, United States of America, represented by The Concept Law Group, P.A., United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 30, 2020. On December 1, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 1, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 12, 2020. 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 the Respondent of the Complaint, and the proceedings commenced on December 16, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2021. The Respondent submitted a formal response to the Complaint on January 21, 2021, after the deadline for such filing had passed, claiming that it did not receive notification of these proceedings until January 7, 2021. On January 22, 2021, the Complainant submitted an Additional Submission that addressed a number of facts asserted and arguments made in the Response. On February 25, 2021, the Panel issued a Procedural Order that afforded the Respondent until March 4, 2021 to respond to the Additional Submission. On March 4, 2021, the Respondent filed an Additional Response. The Center appointed Evan D. Brown as the sole panelist in this matter on January 20, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant is a technology company providing a platform that, among other things, matches automobile riders with drivers. Since 2010 it has used the mark UBER in connection with its services and owns a number of registrations for that mark in jurisdictions around the world. For example, it owns the incontestable registration for the word mark UBER, United States Reg. No. 3977893, registered on June 14, 2011. The disputed domain name was registered on September 5, 2017. The Respondent has used the disputed domain name to operate a website and to promote its mobile app that connects passengers with private aircraft. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. Under the first element of the Policy, the Complainant points to its longstanding use of its UBER mark and similar variations thereof in many countries around the world and its trademark registrations therein, together with the incorporation of the UBER mark in its entirely into the disputed domain name. One may summarize the Complainant’s arguments under the second element of the Policy as follows: - The Respondent registered the disputed domain name without the Complainant’s authorization or consent and used it to resolve to the Respondent’s website, which offers putative aerial flight booking services in direct competition with the Complainant. - The Respondent’s use of the disputed domain name – which intentionally trades on the fame and reputation of the Complainant’s trademark – cannot be regarded as bona fide use within the meaning of the Policy because the Respondent clearly intended to trade off the Complainant’s rights in the UBER trademark. This intentional targeting is shown in how the Respondent’s website contains replete references to the Complainant, nearly all of which falsely imply some form of endorsement or affiliation with the Complainant, including the Respondent’s blog tags “Uber”, “Uber App”, “Fly Uber”, and “Uber for Private Jets”, as well as phrases like “Uber for taxis”, “Yes... It is exactly like Uber for jets”, and “Even Uber is getting in on this action with UberJets.”. - The Respondent’s use of the disputed domain name with the intent for commercial gain cannot be deemed to have legitimate non-commercial use pursuant to Policy. - Information in an article submitted indicates the Respondent has engaged in questionable business practices and suggests that that the Respondent’s website and app are mere pretext for an ulterior and unscrupulous enterprise or motivation, without a bona fide intent of offering an app that allows customers to book private aircraft. - The Respondent is not commonly known by the disputed domain name within the meaning of Policy. This is shown in at least two ways: the Complainant has not authorized, licensed, or consented to the Respondent’s registration and use of domain names incorporating the Complainant’s marks, or any confusingly similar variation thereof, and to the Complainant’s knowledge, there are no prior trademark applications or registrations in the name of Respondent for any mark incorporating Complainant’s marks anywhere in the world. And under the third element, the Complainant principally asserts that: - At the time of registration of the disputed domain name, it was obvious that the Respondent had actual knowledge of the Complainant’s UBER mark. The mere fact that the Respondent registered a domain name that incorporates the famous trademark of a well-known company is alone sufficient to give rise to an inference of bad faith. The Respondent’s actual knowledge is plain to see based on the replete references to the Complainant on the Respondent’s website, nearly all of which falsely imply some form of endorsement or affiliation with the Complainant. The Respondent’s actual knowledge of the Complainant is further established based on the Respondent’s ineffective website disclaimer that identifies the Complainant by its full company name: “UberJets is not affiliated with Uber Technologies, Inc.”. - The Respondent also had constructive knowledge of the Complainant’s trademarks because of the Complainant’s extensive registration of its marks in the United States, where the Respondent purportedly resides based on the available WhoIs data, as well as globally in the event the Respondent does not actually reside in the United States. - It is evident that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademarks. The Respondent has done so by registering and using the disputed domain name which incorporates the Complainant’s UBER mark, as well as making numerous references to the Complainant including the blog tags like “Uber for Private Jets” and likening its offerings to the Complainant with the phrase “Yes... It is exactly like Uber for jets.”