NATIONAL ARBITRATION FORUM DECISION (ALEX SANDLER AND DAUGHTER SIMA SCAM CAREY LIMO ) Carey International, Inc

. d/b/a Manhattan International Limousine Network Ltd v. Alex Kogan (successor Sima Sandler) Claim Number: FA0505000486191 PARTIES Complainant is Carey International, Inc. ("Complainant"), represented by Sara L. Edelman, of Davis & Gilbert LLP, 1740 Broadway, New York, NY 10019. Respondent is Sima Sandler ("Respondent"), represented by David J. James, 1325 Fourth Avenue, Suite 600, Seattle, WA 98101. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <careyglobal.com>, <careyus.com>, and <manhattanlimo.com>, registered with Domaindiscover. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Calvin A. Hamilton as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 31, 2005. On June 1, 2005, Domaindiscover confirmed by e-mail to the National Arbitration Forum that the domain names <careyglobal.com>, <careyus.com>, and <manhattanlimo.com> are registered with Domaindiscover and that the Respondent is the current registrant of the name. Domaindiscover has verified that Respondent is bound by the Domaindiscover registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On June 3, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 23, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@careyglobal.com, postmaster@careyus.com, and postmaster@manhattanlimo.com by e-mail. A timely electronic copy of the Response was received on July 5, 2005. However, since the hardcopy form of the Response was not received until after the deadline for response, the National Arbitration Forum considers the Response to be deficient and not in compliance with ICANN Rule #5(a). A timely Additional Submission was received from Complainant on July 11, 2005. No reply to Complainant's Additional Submission was submitted by Respondent. On July 12, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist. On July 20, 2005, the Panel ordered that the time period for issuing its Decision be extended until July 29, 2005. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. Respondent requests a finding that Complainant has engaged in reverse domain name hijacking and that the remedy requested by Complainant be denied. PARTIES' CONTENTIONS A. Complainant In relation to Policy ¶ 4(a)(i), Complainant, Carey International, Inc., contends that Respondent's <careyglobal.com> and <careyus.com> are both identical and confusingly similar to Complainant's CAREY trademark and that Respondent's <manhattanlimo.com> is also identical and confusingly similar to

both Complainant's MANHATTAN LIMOUSINE common law trademark and its MANHATTAN INTERNATIONAL registered trademark. In relation to Policy ¶ 4(a)(ii), Complainant contends that Respondent has no rights or legitimate interests in respect of <careyglobal.com>, <careyus.com> or <manhattanlimo.com> as Respondent's domain names are not in connection with a bona fide offering of goods or services, nor is Respondent commonly known by this name, nor is Respondent making a legitimate noncommercial or fair use of the domain name. Complainant contends that Respondent is plainly using all three domain names for the sole purpose of deceiving the public in order to gain a commercial advantage. In relation to Policy 4(a)(iii), Complainant contends that Respondent registered and is using domain names in bad faith by luring customers who are looking for CAREY and MANHATTAN brand transportation services and then misdirecting those customers into purchasing its own competing services. B. Respondent Sima Sandler, against whom the Complaint was initiated, filed no Response. However, Alex Kogan filed a Response as successor to Sima Sandler which was received by the Forum as indicated above. That Response makes the following assertions: Respondent contends that Complainant fails to prove all three elements of the Policy therefore failing to meet the burden of proof. In relation to Policy ¶ 4(a)(i), Respondent makes no response to the arguments of Complainant in relation to Carey. However, Respondent contends that the domain name <manhattanlimo.com> is not identical or confusingly similar to a mark in which Complainant has rights. This is due to the fact that Complainant has no registered rights in the marks MANHATTAN LIMOUSINE, MANHATTANLIMO or MANHATTAN, nor can any common law rights be established due to lack of evidence of secondary meaning of the mark and the fact that MANHATTAN LIMOUSINE has no web presence. In relation to Policy ¶ 4(a)(ii), Respondent contends that he has rights or legitimate interests in the domain names in accordance with Policy ¶ 5(c) as he has used these domain names in connection with a bona fide offering of services before receiving any notice of this dispute and

