The Complainant is United Van Lines, LLC of Fenton, Missouri, United States of America, represented by Thompson Coburn LLP, United States.
The Respondent is PRO MOVES of Hamilton, Ontario, Canada.
The disputed domain name <unitedmoves.com> is registered with GoDaddy.com, Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on December 22, 2009. On December 23, 2009, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On December 23, 2009, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 28, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was January 17, 2010. The Response was filed with the Center on January 17, 2010.
The Center appointed James A. Barker as the sole panelist in this matter on January 28, 2010. 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.
On January 29, 2010, the Complainant made a supplemental filing. In response, the Center noted that neither the Policy, nor the Rules, allow for supplemental filings by the parties. Under paragraph 12 of the Rules, the Panel may, in its sole discretion, request further statements or documents from the parties. Under paragraph 10(d) of the Rules, the Panel may determine the admissibility, relevance, materiality and weight of the evidence. The Center forwarded the Complainant's communication to the Panel, to determine whether to consider it for the purpose of this decision. On February 2, 2010, the Respondent also filed a supplemental submission in reply to that filed by the Complainant. The Center also forwarded that supplemental filing to the Panel on February 5, 2010.
The Complainant is the owner of registered marks in various jurisdictions for UNITED and UNITED VAN LINES, in relation to e.g. transportation and storage services, from as early as 1960. The Complainant has offered moving services under the name UNITED VAN LINES since 1933, and used the shortened mark UNITED since 1976. The Complainant has 500 agents in the United States and another 550 agents in 135 countries around the world. The Complainant operates a website at “www.unitedvanlines.com”. The Complainant also operates a website directed primarily to Canadian customers at “www.uvl.ca”. Further detail about the Complainant's business is set out in United Van Lines, LLC v. Moving and Storage Association, WIPO Case No. D2006-0290.
The disputed domain name was registered on April 10, 2009 (as indicated in the WhoIs details confirmed by the Registrar).
The Complainant provided evidence that, as at December 18, 2009, the disputed domain name did not revert to an active website. It reverted to a “parking” website. That website indicated that “This Webpage is parked FREE, courtesy of GoDaddy.com”. The website contained a list of links related to the moving and shipping industry.
The Complainant provides evidence (from the GoDaddy Domain Buy Service) that, in August 2009, it contacted the Respondent and offered to purchase the disputed domain name for, ultimately, USD $3,000. This offer was rejected by the Respondent who stated, among other things, that USD $100,000 “would be a figure that I would consider” and offered a Canadian telephone number containing digits corresponding to the word “united”.
The following is summarized from the Complaint.
The Complainant claims that its marks are very strong, given the incontestable status of its U.S. registrations and through widespread use. The Complainant says that the disputed domain name is confusingly similar to its mark, because the domain name wholly incorporates its mark and adds the descriptive term “moves”. Among other cases, the Complainant refers to a previous panel decision which found that the addition of the term “mover” to its UNITED mark did not avoid confusing similarity: United Van Lines, LLC v. Moving and Storage Association, WIPO Case No. D2006-0290. The Complainant refers to the fact that the Respondent's website contains a list of sponsored listings to competitors of the Complainant.
The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain name. The Complainant says that the Respondent has no relevant rights in a mark and cannot otherwise demonstrate the circumstances set out in paragraphs 4(c)(i) – (iii) of the Policy.
The Complainant, finally, claims that the Respondent registered and has used the disputed domain name for the purpose of paragraph 4(b)(i) of the Policy. The Complainant points to the Respondent's offer to sell the disputed domain name for USD $100,000.
The Respondent denies the claims against it.
In relation to whether the disputed domain name is confusingly similar to the Complainant's mark, the Respondent says that its domain name is to be used in a non-competing industry. The Respondent says that its intended website will be used to “index video clips of outstanding athletic performances…[that is] sensational ATHLETIC MOVES from any sport…”. In that connection, the Respondent says that the term “united” in the domain name is intended to “convey the meaning of a common or connected or unanimous appreciation of spectacular ATHLETIC MOVES…”. The Respondent says that it is working with other parties to develop its website and is investing a substantial amount of time and resources for this purpose.
The Respondent says that, before it registered the disputed domain name, it researched similar domain names owned by third parties, a number of which are advertised for sale. Because it conducted this research, the Respondent says that it did not act in bad faith.
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
These elements are discussed as follows, immediately after a consideration of whether to admit the parties supplemental filings.
As noted above in relation to the procedural history of this case, both parties have, on their own initiative, made filings additional to the Complaint and the Response. Neither the Policy nor the Rules explicitly provide for such supplemental filings. A Panel has the discretion to admit or invite further filings under paragraphs 10(a), (b), (d), and 12 of the Rules. The Panel considers that such filings should not be admitted as a general rule, in accordance with the streamlined nature of the Policy. There was no sufficient cause for accepting the supplemental submissions in this case. The Panel considered that the Complaint and Response contained sufficient argument and evidence for the Panel to proceed to an informed decision. The supplemental filings sought only to expand on the parties original submissions. Accordingly, the Panel did not consider the further filings in the consideration of the elements which follow.
There is no dispute that the Complainant relevantly has rights in a mark, for the purpose of paragraph 4(a)(i) of the Policy. The Complainant, most relevantly, has a registered mark for UNITED in various jurisdictions including Canada (where the Respondent has its address) and the United States (where the Complainant has its address).
On balance, the Panel finds that the disputed domain name is confusingly similar to that mark, for the following reasons.
