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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

United Van Lines, LLC v. Moving and Storage Association

Case No. D2006-0290

 

1. The Parties

The Complainant is United Van Lines, LLC, Fenton, Missouri, United States of America, represented by Thompson Coburn LLP, United States of America.

The Respondent is Moving and Storage Association, Omaha, Nebraska, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <unitedmover.com> is registered with Intercosmos Media Group d/b/a directNIC.com (“Intercosmos”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2006. On March 8, 2006, the Center transmitted by email to Intercosmos a request for registrar verification in connection with the domain name at issue. On the same date, Intercosmos transmitted by email to the Center its verification response, which confirmed that the Respondent is listed as the registrant and provided the contact details for the administrative, billing, and technical contacts. Despite the confirmation by the registrar that the disputed domain name was under a registrar lock status as of March 8, 2006, the domain name was transferred to another registrar, Schlund und Partner AG, on March 14, 2006. After intervention by the Center, advising the registrar that changing registrars is not allowed during a pending administrative proceeding in accordance with paragraph 8(b) of the Policy, the domain name was re-transferred to the original registrar, Intercosmos, on April 6, 2006.

The Center subsequently 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 April 7, 2006. In accordance with the Rules, paragraph 5(a), the due date for the Response was April 27, 2006. On April 24, 2006, the Respondent submitted its response by email. The Center acknowledged receipt of the Response on April 26, 2006.

The Center appointed D. Brian King as the Sole Panelist in this matter on May 8, 2006. The Panel finds that it was properly constituted. The Sole Panelist 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, United Van Lines, LLC, is a Missouri company engaged in the moving services industry. The Complainant has been active in this market in the United States since 1928, and has been known as United Van Lines since 1933. As from at least 1957, the Complainant has continuously used the UNITED mark in connection with its business. The Complainant has a strong market position in the United States, holding approximately 30% of the moving services market there. It has more than 500 agents across the US and another 550 agents in 135 nations around the world.

Between 1977 and 2002, the Complainant acquired five US trademark registrations for a family of marks using the word “united”, four of which were registered in relation to moving and trucking services (see Exhibit O to the Complaint). The Complainant is also active in marketing its services on the Internet, primarily through its website “www.unitedvanlines.com”. Furthermore, many of the Complainant’s authorized agents make use of the UNITED mark in Internet advertising and elsewhere.

The Respondent, Moving and Storage Association, is a Nebraska company that allegedly offers advice on and access to moving services through the Internet.

The disputed domain name was registered on June 23, 2002. The initial registrant was a company called I.D.S. International Inc. (“I.D.S.”), with the Respondent being listed as the registrant on the Whois database only from sometime between mid-2005 and January 2006. The Complainant asserts that the Respondent is closely affiliated with the initial registrant, an assertion borne out by the fact that the email address of the administrative contact of I.D.S. is the same as that of the Respondent (see Exhibit F to the Complaint), as well as by the Respondent’s own statement that it registered the disputed domain name on June 23, 2002 (Response, paragraph 8). Notably, that date was subsequent to the registration of all five of the Complainant’s UNITED trademarks.

At the time the Complaint was filed, the disputed domain name linked to a website offering advice on moving services and links to various moving companies, many of which compete with the Complainant (see Exhibits M and N to the Complaint).

 

5. Parties’ Contentions

A. The Complainant

The Complainant stresses throughout its Complaint that it owns registered trademarks for the mark UNITED, which have been registered in connection with moving services. It further emphasizes – uncontradicted by the Respondent – that it never licensed or otherwise authorized the Respondent to make use of its mark.

Much of the Complaint is directed to providing a history of events that assertedly occurred in relation to the disputed domain name. In April 2005, the Complainant learned that moving cost estimates and other moving-related information were being offered on the “www.unitedmover.com” website. The Complainant asserts that the term “united mover” was being displayed prominently on the website in a font nearly identical to that used by the Complainant for its UNITED mark – an assertion borne out by the record (See Exhibit E to the Complaint).

The Complainant’s counsel subsequently sent cease and desist letters to the then-listed registrant of the disputed domain name and to the company hosting the website (Exhibits G and H to the Complaint). This culminated in a response from Freeservers (the hosting company) dated June 28, 2005, in which it advised the Complainant’s counsel that the allegedly infringing materials on the “www.unitedmover.com” website had been removed.

The Complainant claims to have been contacted subsequently by an individual named Seymour, who stated that he controlled the “www.unitedmover.com” web site, that the site was currently for sale and that he was willing to sell it to the Complainant for US$ 500. The Complainant did not accept Seymour’s offer.

In January 2006, according to the Complainant, it learned that the website was again active and offering moving-related services. The site contained links to moving companies in competition with the Complainant and allowed third parties to place advertisements on the site (Exhibits M and N to the Complaint).

