WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Carey International, Inc. v. Careymontreal.com/Fabrizio Simonetti, Fabio Simonetti/Montreal Limousine Service Fundacion Private WhoIs

Case No. D2013-1463

1. The Parties

The Complainant is Carey International, Inc. of Washington, D.C., United States of America (the “USA”), represented by Gowling Lafleur Henderson, LLP, Canada.

The Respondents are Careymontreal.com/Fabrizio Simonetti of Quebec, Canada; Fabio Simonetti/ Montreal Limousine Service of Quebec, Canada; Fundacion Private WhoIs of Panama, Panama.

2. The Domain Names and Registrars

The disputed domain name <careymontreal.com> is registered with 1API GmbH.

The disputed domain name <carryinternational.com> is registered with Internet.bs Corp.

The disputed domain name <carrymontreal.com> is registered with GoDaddy.com, LLC (the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 19, 2013. On August 19, 2013, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On August 19 and August 20, 2013, the Registrars transmitted by email to the Center their verification responses confirming that the Respondents are listed as the registrants and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on September 12, 2013.

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” 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 Respondents of the Complaint, and the proceedings commenced on September 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 7, 2013. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on October 8, 2013.

The Center appointed James Bridgeman as the sole panelist in this matter on October 21, 2013. 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 operates an international limousine service in more than 60 countries and 550 cities providing chauffeured ground transportation services in association with the CAREY trademark.

The Complainant is the registered owner of the CAREY trademark in 34 national jurisdictions across the world, including Canadian trademark registration number TMA 423, 694 registered on February 25, 1994 and has maintained an Internet presence promoting and providing its services using its domain name <carey.com> as the address of its global website since 2004.

The disputed domain names

- <careymontreal.com> was registered on January 14, 2011 and is registered in the name of Careymontreal.com/ Fabrizio Simonetti;

- <carrymontreal.com> was registered on February 21, 2011 and is registered in the name of Fabio Simonetti/ Montreal Limousine Service; and

- <carryinternational.com> was registered on October 13, 2011 in the name of the privacy service “Fundacion Private WhoIs” which, according to the Complainant, is providing Mr. Simonetti with registration services.

For reasons given below, this Panel has found that the three disputed domain names are held and controlled by the same person namely, Fabrizio (aka Fabio) Simonetti who has availed of a privacy service in relation to the <carryinternational.com> disputed domain name.

In trade-mark infringement proceedings, unrelated to the present Complaint, in the Federal Court of Canada, the Respondent, Fabrizio Simonetti, consented to an order dated December 22, 2009 that restrained him from using the trademark and trade name CAREY (or any trademark or trade name confusingly similar thereto) in association with his wares, services and business.

5. Parties’ Contentions

A. Complainant

On a procedural point, the Complainant submits that it is entitled to bring one set of proceedings in respect of each of the disputed domain names arguing that they are each under the control of the same person.

The Complainant argues that the three disputed domain names are all under the common control of the same person namely Fabrizio (aka Fabio) Simonetti:

In support of this argument the Complainant points to the following information gleaned from the respective WhoIs details and the websites to which the disputed domain names have resolved:

- Fabrizio (Fabio) Simonetti is listed as the Registrant/owner of both <careymontreal.com> and <carrymontreal.com>, using the same email address ([…]@gmail.com);

- In a telephone conversation with Complainant’s counsel on March 9, 2011, Mr. Simonetti acknowledged being the operator of <careymontreal.com> and <carrymontreal.com> and this conversation was noted in a letter sent by the Complainant’s counsel to the Respondent on March 11, 2011;

- The website to which the disputed domain name <careymontreal.com> resolved on February 7, 2011 was almost identical to the website to which the disputed domain name <carrymontreal.com> resolved in 2011, including the phone number provided on the contact page;

- Press releases, each dated November 20, 2010 published on the website to which the disputed domain names <careymontreal.com> and <carrymontreal.com> resolve each have identical text that describes Fabrizio Simonetti as the owner of the respective disputed domain names;

- The contact phone number provided on the websites to which <careymontreal.com> and <carrymontreal.com> is identical to the contact number on the website to which the ccTLD <careymontreal.ca> resolves, and the Complainant has commenced separate proceedings in relation to the ccTLD domain name for which Mr. Simonetti is also listed as the Registrant.

- The website to which the disputed domain name <careymontreal.com> resolved November 1, 2011 is almost identical to the website to which the domain name <carryinternational.com> resolved including the phone number provided on the contact page.

- On February 8, 2008, the Complainant brought a successful complaint against the Respondent in Carey International, Inc. v. Fabio Simon c/o Montreal Limo¹ NAF Claim No. 1124304. The addresses listed in respect of the <carrymontreal.com> and <montrealcareylimo.com> domain name registrations are the same as Mr. Simonetti’s registered business address in 2009.

- All of the above referred websites have been used to promote limousine services in the Montreal area in association with the CAREY trademark, or trademarks confusingly similar thereto.