Firstly, and most obviously, the Complainant has a registered mark. Being registered, the mark is entitled to a presumption of distinctiveness. See EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047, Owens Corning Fiberglas Technology, Inc v. Hammerstone, WIPO Case No. D2003-0903. That does not necessarily mean that the Complainant's mark is, as it claims, “very strong”. The Complainant's mark is obviously comprised of a common English word. From this, it might be argued that the Complainant's mark is at the weaker end of the spectrum. The term “united” is also the subject of numerous other trademark registrations, as indicated by e.g. a series of prior UDRP decisions relating to marks which included that term: see e.g. United Air Specialists, Inc. v. Patricia Pleshe, WIPO Case No. D2005-0640; United Rentals, Inc. v. United Rental Services, Ltd., WIPO Case No. D2006-0529. However, as noted by the Panel in the latter case, citing Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031: “[t]he fact that the mark is weak, however, does not mean that Respondent's domain name is not identical or confusingly similar to Complainant's mark”.
Secondly, the disputed domain name combines the Complainant's mark in its entirety, with the term “moves” - which is clearly suggestive of the Complainant's business. The addition of that term, if anything, increases potential confusion.
Thirdly, prior panels, faced with a not dissimilar comparison, have found there to be confusing similarity with the relevant mark. In addition to the two “united” cases referred to above, most relevantly, a prior panel has previously found in the Complainant's favor concerning a comparison between the Complainant's UNITED mark and the domain name <unitedmover.com>: United Van Lines, LLC v. Moving and Storage Association, WIPO Case No. D2006-0290. As noted in item 4.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, “The UDRP does not operate on a strict doctrine of precedent. However panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties.” And, as noted by the Panel in Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014: “Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner…”. The Panel considers that the question of confusing similarity is materially indistinguishable from that in the prior case involving the Complainant: United Van Lines, LLC v. Moving and Storage Association, WIPO Case No. D2006-0290. As such, this Panel reaches a similar result.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(i) of the Policy.
The Respondent argues that it has a right or legitimate interest in the disputed domain name because it incorporates terms descriptive or connoting the subject of its proposed website. In this connection, the Respondent says that it has an intention to set up a website providing video clips of “sensational ATHLETIC MOVES”. The Respondent said that it is working with other parties, making a substantial investment in time and resources for this purpose.
Relevantly, paragraph 4(c)(i) of the Policy provides that a respondent might demonstrate a right or legitimate interest, where it makes demonstrable preparations to use a disputed domain name in connection with a bona fide offering of goods or services. Essentially, this is the Respondent's claim. The Respondent is saying that it intends to use the disputed domain name to convey a meaning. That is, for “describing an element of its business, and not for the nefarious purpose of causing confusion or diversion of business”: EAuto L.L.C. v. EAuto Parts, WIPO Case No. D2000-0096. The former is legitimate, the latter is not.
The Panel finds the Respondent's claim of intended use unconvincing. Paragraph 4(c)(i) provides for a Respondent to make demonstrable preparations to show its legitimate interest. It is notable that this requirement - that preparations be demonstrable – is doubly emphasized in relation to paragraph 4(c)(i). That emphasis arises in both the chapeau of paragraph 4(c) (which refers to circumstances which “if found by the Panel to be proved…shall demonstrate” rights or legitimate interests) and the qualification in paragraph 4(c)(i) itself (requiring “demonstrable preparations”). By comparison, “use of” a domain name is not similarly emphasized, although it is clearly something of which a respondent would need to provide some proof to respond to a case against it. The emphasis on demonstrating preparations underlines the importance of the Respondent doing more than merely claiming to have a future intention. Concrete evidence must be provided to support such a claim.
However, the Respondent provides no evidence to demonstrate its assertions. The Respondent provides no evidence that it (“Pro Moves”) is an entity in fact. It gave no explanation as to why it was working toward the website it claims to be developing. The Respondent provides no evidence of the substantial time and expense it claims to have invested in its preparations. The Respondent provides no evidence to support its claims of working with third parties in its endeavor. The Respondent's claim that it selected the disputed domain name to “convey the meaning of a common or connected or unanimous appreciation of spectacular ATHLETIC MOVES…” is implausible. Even taking a broad-minded approach, the disputed domain name does not strike the Panel as having that connotation.
For these reasons, the Panel finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
As the Panel has found that the Respondent's stated explanation for registering the disputed domain name to be implausible, the next question is whether the Respondent instead registered and used it, intending to take some advantage of the Complainant's mark. The Panel considers that the circumstances in this case suggest that this was the Respondent's motivation.
The Complainant has an extensive and long-standing business. That business is well-known in the Complainant's contiguous jurisdiction, the United States, as well as the jurisdiction where the Respondent has its address. The Complainant has multiple trademark registrations in both of those jurisdictions. The Respondent has selected a domain name that is confusingly similar to the Complainant's mark. The selection of the term “moves”, which is suggestive of the Complainant's business, together with the Complainant's UNITED mark, indicates an intention to target the Complainant. The Respondent has not developed a website at the disputed domain name, nor presented any evidence of real preparations to do so. The combination of this lack of evidence, and the implausible explanation of the Respondent's intentions described above, is indicative of bad faith.
The Complainant's evidence also suggests that the Respondent has been prepared to contemplate the sale of the disputed domain name for an excessive sum. In the same interaction, the Respondent also offered a telephone number for sale which also included a correspondence with the Complainant's UNITED mark. This does not mean that the Panel would find that the Respondent was primarily motivated to sell the disputed domain name, within the meaning of paragraph 4(b)(i) of the Policy. But the excessive quantum of the Respondent's counter-offer to the Complainant, together with the other circumstances of this case, reinforce a finding of bad faith. See e.g. Merck KGaA v. Sunmeet Jolly, WIPO Case No. D2004-0195.
In all these circumstances, the Panel finds that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
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, <unitedmoves.com>, be transferred to the Complainant.
James A. Barker
Dated: February 11, 2010