any interest Complainant may have in the terms MANHATTAN LIMOUSINE or MANHATTAN is at best weak. Respondent contends that he has also been commonly known by the domain name since June 1, 2003. In relation to Policy 4(a)(iii), Respondent contends that he has not registered or used the domain name in bad faith and that the Complainant fails to meet the burden of proof by providing convincing evidence to demonstrate Respondent's bad faith at the time of registration of the domain name <manhattanlimo.com> and Respondent has not used domain names to intentionally attempt to attract for commercial gain, Internet uses to its websites by creating confusion with Complainant's marks. Respondent contends that Complainant is involved in Reverse Domain Name Hijacking by using the Policy "in bad faith to deprive a registered domain name holder of a domain name." C. Additional Submissions Complainant contends that Respondent has conceded Complaint's rights by not disputing Complainant's arguments over the domain names <careyglobal.com> and <careyus.com>. In relation to Policy ¶ 4(a)(i), Complainant contends that it owns sufficient trademark rights in MANHATTAN INTERNATIONAL, MANHATTAN and MANHATTAN LIMOUSINE to challenge the domain name <manhattanlimo.com>. Complainant's registration of MANHATTAN INTERNATIONAL confers strong rights in MANHATTAN INTERNATIONAL and MANHATTAN and Complainant's long use of MANHATTAN LIMOUSINE and MANHATTAN confers strong rights in both marks. The strong nature of these trademarks means that they do not have to be exactly identical to Respondent's <manhattanlimo.com> domain name in order to satisfy Policy ¶ 4(a)(i). In relation to Policy ¶ 4(a)(ii), Complainant contends that Respondent lacks any rights or legitimate interests in any of the domain names. Even if Respondent had used trade name <manhattanlimo.com> for bona fide services since June 2003, such use would not have been sufficient for the domain name to become "commonly known". In relation to Policy ¶ 4(a)(iii), Complainant contends from everything stated in its Complaint and Additional Submission that Respondent has demonstrated overwhelming bad faith in an attempt to attract customers away from Complainant's services towards Respondent's.

Complainant contends that it has not engaged in reverse domain name hijacking of the domain name <manhattanlimo.com> and Respondent has failed to satisfy any of the prima facie elements for such a claim. FINDINGS The Panelist first addresses the procedural issues of the identity of Respondent and the timing of the Response. ICANN Rule 1 defines "Respondent" as "the holder of a domain-name registration against which a complaint is initiated". In Wells Fargo & Co. v. John Doe as Holder of Domain Name, FA 362108 (Nat. Arb. Forum Dec. 30, 2004), the Panel found that "the Policy and Rules anticipate that the 'holder' of a domain name registration will be the individual or entity listed in the WHOIS information." The WHOIS information is a database compiled of the actual domain name registration information given to the respective registrars. The WHOIS record for the disputed domain names identified Sima Sandler, not Alex Kogan, as the holder of the domain names on June 1, 2005. As stated above, the Response was submitted in representation of Alex Kogan as successor to Sima Sandler. In that Response, it was stated, in Annex C, points 12 and 13, that the administrative and technical contacts for the disputed domain names have been changed recently, that the new contact is Alex Kogan, that Alex Kogan is a cousin of Alexander Sandler, that Alexander Sandler is the person with control over the disputed domain names and that Alexander Sandler is the father of Sima Sandler. No evidence other than Annex C, a non-party declaration by Alexander Sandler, has been provided to support these claims. In its Additional Submission, Complainant challenged the admissibility of the aforementioned declaration but cites a UDRP Panel Decision that does not establish the precedence Complainant wishes to rely on. The question of Alex Kogan's standing in this Dispute, however, has not been challenged by Complainant and is therefore deemed to have ius standi. In Imperial Coll. of Science, Tech. & Medicine v. Webweaver Media Constr., D2000-1146 (WIPO Nov. 22, 2000), a third party, who filed a Response, had the rights and legitimate interests of the respondent considered, particularly because the complainant raised no objection to the claimed interest of the respondent as beneficial owner of the domain name at issue and to the submission of a Response to the Complaint on that basis. In these unique circumstances, the Panel has performed a WHOIS Lookup. The results of that search are as follows:

As last updated on June 24, 2005, the Registrant of the domains <careyus.com> and <careyglobal.com>, registered through DomainDiscover, is Alex Kogan, 98 Gonta Street, Vinnitsa, Ukraine 28600, UA. This address is not the same as the one stated in the Response in the section Respondent Information. The domain <manhattanlimo.com> is no longer registered through DomainDiscover. A wider WHOIS search revealed that <manhattanlimo.com> is registered with Registrar, NETWORK SOLUTIONS, LLC., and was updated on June 10, 2005. Although this information was available to Complainant prior to submitting their Additional Submission, they made no contentions in this respect. Additionally, Complainant has made no directions to the Panel about the admissibility of the Response given that the hardcopy form of the Response was not received until after the deadline for response and thus not conforming to ICANN Rule #5(a). A timely electronic copy of the Response was received and Complainant has had full opportunity to submit an additional submission in response to the Response and has not been prejudiced in any way by the untimely reception of the hardcopy form of the Response. For these reasons, the Panel, exercising its discretion, determines to consider the untimely Response in ruling on this matter. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21, 2000) (finding that any weight to be given to the lateness of the response is solely in the discretion of the Panelist); see also J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where the respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, "[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight"); see also University of Alberta v. Katz, D2000-0378 (WIPO June 22, 2000) (finding that the Panel may consider the response which was one day late and received before Panelist was appointed); see also Strum v. Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21, 2002), (finding that declaring a response inadmissible because of formal deficiencies would be an extreme remedy not consistent with the basic principles of due process). Turning to the substantive issues of the present proceeding, Complainant owns and operates a leading chauffeured services

