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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

U-Haul International, Inc. v. Affordable Web Productions

Case No. D2003-0511

 

1. The Parties

The Complainant is U-Haul International, Inc., Phoenix, Arizona, United States of America, represented by Jeff Whitley, in-house intellectual property counsel at U-Haul International, Inc.

The Respondent is Affordable Web Productions, Fort Lauderdale, Florida, United States of America.

 

2. The Domain Names and Registrar

The disputed domain names <uhaulmovingtruck.com>, <uhaultrailer.com> <uhaultrailerrental.com>, <uhaultrailerrentals.com> and <uhaultruckmoving.com> are registered with eNom.

 

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 eNom a request for registrar verification in connection with the domain names at issue. On July 2, 2003, eNom 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 contacts. 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 9, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was July 29, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2003.

The Center appointed Angela Fox as the sole panelist in this matter on August 7, 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 a long-established moving services company in the United States. It has a fleet of approximately 90,000 trucks and 86,000 trailers which are rented to the public at more than 15,000 locations in the United States and Canada. It claims to process over 11 million rental transactions annually, with net rental revenues exceeding $1 billion. For over fifty years, this business has been carried out under the U-HAUL mark, which has become well-known in the moving services field.

The Complainant is the proprietor of numerous United States federal trademark registrations for U-HAUL and marks incorporating U-HAUL. In particular, the Complainant cites United States federal registrations 123265 U-HAUL on the Supplemental Register, and, on the Principal Register, 176274 U-HAUL Logo, 192877 U-HAUL, 893891 UHAUL Logo, 314131 UHAUL Logo, 1023924 UHAUL HOUSEHOLD MOVING Logo, 1432341 RENT IT ALL AT U-HAUL, 1023923 UHAUL Logo, 1609442 U-HAUL HAS IT ALL, 1965385 1-800-GO-U-HAUL, 1127296 U-MOVE U-STORE and U-HAUL RENTALS Logo, 1127296 U-MOVE U-STORE and UHAUL RENTALS Logo, 1085695 UHAUL MOVING & STORAGE Logo, 1861196 U-HAUL, 2209007 U-HAUL SPORT, and 2262059 U-HAUL MOVING CENTER. All date from 1963 to 1999 and cover mainly truck and trailer rental and moving services.

Since November 1996, the Complainant has also operated a web site at "www.uhaul.com".

These proceedings arose from an email sent to the Complainant by Alfred Moya, President of the Respondent’s organisation, on April 11, 2003. The email read:

"I manage a group of domains related to the moving and relocation industry. Every day I get over 25 requests for truck rental and trailer services. I would like to refer these clients to your company for a flat rate fee. If you are not the decision maker can you forward this request to the proper person."

Research revealed the Respondent’s web page at "www.uhaulmovingtruck.com", which purported to provide information and estimates on moving services. The web site read in part:

"Uhaul Moving Trucks offers information on every type of moving truck rental and free moving truck estimates from professional movers and moving truck rental companies in your area…Our nationwide directory of Uhaul Moving Trucks services and truck rental companies can offer free moving truck and moving trailer quotes in any state or country. From smaller local moves or long distance moving to office moves and corporate relocation Uhaul Moving Trucks can help you with your move."

At the bottom of the page was an advertisement for one of the Complainant’s competitors, and a disclaimer reading, "RyderMovingTruck.com is a project of affordable web productions™ and not affiliated with any Moving Services Company."

This anomalous disclaimer prompted further research, which revealed that the Respondent operated virtually identical web sites at "www.rydermovingtruck.com" and "www.budgetmovingtruck.com". Ryder and Budget are two of the Complainant’s major competitors in the moving services field.

The Complainant sent a cease and desist letter to the Respondent on April 17, 2003. On April 23, 2003, the Respondent advised that it had transferred the <uhaulmovingtruck.com> domain name to an unidentified third party. No such transfer had, however, been recorded as of the date of commencement of this administrative proceeding. Instead, the original web site content was dropped in favour of a new link directly to a complaint web site, at which graphic language was used to criticise the Complainant’s services.

