WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mayflower Transit LLC v. Domains by Proxy Inc./Yariv Moshe
Case No. D2007-1695
1. The Parties
Complainant is Mayflower Transit LLC, Fenton, Missouri United States of America, represented by Thompson Coburn LLP, United States of America.
Respondent is Domain by Proxy Inc./Yariv Moshe, Watertown, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name <mayflowermovers.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 16, 2007. On November 19, 2007, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the domain name at issue. On November 20, 2007, GoDaddy.com, Inc. 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 e-mail communication to Complainant on November 21, 2007 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. On November 26, 2007, Complainant filed an Amended Complaint with the Center, naming the domain name owner of record, Yariv Moshe, as Respondent in this Proceeding. 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”), 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 28, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was December 18, 2007. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 21, 2007.
The Center appointed Jordan S. Weinstein as the sole panelist in this matter on January 8, 2008. 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 provides transportation and storage services under the trademark MAYFLOWER which Complainant commenced using in 1927. Complainant owns several United States of America registrations for MAYFLOWER, some with designs and other elements, identifying transportation and storage services. The earliest of Complainant’s registrations dates from 1948 and all are incontestable.
Respondent’s domain name <mayflowermovers.com> resolves to a website which provides sponsored results and links to various websites that offer moving services other than those of Complainant, including links directing Internet users to “delta van lines”, “trans american van lines”, and “moving guru”, all of which provide quotes for moving services.
5. Parties’ Contentions
Complainant asserts that its mark MAYFLOWER in connection with its transportation and storage services is arbitrary and very strong, given its incontestable status and common law use for 80 years. Complainant asserts Respondent’s domain name <mayflowermovers.com> is virtually identical to Complainant’s MAYFLOWER trademarks, combining Complainant’s mark with a term describing Complainant’s services rendered under the mark. As a result, Complainant contends that Respondent’s mark is virtually identical or confusingly similar to Complainant’s registered marks. Additionally, combining Complainant’s MAYFLOWER mark with a term which describes Complainant’s services is likely to increase consumer confusion.
Complainant contends that Respondent has no rights or legitimate interests in respect of the domain name of <mayflowermovers.com> because Respondent has not (to Complainant’s knowledge) used the domain name in connection with a bona fide offering of goods or services, but rather is using the domain name only in connection with a site which offers sponsored links. Respondent is not a licensee of Complainant and has never been affiliated, connected, sponsored or endorsed by Complainant. Complainant asserts that neither the WHOIS records nor Respondent’s contact information indicates that Respondent is commonly known by the name “Mayflower Movers.” To the contrary, Complainant provided evidence that Respondent uses the email address “email@example.com”, and the associated website “www.carmelmovers.com” is a company engaged in moving and storage services like Complainant. That organization’s address in its corporate records (submitted by Complainant) is the same as Respondent’s address, indicating that Respondent is in a business competitive to Complainant.
Complainant asserts that the domain name <mayflowermovers.com> was registered and is being used in bad faith because Respondent is operating a website offering links to companies competitive to Complainant’s mayflower moving services despite Complainant’s longstanding nationwide and well-known use of its MAYFLOWER mark in connection with such services. Complainant asserts that Respondent, by using “mayflower” in a domain name providing sponsored links for moving services, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s MAYFLOWER mark. Complainant asserts that “mayflower” has no relationship to moving, shipping and storage services except to the extent Complainant has created such an association by using its MAYFLOWER mark.
Finally, Complainant asserts that Respondent has also registered the domain name <movingunited.com> which combines the UNITED trademark and the descriptive mark “moving.” The UNITED trademark is owned by United Van Lines, LLC, a competitor of Complainant’s (and apparently of Respondent’s) in the transportation and storage business. Complainant asserts that Respondent’s registration of domain name <MOVINGUNITED.COM> evidences Respondent’s practice of registering domain names in order to prevent the owner of the relevant trademark from doing so, further evidencing Respondent’s bad faith use and registration of the domain name at issue herein.
Respondent did not reply to Complainant’s contentions, and is in default.
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:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
It is not sufficient to prevail that a complainant prove only registration in bad faith; rather, the complainant must prove both registration and use in bad faith. See World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. D2000-0001.
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 [the respondent has] registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the 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 domain name; or
(ii) [the 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 [the respondent has] engaged in a pattern of such conduct; or
(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted 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 [its] website or location or of a product or service on [its] website or location.
Policy, paragraph 4(b). These circumstances are non-inclusive, and the panel may consider other circumstances as constituting registration and use of a domain name in bad faith. Id.
The respondent may demonstrate rights or legitimate interests to the 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 non-commercial 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, the panel may draw such inferences as it considers appropriate. Policy, paragraph 14(b).
B. Identical or Confusingly Similar
Complainant’s United States of America incontestable registered trademarks establish Complainant’s rights in the term “MAYFLOWER” in connection with its transportation and storage services. The domain name <mayflowermovers.com> incorporates Complainant’s trademark in its entirety, and adds the descriptive word “movers” which clearly describes Complainant’s transportation and storage services. “Movers” also refers to services promoted by the websites linked to Respondent’s website and is descriptive thereof. See Volvo Trademark Holdings, AB v. UNASI, Inc., WIPO Case No. D2005-0556 (July 29, 2005). The Panel finds that Complainant provided sufficient evidence to establish this element under the Policy.
C. Rights or Legitimate Interests
Complainant asserts, and Respondent has failed to rebut, that Respondent is not commonly known by the domain name or is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain misleadingly to divert consumers which would tarnish the trademark or service mark at issue. Respondent’s use of a domain name confusingly similar to Complainant’s trademark for the purpose of offering sponsored links does not of itself qualify as a bona fide use. See, e.g. The Boucher Group, Inc., v. Nevis Domains LLC, WIPO Case No. D2006-1463 (January 29, 2007); Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan, WIPO Case No. D2004-0214 (May 10, 2004). As a result, Complainant has established this element of the Policy.
D. Registered and Used in Bad Faith
The Panel finds that the evidence Complainant has provided is sufficient to satisfy Sections 4(b)(ii),(iii) and (iv) of the Policy. Respondent has linked the domain name <mayflowermovers.com> with websites for businesses competitive with Complainant’s transportation and storage services. The term “mayflower” has no meaning in the moving industry except with reference to Complainant’s decades-old trademark. That Respondent combined MAYFLOWER with “movers” and linked its domain name to a search page with sponsored links for moving services indicates that Respondent intended to create confusion with Complainant’s trademark. As Respondent itself appears to be in the moving business, Respondent’s efforts to register the domain name and use it on a sponsored links page indicates the registration was made to disrupt the business of Complainant, a competitor. Finally, the fact that Respondent has also registered <movingunited.com>, while by itself not indicating a pattern, provides further indication that Respondent’s registration of a domain name incorporating Complainant’s trademark was no accident.
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 <mayflowermovers.com> be transferred to the Complainant.
Jordan S. Weinstein
Dated: January 22, 2008