On March 9, 2011, during a telephone conversation with Complainant’s counsel, Mr. Simonetti acknowledged that it was the operator of <careymontreal.com> and <carrymontreal.com>. The conversation confirmed by the Complainant’s counsel in a letter to the Respondent dated March 10, 2011.

Arguing the substantive issues, the Complainant relies on its rights and goodwill in a large portfolio of trademark registrations for the CAREY mark in numerous jurisdictions across the world including the above-referenced Canadian trademark registration number TMA 423, 694. In Canada, which is the jurisdiction primarily associated with the present Complaint, the Complainant states that it first offered its limousine services in 1982 and the total value of the Complainant’s limousine services in Canada has since grown to an annual turnover of USD 1.5 million since 2006.

The Complainant submits that the disputed domain names are each confusingly similar to the CAREY mark.

The Complainant argues that the disputed domain name <careymontreal.com> incorporates the Complainants CAREY mark in full and is therefore confusingly similar. It further argues that because of its similarity to the Complainant’s mark, the element “carry” and its use in the context of the disputed domain names <carrymontreal.com> and < carryinternational.com> amounts to typosquatting. The Complainant further submits that the descriptive and geographical elements “montreal” and “international” do not distinguish the disputed domain names from the Complainant’s CAREY mark.

For reasons given above, the Complainant further submits that the appropriate Respondent in respect of each of the disputed domain names is one and the same person namely, Fabrizio (aka Fabio) Simonetti, who has no rights or legitimate interest in the disputed domain names. It has not used the disputed domain names in association with any bona fide offering of goods or services. The Respondent has never been known by the disputed domain names; it is not associated with the Complainant; and the Complainant has not licensed or otherwise permitted the Respondent to register the disputed domain names which falsely suggest a connection with the Complainant. The Complainant submits that the disputed domain names were each made to resolve to websites advertising and promoting competing limousine and ground transportation services in association with the CAREY trademarks in an attempt to trade on the goodwill of the CAREY trademark. This also undermines a claim of legitimate interest as use which intentionally trades on the goodwill of another cannot constitute a bona fide offering of goods or service.

The Complainant submits that the Respondent has registered the disputed domain names in bad faith.

Following a cease and desist demand by Complainant’s counsel in 2011 the Respondent temporarily took down the website attached to the disputed domain names <careymontreal.com> and <carrymontreal.com>, but subsequently used them intermittently as the addresses of websites offering limousine and ground transportation services in the Montreal, Québec area in competition with the Complainant.

A cease and desist letter sent by the Complainant to the privacy service registrant of the disputed domain name <carryinternational.com> was successfully delivered by email but delivery could not be effected by courier. The Complainant has not received any communication from “Fundacion Private WhoIs” and the disputed domain name <carryinternational.com> continues to resolve to a website offering such services. The advertised services are in direct competition with the Complainant who also offers limousine and ground transportation services in Montreal. The competing services were advertised in association with the CAREY trademarks. On March 11, 2011, Mr. Simonetti acknowledged by letter that it was in control of the websites to which the disputed domain names <careymontreal.com> and <carrymontreal.com> resolve.

The Complainant submits that the three registrations of the disputed domain names, amount to a pattern of conduct on the part of the Respondents registering the disputed domain names in bad faith. In this regard the Complainant, further states that on October 14, 2012, the Respondent, Fabrizio (aka Fabio) Simonetti also registered the ccTLD domain name <careymontreal.ca> which is the subject of a separate complaint filed with the Canadian Internet Registration Authority (“CIRA”). The ccTLD domain name resolves to a website offering limousine services in association with the trade-marks CAREY LIMOUSINE and MONTREAL CAREY ELITE LIMOUSINE SERVICE and making representations that the business is a member of the “Carey System”.

The Complainant further argues that the Respondent’s behavior amounts to bad faith registration under paragraph 4(b)(iii) of the Policy as registering a domain name for the purpose of disrupting the business of a competitor and that it has intentionally attempted to attract traffic for commercial gain by creating a likelihood of confusion between the Complainant’s CAREY mark and the disputed domain names contrary to paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions, however in a letter from the Respondent to counsel for the Complainant dated March 11, 2011 which was annexed to the Complaint, the Respondent agreed to take down the <careymontreal.com> website of one of the disputed domain names as demanded. The letter also states inter alia as follows: “[…] I would also like to mention carrymontreal.com and the word CARRY may sound similar to Carey however it is a regular dictionary word. Please note that my website carrymontreal.com doesn’t attempt to take any clients or work from carey international (sic). Please note that it is also specified that we are clearly not associated with carey (sic). This can be found at the url “http://carrymontreal.com/news_php”. Please also note that any further action should be taken directly towards me, as I am the sole operator of this website.”

