WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

U-Haul International, Inc. v. Accurate Business Systems

Case No. D2003-0512

 

1. The Parties

The Complainant is U-Haul International, Inc., Phoenix, Arizona, United States of America.

The Respondent is Accurate Business Systems, Fabian Agudelo, Maitland, Florida, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <uhaulmovingrentals.com> and <uhaulmovingtrucks.com> (the "domain names") are registered with Go Daddy Software (the "Registrar").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on June 27, 2003. On June 27, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain names. On June 27, 2003, the Registrar 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 July 3, 2003. In accordance with the Rules, paragraph 5(a), the due date for a response was July 23, 2003. The Respondent did not submit any response. Accordingly, the Center notified the parties of the Respondentís default on July 24, 2003.

The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 29, 2003. 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 engaged in the moving and related services business. The Complainant markets and sells its products and services under the name and mark U-HAUL. The mark U-HAUL has been in continuous use for at least fifty years and is a federally registered trademark in the United States.

The Complainantís official website is connected to the domain name <uhaul.com>.

According to the Registrar, the Respondent registered the domain names on April 4, 2003.

 

5. Partiesí Contentions

A. Complainant

The Complainant has been engaged in the business of leasing trucks, trailers, equipment and storage rooms for more than fifty years. The Complainant has more than 15,000 locations in the United States and Canada and a rental fleet of approximately 90,000 trucks and 86,000 trailers. It has over 1,300 company-owned centers in the United States and Canada and over 1,000 storage facilities. The Complainant processes over eleven million rental transactions annually and its net rental revenues exceed $1,000,000,000.

The Complainant conducts its business under the name and mark U-HAUL, which is a federally registered trademark in the United States. In addition, the Complainant has owned and operated its official website, which is connected to the domain name <uhaul.com>, since 1996.

The Complainant has spent substantial time, money and effort over the last fifty years to develop enormous goodwill among its customers and a valuable and hard-earned commercial reputation behind the name U-HAUL. The Complainant has consistently and diligently policed and guarded its name, mark and reputation.

The Respondent is operating nearly identical websites at the domain names that offer information and services regarding both do-it-yourself and professional moving company moves. The websites contain numerous links to competitors of the Complainant such as MoverMax and Shurgard. In addition, the Respondent sells moving accessories at the domain names similar to those sold by the Complainant.

The domain names are confusingly similar to the Complainantís mark U-HAUL because each of the domain names incorporates fully the Complainantís U-HAUL mark. The elements of the domain names that are not identical to the U-HAUL mark are descriptive of the truck and trailer industry, Complainantís principal industry.

The Respondentís use of the domain names misleadingly directs consumers seeking the Complainantís services to the services of Complainantís competitors. The Respondent did not register the domain names until more than fifty years after Complainantís first use of the mark and its federal registration in the United States. In addition, Respondentís trading on the goodwill of the Complainantís mark does not create a legitimate interest in the domain names. Therefore, the Respondent has no legitimate interest in the domain names.

The Respondent has shown bad faith (i) through the mere registration of the domain names incorporating Complainantís famous mark; (ii) through its attempts to attract, for commercial gain, Internet users to the domain names by creating a likelihood of confusion with the Complainantís mark as to the source and affiliation of the websites; (iii) through its offering of moving services at the domain names which has the effect of disrupting the Complainantís business; and (iv) through Respondentís pattern of registering more than one domain name incorporating Complainantís mark.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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.

A. Identical or Confusingly Similar

The Complainantís mark U-HAUL is a federally registered mark in the United States. The Complainantís evidence shows that the mark has been in continuous use for at least fifty years. The mark is a very famous mark in the truck rental and moving fields. The Panel thus finds that the mark is protected by federal and common law.

The Panel further finds that the domain names <uhaulmovingrentals.com> and <uhaulmovingtrucks.com> are confusingly similar to the Complainantís mark. The domain names each consist of three words. Excepting the hyphen, the first word of both domain names is identical to the Complainantís mark U-HAUL. The second and third words of each of the domain names are terms describing the Complainantís principal business and services. Thus, the Panel finds that the domain names are confusingly similar to the Complainantís mark.

B. Rights or Legitimate Interests

The Respondent is not commonly known by either of the domain names and is not a licensee of the Complainant or otherwise authorized to use any of the Complainantís marks. The Respondent has not used the domain names in connection with a bona fide offering of goods or services. The Panel notes that the Respondentís diversion of Complainantís customers to competitors of the Complainant does not qualify as a bona fide offering of goods or services. Thus, a prima facie claim has been made by the Complainant.

The Respondentís failure to submit evidence of its rights or legitimate interests in the domain names allows the inference that the evidence would not have been favorable to the Respondent.

Accordingly, the Panel finds that the Respondent has no legitimate interests or rights in the domain names.

C. Registered and Used in Bad Faith

The Respondent has not demonstrated a good faith use of the domain names. Instead, the Respondent has caused the domain names to resolve to websites which divert Internet users to Complainantís competitors. In essence, the Respondent is trading on the goodwill of the Complainantís mark, for its own commercial gain, by creating a likelihood of confusion with the Complainantís mark as to the source of the domain names. At the domain names, the Respondent sells moving services, the very same services that the Complainant markets and sells, by misleading customers into believing that they are dealing with the Complainant. Such use of the domain names cannot be considered to be in good faith.

Accordingly, the Panel finds that the Respondentís registration and use of the domain names was in bad faith.

 

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 names <uhaulmovingrentals.com> and <uhaulmovingtrucks.com> be transferred to the Complainant.

 


 

Maxim H. Waldbaum
Sole Panelist

Dated: August 4, 2003