On the basis of the foregoing, the Complainant argues – in summary – as follows. The disputed domain name is identical or confusingly similar to its registered and widely recognized trademark UNITED. Indeed, the disputed domain name wholly incorporates the Complainant’s mark. The addition of the descriptive term “mover” in no way eliminates the potential for confusion, according to the Complainant. On the contrary, that addition enhances the likelihood of consumer confusion because “mover” describes the very services that the Complainant offers in the market.

The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the domain name. According to the Complainant, the Respondent has not been licensed by it, nor has the Respondent otherwise acquired any right in the mark. At the same time, the Respondent was on actual or at least constructive notice of the Complainant’s rights in the mark, based upon, inter alia, the Complainant’s trademark registrations. The Complainant asserts that the Respondent is not commonly known by the name “united mover” and notes that, according to current US Patent and Trademark Office records, no applications or registrations have been submitted by the Respondent for marks using the word UNITED. It follows, per the Complainant, that far from having a legitimate interest in the disputed domain name, the Respondent’s only possible purpose in registering and using it is to attempt to profit commercially by trading off of the Complainant’s goodwill in the moving industry. The Complainant further cites the alleged offer from “Seymour” as evidence of the Respondent’s lack of any legitimate interest in the disputed domain name.

Finally, the Complainant asserts that the domain name was registered and being used in bad faith. In this respect, the Complainant asserts that Paragraphs 4(b)(iii) and (iv) of the Policy apply to the current case. The Complainant alleges that the Respondent must have been aware of the Complainant’s rights in the UNITED mark at the time the domain name was registered. Subsequently, the Respondent has acted with other parties to disrupt the Complainant’s business by attempting to obstruct the Complainant from protecting its rights in the UNITED mark (through the offer made by “Seymour” and the transfer of registration of the disputed domain name after the Complainant’s counsel sent cease and desist letters). Furthermore, the Complainant asserts that the Respondent, through the links on its website, infringes the trade dress of the Complainant’s affiliated company Mayflower Transit, and moreover promotes the Complainant’s competitors. The Complainant suggests that it can reasonably be inferred that the Respondent is acting for commercial gain, either via payment for the links to other moving companies or by offering third parties the possibility to post advertisements on its site. Thus, according to the Complainant, the Respondent is using the disputed domain name to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s registered mark.

The Complainant requests the Panel to issue a decision that the contested domain name be transferred to it.

B. The Respondent

The Respondent argues – in summary – that the term “united” is a common, everyday word in the English language, which has the ordinary meaning “combined”, or “harmonious”. The Respondent stresses that the term is used by many well-known businesses and associations, the use of it having supposedly increased due to patriotic sentiments after the 9/11 events. Therefore, contends the Respondent, consumers would not automatically associate the term “united” with the Complainant and its service mark. All that the Respondent has done, it suggests, is to register two common, everyday words from the English language, namely “united” and “mover”, to create the properly registered domain name <unitedmover.com>.

Furthermore, the Respondent alleges that it has rights or legitimate interests in respect of the disputed domain name. The Respondent states that it registered the domain name on June 23, 2002, and has continually renewed it from that time. It uses the domain name to maintain a web page that offers moving services, which, according to the Respondent, constitutes a bona fide offering of goods or services; or alternatively, a legitimate noncommercial or fair use of the term “united”. The Respondent asserts that there is nothing on the website that would divert consumers from the Complainant or tarnish the Complainant or the UNITED mark.

Furthermore, the Respondent contends that the domain name was not registered and is not being used in bad faith. The Respondent says that it did not acquire the domain name with the intent of offering it for sale to the Complainant and denies the existence and actions of a person named Seymour. Furthermore, the Respondent states that it has not registered the domain name in an attempt to prevent the Complainant or others from obtaining a domain name corresponding to their trademarks; in this regard, the Respondent notes that the words “united mover” in combination with several different suffixes such as .biz, .org and .net are still available for registration. Furthermore, the Respondent claims, there is no mention of the Complainant on the Respondent’s website, which would imply that the Respondent did not register the domain name for the purpose of disrupting the business of a competitor. Finally, the Respondent denies using the disputed domain name to attract internet users for commercial gain by creating a likelihood of confusion with the Complainant’s mark. Nothing on its website suggests a link with the Complainant, the Respondent asserts, and the format and colors used neither copy those used by the Complainant in connection with its mark nor mimic the trade dress of the Complainant’s affiliates.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove each of the following elements:

(i) The disputed 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 disputed domain name; and

(iii) The Respondent has registered and is using the disputed domain name in bad faith.