Through further enquiries, the Complainant established that the Respondent had registered four other domain names incorporating the U-HAUL trademark, namely <uhaultrailer.com> <uhaultrailerrental.com>, <uhaultrailerrentals.com> and <uhaultruckmoving.com>. All four were also linked to disparaging content about the Complainant.

The Complainant filed this administrative proceeding seeking transfer of all five domain names on June 26, 2003.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Respondent’s domain names incorporating UHAUL and additional matter relevant to the moving services field are confusingly similar to the Complainant’s U-HAUL trademark for moving services.

The Complainant further contends that the Respondent has no rights or legitimate interests in the domain names. The Complainant’s trademark is well-known and the Respondent was taking advantage of the Complainant’s goodwill in seeking to attract Internet users through a likelihood of confusion. The disclaimer at the end of the site was not enough to avoid confusion. The Respondent’s use was infringing and could not confer a right or legitimate interest under the Policy.

Finally, the Complainant claims that the domain names were registered and used in bad faith. The Respondent had attempted to attract, for commercial gain, Internet users to its web site by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the web site. The Respondent moreover purported to be active in the Complainant’s own field and its confusingly similar domain names were disrupting the Complainant’s activities. The Respondent had further engaged in a pattern of registering domain names incorporating the trademarks of third parties, in an attempt to prevent them from reflecting their marks in corresponding domain names. The Respondent’s overall conduct had evinced nothing but bad faith, culminating with its apparently dishonest and evasive claim to have transferred the <uhaulmovingtruck.com> domain.

B. Respondent

The Respondent did not reply to the case against it and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14 (a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent’s default.

 

6. Discussion and Findings

Under Paragraph 4 (a) of the Policy, a Complainant can only succeed in an administrative proceeding under the Policy if the Panel finds 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 in or legitimate interests to the domain name;

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

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Respondent’s domain names all consist of UHAUL and descriptive nouns pertaining to the moving services industry. The element UHAUL is identical to most of the Complainant’s logo versions of its mark, which do not incorporate a hyphen, and differs from the Complainant’s word mark only by the omission of the hyphen. The presence or absence of this feature does not in the Panel’s view materially alter how the term is perceived.

The additional descriptive matter in the domain name is not enough to avoid the likelihood of confusion arising from use of UHAUL. It is a well-established principle that descriptive or generic additions, and particularly those which designate the goods or services with which a mark is used, do not avoid confusing similarity of domain names and trademarks (as held in, inter alia, Time Warner Entertainment Company L.P. v. HarperStephens, WIPO Case No. D2000-1254, concerning over 100 domain names including <harrypotterfilms.net>). In the present case, the descriptive elements added to the domain names do not simply fail to avoid a likelihood of confusion. In the Panel’s view, they actually increase it, because they all relate directly to the Complainant’s widely known core business in truck and trailer rental and moving services.

Confusing similarity is also evidenced by circumstances suggesting actual confusion, in the more than 25 daily requests which the Respondent claimed to receive for truck rental and trailer services on its "www.uhaulmovingtruck.com" site. Such requests were likely to have been attracted by the use of a domain name which was confusingly similar to the Complainant’s trademark. In the absence of evidence to the contrary, the Panel believes it is a fair inference that many if not all of those requests were intended for the Complainant and its well-known U-HAUL moving business.

The Panel finds that all five domain names are confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has put forward no evidence that it holds a right or legitimate interest in the domain names. The use it has made of the domain names and its dealings with the Complainant must, therefore, speak for themselves.

The Respondent’s unauthorised use of UHAUL in its domain names and particularly on its "www.uhaulmovingtruck.com" web site is a prima facie infringement of the Complainant’s well-known registered trademarks. In the absence of any plausible denial from the Respondent, there can be no reasonable doubt that the Respondent knew about the Complainant’s long-established U-HAUL trademark when it registered the domains and set up its original web site content. Indeed, it is difficult to imagine that any person purporting to offer knowledgeable advice about moving services in the United States would not have been aware of the Complainant’s mark. The Panel infers that the infringement was made with full knowledge and intent.

In Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" (WIPO Case No. D2000-0847), the panel observed that, "use which intentionally trades on the fame of another can not constitute a ‘bona fide’ offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy." In Advance Magazine Publishers, Inc. v. Lisa Whaley (WIPO Case No. D2001-0248), the panel construed this to mean that "intentionally infringing use should not be viewed as bona fide use."

The Panel agrees with the reasoning in these earlier cases. In the Panel’s view, use which is not bona fide cannot give rise to a legitimate interest in a domain name under the Policy. The Respondent’s conduct in knowingly adopting confusingly similar and infringing domain names was not, in the Panel’s view, bona fide use, and was therefore not capable of conferring a right or legitimate interest in the domain names.

The Respondent’s change of web site content to criticism of the Complainant’s services does not improve its position. Indeed, the fact that the content was changed so radically following the Complainant’s cease and desist letter raises its own questions about whether the use as a protest site can be viewed as genuine. In Migros Genossenschaftsbund v. Centro Consulenze Kim Paloschi, (WIPO Case No. D2000-1171), the panel held that to show a right or legitimate interest in a complaint site domain name, a respondent first needed "to demonstrate that the exercise of free speech is the main aim of the registration and use of the Domain Name and that the web site has effectively been used for this purpose." That is clearly not the case where the complaint site is hastily erected to replace prior content following an objection.

Indeed, in the Panel’s view, the Respondent’s eleventh-hour effort to improve its position in this way has done nothing to avail it. The Respondent is of course free to publicise its views on the Complainant’s services. However, such freedom of expression does not incorporate an automatic right or legitimate interest in domain names which are confusingly similar to the Complainant’s trademarks. The use of such domain names entices the public to enter disparaging sites in the mistaken belief that they are those of the Complainant, and employs the Complainant’s trademarks as tools of that damaging deception.

The Panel supports the reasoning set out in Council of American Survey Research Organizations v. The Consumer Information Organization, LLC, aka Pinelands Web Services (WIPO Case No. D2002-0377), in which the majority found that, "The right to criticize is fully enjoyed when expressed on the author’s own web site under a domain name unique to the author…But the right to criticize does not carry with it the right to tarnish another’s mark…by the use of that mark as the domain name for a web site to criticize and disparage the mark and its proprietor." Similar reasoning preceded this in Monty & Pat Roberts, Inc. v. Bill Keith (WIPO Case No. D2000-0299), where the panel observed that, "the right to express one’s views is not the same as the right to use another’s name to identify one’s self as the source of those views."

In this case, the Respondent’s domain names ostensibly suggest that any linked content is that of the Complainant. Members of the public seeking the Complainant’s services are likely to be misled into entering the Respondent’s sites. The graphic criticisms contained on those sites are damaging to the reputation of the Complainant’s trademark and the Respondent is employing a likelihood of confusion to ensure that those genuinely seeking the Complainant’s services are exposed to those criticisms. In line with the reasoning in the cited cases, the Panel does not consider that freedom of speech can confer on the Respondent a right or legitimate interest in these five domain names.

The Panel notes that a disclaimer appeared at the bottom of the Respondent’s original "www.uhaulmovingtruck.com" site. However, given the disclaimer’s low prominence, it is easy to imagine that confusion would not be dispelled since many visitors might never read that far. If they did, they would probably have been puzzled by the fact that the disclaimer referred to a different domain name entirely, <rydermovingtruck.com>. More fundamentally, however, by the time a visitor reached the disclaimer, the damage threatened by the likelihood of confusion with the Complainant’s trademark would already have been done, as Internet users seeking the Complainant’s services will have been diverted to the Respondent’s site.

In The Napoleon Hill Foundation v. Thinkandgrowrich.com (WIPO Case No. D2002-0228) the Panel observed that, "having attracted Internet traffic to his site by trickery, the Respondent cannot resort to disclaimers at the Website, however explicit…to clothe the domain name with legitimacy." Likewise in this case, the Respondent’s disclaimer does not avoid the finding of illegitimacy arising from its intentional use of confusingly similar domain names.