. The Respondent’s decision to use the Complainant’s UBER trademark without authorization in the disputed domain name to promote travel and air travel booking technology and services that directly compete with the Complainant supports the conclusion that the Respondent has intended to profit from creating a likelihood of confusion with the Complainant. - The Complainant made numerous efforts to contact the Respondent through written correspondence but has received no response thereto, other than an anonymous voicemail from someone claiming to be associated with the Respondent, without any name, number, or other contact information. - The Respondent has used a privacy registration service since its initial registration to register the disputed domain name, and a proxy hosting service, Cloudflare, to host the Respondent’s website. - The Respondent’s use of a small disclaimer at the extreme bottom of the Respondent’s website, couched amidst other disclaimers, serves as an admission by the Respondent that Internet users have been and will continue to be confused about any affiliation, endorsement or sponsorship by the Complainant. B. Respondent The Respondent submitted a formal response to the Complaint on January 21, 2021, denying the Complainant’s assertions and requesting the Panel deny transfer of the disputed domain name. The Respondent generally argued that the Complainant overstated the extent to which the Complainant is the only user of the mark UBER in the marketplace, that the Complainant has been inconsistent by arguing in past litigation (unrelated to this case) that it is merely a software and technology company and not a technology company, and that the Complainant seeks relief in this forum because its delay (perhaps on laches grounds) would prevent it from obtaining relief in federal court. Under the first element of the Policy, the Respondent argues that the disputed domain name is not identical to the UBER mark, and that a consumer seeing the disputed domain name would not assume there is sponsorship, affiliation, or some other connection between the Respondent and the Complainant. More particularly, the Respondent argues primarily that the mark UBER exists in a crowded field of hundreds of trademark applications and registrations in the United States alone. And it argues that the Complainant has had a “chameleon-like propensity to change its position on what business it is in,” thereby complicating the likelihood of confusion analysis. As for the second element, one may summarize the Respondent’s arguments as follows: - Prior to being notified of the dispute in April 2018, the Respondent was “open for business” and completing bookings. In this way, the Respondent was engaged in a bona fide offering of services using the disputed domain name. - The Complainant admits that the Respondent is using the disputed domain name to enable consumers to book air travel. - The Complainant has not met its burden of proof under this second element. And under the third element, the Respondent principally argues that: - The Registrant chose the word “uber” because it means “superior”. This is the same reason that 413 other trademark applicants in the United States chose that word. - The Complainant’s reliance on Northwest Airlines, Inc., v. Mario Koch, FA 095688 (Nat. Arb. Forum Oct. 27, 2000) and Singapore Airlines Limited. v. P & P Servicios de Communicacion, S.L D2000-0643 is misplaced because those disputes did not arise in contexts of a trademark crowded field. - The disclaimer on the Respondent’s website lends support to circumstances suggesting the Respondent’s good faith. - The Complainant’s concerns over the disputed domain name are not legitimate because of the amount of time that has passed when the Complainant first sent a cease and desist letter to the Respondent in 2018. The Respondent reinforces many of these arguments in the Additional Response. The Respondent also asserts in the Additional Response that the Complainant has libeled the Respondent and its principal Paul Svensen by claiming, among other things, that certain litigation against Mr. Svensen was successful, when in fact that litigation was recently voluntarily dismissed. The Respondent asserts that this highlights the disingenuous nature of the Complainant’s approach to this dispute. 6. Discussion and Findings A. Preliminary Matter: Relation of this UDRP Action to Potential Court Litigation The Panel observes that due to the nature of the allegations and defenses the parties have raised in this matter, litigation between them may be forthcoming, regardless of the outcome of this UDRP proceeding. The Policy was designed to protect the parties’ court options before, during and after a UDRP proceeding, as evidenced in paragraph 4(k) of the Policy. The Policy was adopted to deal with the problem of cybersquatting – that is, the abusive registration of domain names consisting of, including, or confusingly similar to marks belonging to another for the purpose of profiting from the goodwill associated with the mark. The questions that the Panel has jurisdiction to address under the Policy are relatively simple and straightforward. Such proceedings are summary in nature, without the benefit of confrontation of the witnesses or of a hearing. Jason Crouch and Virginia McNeill v. Clement Stein,WIPO Case No. D2005-1201. In particular, the Respondent has raised issues pertaining to the broader questions of likelihood of confusion. If the facts of this matter were to be put before a court, that tribunal would consider questions that are not well-handled in a UDRP proceeding, such as matters going to the strength of the UBER trademark, instances of consumer confusion, comparisons between the nature of the services the parties provide, fraudulent business practices, and laches. The tribunal would provide the framework in which the parties could fully plead their claims and defenses, take comprehensive discovery, engage in motion practice, cross examine witnesses, and otherwise develop a complete record. The Panel is also mindful of the various issues raised in the Additional Response, particularly the assertions that the Complainant has, in these proceedings, libeled the Respondent and its principal, Paul Svensen. The Respondent accuses the Complainant of trying to mislead the Panel by claiming that certain litigation against Mr. Svensen was successful, when in fact it was recently voluntarily dismissed. The Respondent asserts that this highlights the disingenuous nature of the Complainant’s approach to this dispute. The Panel is troubled by this issue. Having regard to the foregoing, the Panel has determined to proceed nonetheless to a decision on the merits. As noted in section 4.14.2 of the WIPO Overview 3.0, UDRP panels generally favor the issuance of decisions on the merits in overlapping court-UDRP scenarios, even though such UDRP decisions would not be binding on the court. See Displays Depot, Inc. v. GNO, Inc.,WIPO Case No. D2006-0445. In the attendant circumstances, the Panel considers that the expediency of a decision under the Policy may prove beneficial to the parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.14, and relevant decisions cited therein. B. Acceptance of Late-Filed Response and Additional Submission The record indicates that delivery of a hard copy of the Complaint to the Respondent was unsuccessful. The record does not indicate, however, that email delivery of the