The Complainant carries the burden of proof on each of these elements. See Do the Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624 (August 21, 2000). They will be examined in turn below.

A. Identical or Confusingly Similar

The Panel finds that the Complainant holds rights in the UNITED mark as registered in connection with moving-related services. Indeed, the Respondent does not contest this.

The fact that the word “mover” is added in the disputed domain name does not eliminate the similarity between that name and the Complainant’s trademark, as “mover” is a description of the Complainant’s activities. The addition of such a descriptive component may even add to the confusing similarity by strengthening the suggested affiliation with the Complainant created by the incorporation of the Complainant’s mark into the disputed domain name. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin, WIPO Case No. D2003-0888 (January 6, 2004). The fact that “united” and “mover” could be characterized as generic terms is irrelevant under the first element of the Policy in the circumstances here. There is no question on the record but that UNITED is a widely recognized and registered mark closely associated with the Complainant’s moving business, at least in the United States where both parties to this proceeding are domiciled.

Therefore, the Panel finds the first element of paragraph 4(a) of the Policy to be established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three non-exhaustive circumstances that, if found by the Panel to be present, demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. The Complainant asserts, and the Panel finds – taking into account the arguments and evidence presented by both parties – that neither these nor other circumstances showing rights or legitimate interests on the Respondent’s part are present here.

The Panel concludes, firstly, that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. At the time of the registration of the domain name on June 23, 2002, and on all dates thereafter, the Respondent had at least constructive knowledge of the Complainant’s rights in the mark UNITED in connection with moving services, based upon the Complainant’s trademark registrations. See Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (March 10, 2000); The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, WIPO Case No. D2003-0305 (June 18, 2003). Indeed, given the Complainant’s extensive market share in the moving services market in the United States, it is probable that the Respondent had actual knowledge as well. Accordingly, the Respondent’s registration and use of the disputed domain name, albeit for commercial purposes, is not bona fide within the meaning of paragraph 4(c)(i) of the Policy. See Reed Elsevier Properties, Inc. et al. v. Weekly Publishers, NAF Case No. 151536 (May 5, 2003); Reed Elsevier, Inc. et al. v. Carlos M. Alvarez d/b/a IT Lexis, NAF Case No. 98249 (August 20, 2001); Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052 (February 27, 2005).

Paragraph 4(c)(ii) of the Policy cannot apply here either. There is no evidence in the record that the Respondent has been commonly known by the name “united mover”. Notably, the names of the companies that have appeared as registrants of the disputed domain name (I.L.S. and Moving and Storage Association) bear no meaningful resemblance to the disputed domain name. Nor is there evidence of any use of the disputed name by the Respondent in commerce prior to the time that the Respondent was on actual or constructive notice of the Complainant’s trademark rights.

Equally unavailing for the Respondent is paragraph 4(c)(iii) of the Policy. The Respondent’s use of the domain name is decidedly commercial – given the subject website’s links to companies competing commercially with the Complainant – and thus the “non-commercial or fair use” provision contained in that paragraph has no application here. Further, the Panel notes that currently the website of the disputed domain name is used to display some sponsored links unrelated to moving services.

In sum, the Panel finds that none of the circumstances specified in paragraph 4(c) of the Policy, as evincing legitimate rights and interests, is present in this case. Nor is there evidence of any other circumstance showing the existence of such rights or interests on the Respondent’s part. Accordingly, the Panel finds the second element of the Complainant’s case to be established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith use and registration. The Complainant relies principally upon those indicia mentioned under subsections (iii) and (iv) of this paragraph. It further points to the totality of the circumstances as showing registration and use in bad faith. The Respondent denies that it has acted in bad faith.

In order to resolve this point, the Panel need only consider the circumstance described in paragraph 4(b)(iv) of the Policy. Based upon that provision, a finding of bad faith is justified where a party, by using the disputed domain name, has intentionally attempted to attract Internet users to its website, for commercial gain, by creating a likelihood of confusion with the complainant’s mark. Here, the evidence shows this circumstance to be present. The Respondent has used the disputed domain name to promote services in direct competition with those of the Complainant, and to do so has employed a domain name wholly incorporating the Complainant’s mark and confusingly similar to it. The commercial nature of the services offered or linked to on the website demonstrates sufficiently that the Respondent’s motive in doing so is commercial gain. Indeed, the inference suggested by the Complainant – that the Respondent is attempting to trade off of the Complainant’s goodwill in its registered UNITED trademark – is more than justified on the evidence here.

Accordingly, the Panel concludes that the Complainant has succeeded in showing bad faith on the part of the Respondent.

 

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 disputed domain name, <unitedmover.com>, be transferred to the Complainant.

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D. Brian King
Sole Panelist

Dated: May 22, 2006