In view of the foregoing, the Panel finds that the Respondent has no rights or legitimate interests in the domain names.

C. Registered and Used in Bad Faith

Prior to the Complainant’s cease and desist letter, at least one of the Respondent’s domain names was used to offer advice and estimates on moving services. As the Respondent held itself out as an authority on moving advice on its "www.uhaulmovingtruck.com" web site, it is difficult to imagine that it could have been ignorant of one of the market leaders in that field in the U.S., where the parties are based. The Respondent’s domain names were confusingly similar to the Complainant’s well-known trademark, and the Respondent sought to profit from the inevitable confusion by seeking referral fees from the Complainant. In the Panel’s view, the Respondent’s conduct manifests an intent to attract, for commercial gain, Internet users to the Respondent’s web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the site. Such circumstances are prima facie evidence of registration and use in bad faith under Paragraph 4 (b) (iv) of the Policy.

The Respondent’s registration and use in bad faith is further evinced by an apparent pattern of registering domain names incorporating others’ trademarks, to prevent those persons from reflecting their trademarks in corresponding domain names. The Respondent has registered five domain names incorporating the Complainant’s trademark, and at least two incorporating well-known trademarks of rival moving services companies. The Respondent has made no case for rights or legitimate interests in any of its domain names, and the Panel has found that it has none.

The registration of as few as two or three domain names has been held to be a pattern of conduct under Paragraph 4 (b) (ii) of the Policy (in inter alia Mr. Christophe Marx v. The Russian House and Mr. Alexander Mandl, WIPO Case No. D2000-1108 and Ourisman Dodge, Inc. v. Ourisman "Okie doke" Dodge dot com and Ourificeman Dodge dot com, WIPO Case No. D2001-0108). The registration of a total of seven domain names incorporating others’ trademarks is in the Panel’s view a pattern of conduct. There is a strong inference, not denied by the Respondent, that the intent was at least partly to prevent the Complainant and others from reflecting their trademarks in corresponding domain names. In the absence of any explanation from the Respondent, the Panel draws that inference and finds evidence of registration and use in bad faith under Paragraph 4 (b) (ii) of the Policy, as well.

The Respondent’s registration and use of these domain names can also fairly be viewed as an attempt to disrupt the business of a competitor. The Respondent described its business as managing a group of domains related to the moving and relocation industry, the field in which the Complainant is active. Such activities would be in competition with those of the Complainant. It seems more likely than not that the Respondent’s confusingly similar domain names were calculated to siphon off the Complainant’s potential customers, in an effort to disrupt the Complainant's business and confer leverage on the Respondent’s demand for referral fees. Such conduct is further evidence of use and registration in bad faith under Paragraph 4 (b) (iii) of the Policy.

In the Panel’s view, the Respondent’s overall conduct manifests bad faith at every turn. In light of the Complainant’s substantial reputation in the moving services field, the Respondent appears to have intended from the start to create a likelihood of confusion which it could exploit for its personal gain through referral fees. When that failed, it exploited the likelihood of confusion by attracting and exposing genuine potential U-HAUL customers to graphic language and criticism of the Complainant’s services when they reached the Respondent’s unauthorised web sites by mistake. The apparently false claim to have transferred the domain names following receipt of the Complainant’s cease and desist letter was evasive and untruthful, the opposite of good faith behaviour.

In light of all this, the Panel finds that all five domain names were registered and used in bad faith.

 

7. Decision

For all the foregoing reasons, and in accordance with Paragraphs 4 (i) of the Policy and 15 of the Rules, the Panel orders that the domain names <uhaulmovingtruck.com>, <uhaultrailer.com>, <uhaultrailerrental.com>, <uhaultrailerrentals.com> and <uhaultruckmoving.com> be transferred to the Complainant.

 


 

Angela Fox
Sole Panelist

Dated: August 18, 2003

 

Источник информации: https://internet-law.ru/intlaw/udrp/2003/d2003-0511.html

 

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