6. Discussion and Findings

In order to succeed in its application paragraph 4(a) of the Policy places on the Complainant the onus of proving that:

(i) the disputed domain names are 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 said domain name; and

(iii) the said domain names have been registered and are being used in bad faith.

A. Procedural Issue: Consolidation

This Panel is satisfied that for the reasons given by the Complainant under Section 5 above, on the balance of probabilities the three disputed domain names are under the ownership and control of the same person and in these circumstances it is appropriate that this single consolidated Complaint should be brought in respect of all three disputed domain name registrations.

B. Identical or Confusingly Similar

The Complainant has established that it is the owner of the CAREY service marks. It has acquired rights in the CAREY marks through registration and at common law through its use in connection with its long established limousine hire business.

The disputed domain name <careymontreal.com> contains the Complainant’s mark in its entirety. The element “carey” is the dominant element of the disputed domain name and the geographical element “montreal” in this context does not serve in any way to distinguish the disputed domain name and mark;

The decision in relation to the other two disputed domain names <carrymontreal.com> and <carryinternational.com> is more difficult. The Respondent has admitted the similarity but denies that the similarity would result in confusion.

The WIPO Overview of Panel Views on Selected UDRP Questions Second Edition (“the WIPO Overview 2.0.”) paragraph 1.2 notes that “[t]he content of a website (whether it is similar to or different from the business of a trademark holder) would usually be disregarded in the threshold assessment of risk of confusing similarity under the first element of the UDRP, although such content may be regarded as highly relevant to assessment of intent to create confusion (e.g., within a relevant market or language group) under subsequent UDRP elements (i.e., rights or legitimate interests and bad faith).”

The element “carry” in the disputed domain names <carrymontreal.com> and <carryinternational.com> has a discrete and different meaning to the Complainant’s mark CAREY. The disputed domain name <carrymontreal.com> is the combination of a commonplace word “carry” and the geographical place-name “montreal” and the same applies to the combination of the elements in <carryinternational.com>.

While the decision is difficult, on balance this Panel finds that both the disputed domain names <carrymontreal.com> and <carryinternational.com> are confusingly similar to the Complainants mark CAREY. In each case the element “carry” and “carey” would be pronounced in a very similar way in the English language with a hard letter “c” there being possibly a slightly different pronunciation of the “a” in each case. Visually, there is only one letter in difference between them. On the balance of probabilities, both disputed domain names were specifically chosen and registered by the Respondent because of the similarity to the CAREY trademark, to take predatory advantage of the Complainant’s goodwill

This Panel finds therefore that the Complainant has satisfied the test in paragraph (a)(i) of the Policy in respect of the disputed domain names.

C. Rights or Legitimate Interests

On the evidence and on the balance of probabilities this Panel finds that the Respondent has chosen and registered the disputed domain names in the knowledge of the Complainants rights and goodwill in the CAREY trademark. The Parties are well known to each other previously, having been engaged in litigation in the Federal Court of Canada in 2009.

The Respondent has arranged for the disputed domain names to resolve to websites that purport to offer services that directly compete with the Complainant. As the Respondent did not submit a Response, it is unclear as to whether the Respondent is actually providing such services or any services at all.

However from the case record the Respondent’s use of the disputed domain names that are confusingly similar to the Complainant’s trademark to offer services that are directly competing with the Complainant’s business cannot be a bona fide use of the disputed domain names. In the circumstances this Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in the disputed domain names and the Respondent has failed to discharge the onus of proving such rights.

This Panel finds therefore that the Complainant has satisfied the test in paragraph (a)(ii) of the Policy also.

D. Registered and Used in Bad Faith

On the evidence before this Panel, the Respondent was aware of the Complainant’s business and its rights in the CAREY trademark when it registered the disputed domain names. It has previously compromised trademark infringement proceedings with the Complainant and agreed to a consent order in the Canadian Federal Court.

Having reviewed the evidence, this Panel finds on the balance of probabilities that the Respondent chose the disputed domain names because of their similarity with the Complainant’s CAREY mark. It proceeded to establish websites to which the disputed domain names resolved with the intention of taking predatory advantage of the Complainant’s reputation and goodwill in the CAREY mark.

It agreed to take down the website at the disputed domain name <careymontreal.com> when challenged by the Complainant’s counsel, but did so only temporarily and subsequently intermittently used the disputed domain name as the address of a website contrary to its agreement.

There is not enough evidence for this Panel to find that the Respondent is actually in competition with the Complainant, however on the balance of probabilities the Respondent is motivated to make a commercial gain in some way because it has invested in the creation of and published substantial websites at the addresses of the disputed domain names. In the circumstances this Panel finds that the Respondent has intentionally attempted to attract traffic for commercial gain by creating a likelihood of confusion between the Complainant’s CAREY mark and the disputed domain names as per to paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <careymontreal.com>, <carrymontreal.com> and <carryinternational.com> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: November 4, 2013

¹ Fabio Simon is also known as Fabrizio Simonetti