WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Henry Ramirez dba Bay Area Driving School v. Interactive Solutions, Inc.

Case No. D2006-1414

1. The Parties

The Complainant is Henry Ramirez dba Bay Area Driving School, Hayward, California, United States of America, represented by Beeson Skinner Beverly LLP, United States of America.

The Respondent is Interactive Solutions, Inc., Oakland, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <bayareadrivingschool.com> is registered with Go Daddy Software.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 7, 2006. On November 8, 2006, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On November 8, 2006, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 November 23, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2006. The Respondent acknowledged receipt of the Complaint, but elected not to submit any response. Accordingly, the Center notified the Respondent’s default on December 15, 2006.

The Center appointed William R. Towns as the sole panelist in this matter on January 15, 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 since 1981 has owned and operated a driving school under the name Bay Area Driving School. The Complainant’s headquarters are in Hayward, California, in the East Bay region of the San Francisco Bay area. The Bay Area Driving School has continuously operated under this name since 1949. The Complainant also has registered the domain name <bayareadriving.com> for use in connection with the official website for the Bay Area Driving School.

The Respondent provides online driver’s education at <driversed.com>, utilizing a web-based curriculum that allows would-be drivers to complete the “classroom” portion of their education online. The Respondent maintains a place of business in Oakland, California, also in the East Bay region. The CEO of DriversEd.com previously owned a driving and traffic school in the area.

The Respondent registered the disputed domain name <bayareadrivingschool.com> on November 20, 2002. The Respondent currently is using the domain name to point to its “www.driversed.com” website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has established common law rights in BAY AREA DRIVING SCHOOL as a service mark, based on the Complainant’s extensive and continuous use of this name. The Complainant asserts that the disputed domain name is identical to this mark. The Complainant further asserts that the Respondent lacks rights or legitimate interests in the disputed domain name, and registered and is using the domain name in bad faith. According to the Complainant, the Respondent was aware of the Complainant and its rights in this mark when the Respondent registered the disputed domain name. The Respondent is using domain name to redirect Internet users to its “www.driversed.com” website, in order to create confusion regarding the Complainant’s affiliation, sponsorship or endorsement of the Respondent’s website and the services offered on that website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process, paragraphs 169 and 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).

Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) of the Policy in turn identifies three non-exhaustive means through which a respondent may establish rights or legitimate interests in the domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a number of panels have concluded that the burden shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing that the respondent lacks rights or legitimate interests under paragraph 4(c) of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

B. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, the Complainant must demonstrate rights in the marks that it asserts the disputed domain name is identical or confusingly similar to. In this instance, the Complainant asserts common law trademark or service mark rights in the mark BAY AREA DRIVING SCHOOL based on its extensive and continuous use of that mark since 1981 in order to distinguish its services from those of its competitors. It is well settled that the term “trademark or service mark” as used in paragraph 4(a)(i) encompasses both registered marks and common law marks. See, e.g., The British Broadcasting Corporation v. Jaime Renteria, WIPO Case No. D2000-0050; United Artists Theatre Circuit, Inc. v. Domains for Sale Inc. WIPO Case No. D2002-0005, The Professional Golfers’ Association of America v. Golf Fitness Inc., a/k/a Golf Fitness Association, WIPO Case No. D2001-0218.

Common law rights in a trademark derive from the use of the mark in commerce so as to distinguish the trademark owners’ goods or services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996). Under United States trademark law, common law rights in a trademark or service mark may be established by extensive or continuous use sufficient to identify particular goods or services as those of the trademark owner. See United Drug Co. v. Theodore Rectanus Co., 248 U.S. 90 (1918).

The Panel concludes on the available evidence that the Complainant has established common law rights in BAY AREA DRIVING SCHOOL as a mark based on its extensive and continuous use since at least 1981 in relation to the Complainant’s driver education services. The evidence of the such use submitted by the Complainant includes the use of the mark in advertisements in business telephone directories and high school publications dating as far back as 1981, the prominent display of the mark on business vehicles operated by the Complainant since 1981, and its use in website advertising, including advertising on the Driving School Association of California website since 1998. In short, there is ample evidence of the Complainant’s continuous and substantial use of BAY AREA DRIVING SCHOOL in commerce so as to distinguish its services from those of its competitors. See T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372 (Fed.Cir. 1996).

It is well settled under paragraph 4(a)(i) of the Policy that the question of identity or confusingly similarity is evaluated solely based on a comparison of the complainant’s mark and the alphanumeric string constituting the domain name at issue. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, WIPO Case No. D2000-1525. Thus, the Panel compares the mark and the domain name alone, independent of the use factors usually considered in a traditional trademark infringement action. See Banconsumer Service, Inc. v. Mary Langthorne, Financial Advisor, WIPO Case No. D2001-1367; InfoSpace.com, Inc. v. Delighters, Inc. d/b/a Cyber Joe’s Internet Café, WIPO Case No. D2000-0068.

