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

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

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