Complaint to the Respondent failed. On December 1, 2020, the Registrar provided to the Center an email address for the Respondent that the Center used to seek to notify the Respondent of the Complaint on December 16, 2020. The record contains no reply from the Respondent to that message, nor does the record contain any indication that the email “bounced back”. On January 6, 2020, the Center used the same email address to notify the Respondent of its default. This time, however, the Respondent used that email address to reply to the Center the next day saying, among other things, that “[t]his is the first we have heard any of this”. Two weeks later, through counsel, the Respondent filed a formal response. The Panel can only surmise that one or more of the following things happened: (a) the Respondent simply did not notice the December 16 email (pre-holiday and end-of-year rush perhaps?), (b) the message got caught in a spam filter, (c) the Respondent saw the message but thought it was junk email, or (d) the Respondent saw the email but ignored it, hoping the issue would somehow resolve itself. Any of the foregoing would be unfortunate. It is worth noting that the Respondent took the matter seriously enough to hire sophisticated counsel to draft and file a Response, even a late one. And because it is at least as likely as not that failure to timely respond has a good excuse, disregarding the Respondent’s arguments would be harsh. In any event, the late filing did not put unmanageable time pressure on anyone. The Complainant skillfully mustered additional facts and arguments to include in the Additional Submission the day following the filing of the Response. The Panel still had almost two weeks to consider both sides’ arguments before the due date of this decision. Rule 10 obligates the Panel to conduct the proceedings both with due expedition and in a manner that ensures each side gets a fair opportunity to present its case. On balance, the Panel believes it best fulfills these obligations by accepting the Response, the Additional Submission and the Additional Response. C. Identical or Confusingly Similar There is no doubt that the Complainant enjoys trademark rights in the UBER mark. Its trademark registrations and long and widespread use of that mark establish those rights. And the disputed domain name incorporates the UBER mark in its entirety. For purposes of the Policy, this is enough to establish confusing similarity. The words “fly” and “jets” within the disputed domain name do not eliminate the confusing similarity. The Complainant has succeeded under this first element of the Policy. The Panel acknowledges the Respondent’s arguments under this first element, but finds them to miss the mark that the Policy sets. The Respondent couches its arguments using the vocabulary of that critical element of trademark infringement – likelihood of confusion. Accordingly, the Respondent spends much of its time arguing under this element that the mark UBER exists in a crowded field and is therefore not a particularly strong mark. But the Policy does not require a complainant to show that a member of the consuming public would likely be confused by a disputed domain name. Paragraph 4(a)(i) of the Policy requires only that a disputed domain name be “identical or confusingly similar” to a complainant’s mark. For this determination of confusing similarity, the threshold is conventionally modest, requiring an objective assessment of whether, for example, the trademark is clearly recognizable in the disputed domain name, even in the presence of additional words or strings. Alfred Dunhill, Inc. v. Registration Private, Domains By Proxy, LLC / Abdullah Altubayieb,WIPO Case No. D2017-0209. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the domain name. WIPO Overview 3.0, section 1.7. The Panel is satisfied that the Complainant has passed the test that the first element of the Policy sets out. D. Rights or Legitimate Interests This second element of the Policy requires the Complainant to prove a negative, namely, that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If a complainant makes a prima facie showing that a respondent lacks rights or legitimate interests in respect of the disputed domain name, the burden of demonstrating rights or legitimate interests shifts to the respondent. The Panel finds that the Complainant has established, prima facie, that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant has submitted credible evidence – which the Respondent does not mention (let alone rebut) that the Respondent intentionally targeted the Complainant. Despite the crowded trademark field theme that characterizes the Respondent’s arguments, it is clear that the Respondent has had the Complainant in mind in the operation of the website found at the disputed domain name. The Respondent’s website is indeed replete with references to the Complaint. These include blog tags “Uber”, “Uber App”, “Fly Uber”, and “Uber for Private Jets”, as well as phrases like “Uber for taxis”, “Yes... It is exactly like Uber for jets”, and “Even Uber is getting in on this action with UberJets.” This sort of targeting is not consistent with bona fide use within the meaning of the Policy. Accordingly, the Panel finds that the Respondent has failed to overcome the Complainant’s prima facie showing. E. Registered and Used in Bad Faith The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online 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 a product or service on [respondent’s] website or location”. The Panel finds that the Respondent has particularly targeted the Complainant in a way that demonstrates bad faith registration and use of the disputed domain name. Clear targeting by the Respondent is shown by the website content found at the disputed domain name (discussed in more detail above). The Respondent claims it joined the ranks of many other brand owners and registered the disputed domain name because the word “uber” means “superior”. Indeed, there are many companies other than the parties to this dispute who have chosen that word to comprise their trademarks. Maybe those companies chose the word because of its dictionary meaning. But the Panel need not worry about what any of them were thinking. What matters is what motivated the Respondent in this case when it registered and used the disputed domain name. The Panel finds based on the record set out above that the Respondent targeted the Complainant in a way that constitutes bad faith under the Policy. 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 Evan D. Brown
Sole Panelist
Date: March 15, 2021
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