The Panel finds that the Complainant has established common law service mark rights in BAY AREA DRIVING SCHOOL, and further finds that the disputed domain name <bayareadrivingschool.com> is identical or confusingly similar to the Complainant’s mark. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant states that it has not authorized the Respondent to use the Complainant’s BAY AREA DRIVING SCHOOL mark or to register a domain name reflecting the mark. The record indicates that the Respondent was aware of the Complainant and its mark when it registered the disputed domain name, which is identical to the mark. The Complainant and the Respondent are both headquartered in the San Francisco Bay area of California, and the Respondent’s own website confirms that its CEO and founder operated a driver’s education and traffic school for some 20 years in this geographic locale. The Complainant has further submitted an affidavit attesting that the Respondent’s CEO has been personally acquainted with the Complainant for a number of years.

Given the foregoing, the Panel finds that the Complainant has made a prima facie showing under paragraph 4(a)(ii) of the Policy. The circumstances as set forth and documented in the Complaint and its Annexes are sufficient to require the Respondent to come forward with evidence under paragraph 4(c) of the Policy demonstrating rights to or legitimate interests in the disputed domain name. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

The Respondent has not submitted a formal response to the Complaint, and in the absence of any such submission this Panel may accept all reasonable inferences and allegations included in the Complaint as true. See Talk City, Inc. v. Robertson, WIPO Case No. D2000-0009.¹ Nevertheless, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

The Panel has thoroughly examined the record for circumstances that might demonstrate that the Respondent has established rights or legitimate interests in the disputed domain name under Paragraph 4(c) of the Policy. The Panel has found none. While the record does reflect the Respondent’s use of the disputed domain name, prior to receiving any notice of this dispute, to direct Internet users to its commercial website, a showing of such use without more does not bring the Respondent within the safe harbor provision of paragraph 4(c)(i). It is well settled under the Policy that for an offering under paragraph 4(c)(i) to be considered bona fide, the domain name use must also be in good faith under paragraph 4(a)(iii). See, e.g., First American Funds, Inc. v. Ult. Search, Inc, WIPO Case No. D2000-1840.

In this case, the Respondent registered a domain name identical to the Complainant’s mark, under circumstances that leave this Panel with little doubt that the Respondent was aware of the Complainant’s rights in the mark. The Respondent has pointed the disputed domain name at the Respondent’s commercial website, where the Respondent competes with the Complainant for business. The Respondent’s use of the domain name thus is trading on the good will established in the Complainant’s mark. This is not a good faith use of the domain name under the Policy. To the contrary, as noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a complainant and its products or services, its very use by a respondent shown to be aware of this connection suggests “opportunistic bad faith”. Accordingly, the Complainant has satisfied its burden under paragraph 4(a)(iii) of the Policy.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (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 domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

As noted, the Panel has little doubt that the Respondent was aware not only of the Complainant but also of the Complainant’s rights in the BAY AREA DRIVING SCHOOL mark prior to registering the disputed domain name. That the Respondent deliberately appropriated the Complainant’s mark for use of the domain name is beyond serious dispute based on the record in this case. The evidence is uncontroverted that the Respondent has used and is continuing to use the disputed domain name – which is identical to the Complainant’s mark – to divert Internet users to the Respondent’s commercial website, where it competes directly for business with the Complainant. Further, the Complainant has presented evidence that the Respondent’s use of the disputed domain name has created confusion between the Complainant and its mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and the services offered at its website.²

The Panel concludes from the circumstances as discussed herein that the Respondent’s primary motive in registering the disputed domain name was to profit from and exploit the Complainant’s trademark rights, which constitutes bad faith registration. The Panel further finds that the Respondent is making a bad faith use of the disputed domain name under paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Complainant has met his burden of establishing bad faith registration and use under paragraph 4(a)(iii) of the Policy.

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 domain name, <bayareadrivingschool.com>, be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: January 29, 2007

¹ Some panels have held that a respondent’s lack of response can be construed as an admission that the respondent has no rights or legitimate interests in a disputed domain name. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624. Other panel decisions note that adverse inferences may be drawn from a respondent’s failure to reply. See Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403.

² The Complainant has submitted an affidavit in which he states that a number of persons who took driver’s education through DriversEd.com reported to him that they thought they had received their certifications through Bay Area Driving School. In the absence of any formal response by the Respondent, the Panel accepts the Complainant’s affidavit as constituting some evidence of actual confusion.