WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mears Transportation Group, Inc. v. Domain Deluxe
Case No. D2006-1384
1. The Parties
The Complainant is Mears Transportation Group, Inc., Orlando, Florida, United States of America, represented by Akerman Senterfitt, United States of America.
The Respondent is Domain Deluxe, Hong Kong, SAR of China.
2. The Domain Name and Registrar
The disputed domain name <mearstransportationgroup.com> is registered with Nameview Inc..
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2006. On October 30, 2006, the Center transmitted by email to Nameview Inc. a request for registrar verification in connection with the domain name at issue.
On November 1, 2006, Nameview Inc. transmitted by email to the Center its verification response suggesting that the Complainant and not the Respondent was listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. By an email dated November 13, 2006, the Center advised the Complainant’s representatives that the Registrar had supplied information suggesting that the disputed domain name was already in the Complainant’s hands and asked whether the Complainant had control over the disputed domain name and, if so, whether it would wish to terminate the proceedings. The Complainant’s representatives requested suspension of the proceedings to investigate whether the Complainant had complete control and access over the domain name by an email dated December 1, 2006 which was confirmed in writing on December 5, 2006. On January 5, 2007, the Complainant stated in writing that it still did not have access to and control of the disputed domain names and asked for the Complaint to proceed. In reply to an email from the Registrar dated January 18, 2007, alleging that the Complaint was incorrect because the domain name was already registered in the name of the Complainant, the Complainant’s representatives confirmed on January 25, 2007 that as at the date of the filing of the Complaint the domain name had been registered to the Respondent.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 18, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 8, 2007.
The Center appointed John Lambert as the sole panelist in this matter on February 20, 2007. 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 described itself as “Central Florida’s leading transportation service company”. It claims to be the primary transportation service provider for Orlando International Airport and the leading transportation service provider for Orlando’s convention center, theme parks and cruise terminals. It has a fleet of 500 taxis, 75 shuttle cars, 185 coaches and various other motor cars.
The Complainant has traded under the MEARS and MEARS TRANSPORTATION GROUP signs since the mid-1980s and is the registered proprietor of a number of federal and state trade and service marks including the registration of MEARS TRANSPORTATION GROUP as US service mark number 2,290,710 for travel management and other services in classes 35 and 39.
The Complainant has advertised such services under the above-mentioned signs extensively in Central Florida and beyond for many years. Various taxi, bus, private hire and other services (including admission to the well known Disney theme park) may be booked through the Complainant’s website at “www.mearstransportation.com”.
Very little is known of the Respondent beyond its business name and trading address. The Respondent appears to offer a proxy domain name registration service. The Complainant alleges that the disputed domain name was the URL for a website purporting to offer resources and information on transportation and Florida and a screen dump of the home page of that site has been annexed to the Complaint, but the Panel was unable to find that site when he attempted to visit it on Tuesday, March 6 2007, just after 11:00 British Time.
5. Parties’ Contentions
The Complainant claims to satisfy all the requirements of paragraph 4(a) of the Policy.
It complains that the disputed domain name is identical to its US registered service mark no. 2,290,710 and/or confusingly similar to its other federal and state trade and service marks. It also has sufficient goodwill and reputation in the MEARS TRANSPORTATION GROUP to launch an action for passing off against anyone using that sign in relation to transport in Florida without its consent.
It says that the Respondent has no right or legitimate interest in respect of the domain name. In particular, the Respondent is not commonly known as MEARS or MEARS TRANSPORTATION GROUP and it has not made a legitimate non-commercial or fair use of the domain name.
It alleges that the domain name has been registered and as of the date of the filing of the Complaint was being used in bad faith by diverting consumers and the trade to a spurious site with the result that the Complainant is likely to lose bookings and suffer damage to its reputation and goodwill.
The Complainant requests the transfer of disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a Complainant to prove that:
(i) the 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 in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
A. Identical or Confusingly Similar
The Panel finds the domain name to be identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant is the registered proprietor of MEARS TRANSPORTATION GROUP as US service mark no. 2,290,710 which mark does not differ substantially from the disputed domain name.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the domain name. The Complainant has never licensed or consented to the Respondent’s use of that domain name. There is no evidence of any use, 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. There is no evidence that the Respondent is commonly known by the domain name or that it has registered such name as a trade or service mark in any intellectual property office. The use of the domain name for the website that has been described above appears to have been intended to divert customers for commercial gain which use is neither legitimate nor fair.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists certain circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith for the purposes of Paragraph 4(a)(iii). One of those circumstances is use of the domain name so as intentionally to attempt to attract, for commercial gain, Internet users to a web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on your web site or location (Paragraph 4(b) (iv)).
The mere use of a domain name not substantially different from the Complainant’s registered trade mark as a URL is likely to induce belief in a connection between the Respondent’s website and the Complainant. Such belief would be reinforced by the words “Welcome to mearstransportationgroup.com” at the top of the home page and hypertext links to pages offering transport services in Florida. At the very least this page would divert internet traffic from the Complainant’s site to the Respondent’s which traffic could be used or marketed for commercial gain.
Because those circumstances constitute evidence for the purposes of Paragraph 4(a) (iii), the Panel finds that the domain name has been registered and is being used in bad faith.
Accordingly, the Panel is satisfied that all three elements of Paragraph 4(a) of the Policy are present.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <mearstransportationgroup.com> be transferred to the Complainant.
Dated: March 6, 2007