company. Complainant started its chauffeured services in 1921 when founder J.P. Carey established the first limousine company. Complainant has a global service network having started offering its services internationally in 1977. In this period of time, Complainant registered its CAREY mark with governments in 25 countries, the earliest of which appears to date from 1978 registered with the U.S. Patent and Trademark Office ("USPTO") and uses their CAREY name and mark to identify its goods and services. Complainant also holds numerous registrations of domain names incorporating the CAREY trademark such as <careyusa.com>, <careyeurope.com> and <careynewyork.com>. Complainant also claims to own "Manhattan International Limousine Network Ltd.". This company was incorporated in New York in 1978 and is the owner of the service marks MANHATTAN INTERNATIONAL registered June 22, 1999 and September 1, 1999, for the service of transportation of passengers and goods by limousines and other vehicles. Complainant also claims to have a common law trademark of MANHATTAN LIMOUSINE since, during its twenty-seven years of operations, the general public have come to know the aforementioned enterprise by its abbreviated form of MANHATTAN LIMOUSINE or MANHATTAN and that enjoys rights over MANHATTAN and MANHATTAN LIMOUSINE. Respondent acquired the disputed domain name <manhattanlimo.com> on April 1, 2002 and registered the other disputed domain names <careyus.com> on October 5, 2004 and <careyglobal.com> on October 24, 2004. The disputed domain names offer and advertise limousine services. The websites at <careyus.com> and <careyglobal.com> (Complaint, Exhibit F) read "Carey Limo International, providers of quality limousine services to New York since 1975" and "From New York to Los Angeles and Toronto to Amsterdam, Carey Limo International has been providing best in class limousine services since 1995. View our wide array of vehicles and rates in our service areas or contact a Carey Limo International rep today." The website at <manhattanlimo.com> would appear to be almost identical except the name of Carey Limo International is substituted for "Manhattan Limousine". DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred: (i) the domain name registered by the Respondent 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. Identical and/or Confusingly Similar Domain names <careyus.com> and <careyglobal.com> Complainant's numerous registrations for its CAREY mark throughout the world are sufficient to establish Complainant's rights in the CAREY mark under the Policy 4(a)(i). See Janus Int'l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark). Respondent has failed to challenge Complainant's assertions over its rights in the CAREY mark. The domain names <careyus.com> and <careyglobal.com> fully incorporate Complainant's mark adding the generic or descriptive term "global" to the <careyglobal.com> domain name, the geographic indicator "us" to the <careyus.com> domain name and the generic top-level domain name ".com" to both. These minor alterations to Complainant's registered mark are insufficient to differentiate Respondent's domain names pursuant to Policy ¶ 4(a)(i). Moreover Complainant has already registered the domain names <careyusa.com> and <careyeurope.com> as well as many others combining geographic or descriptive terms with their trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also State Farm Mutual Automobile Insurance Company v. J Lee, FA 436815 (Nat. Arb. Forum April 21, 2005) (finding that the addition of the geographic term "usa"

to the complainant's STATE FARM mark does not remove the respondent's <statefarmusa.com> domain name from the realm of confusingly similar with respect to the complainant's); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent's registration of the domain name <net2phone-europe.com> is confusingly similar to the complainant's mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the complainant's VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where the respondent added the word "India" to the complainant's mark). Thus the domain names <careyus.com> and <careyglobal.com> registered by Respondent are confusingly similar to Complainant's CAREY mark and the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) in relation to these domain names. Domain name <manhattanlimo.com> It has been found that "Manhattan International Limousine Network Ltd.", incorporated in New York in 1978, owns the service mark MANHATTAN INTERNATIONAL first registered June 22, 1999. No evidence has been submitted to support Complainant's contentions of its ownership of said company nor has this issue been challenged by Respondent. On the understanding therefore that Complainant is indeed the owner of the aforementioned company, Complainant consequently has rights in the service mark MANHATTAN INTERNATIONAL in accordance with Policy ¶ 4(a)(i). The domain name <manhattanlimo.com> is not identical to the aforementioned registered composite service mark. The analysis does not end here. It must be considered whether the Domain Name is confusingly similar to the MANHATTAN INTERNATIONAL mark. Complainant asserts that consumers are likely to be confused by Respondent's use of <manhattanlimo.com>. Respondent argues that the Domain Name is not confusingly similar to Complainant's mark. The Panel therefore turns to that question. The domain name may not appear at first to be confusingly similar to the Complainant's registered service mark MANHATTAN INTERNATIONAL but Complainant additionally contends that they have common law trademark rights in MANHATTAN and MANHATTAN LIMOUSINE in connection with its limousine and transportation-related

services. Since 1978, in the New York area, Complainant asserts to have "expended considerable money, time and effort to grow and promote its Manhattan transportation business…Indeed, Manhattan [International Limousine Network Ltd] has been awarded the "World Travel Group Award" for the "Best Chauffeur-Driven Limousine Company in the World." Complainant submitted as evidence office materials (business card, invoice, order form, etc.) showing the use of these terms and has shown that they are the holder of the domain name <manlimo.com> since 1996. Complainant claims that their continuous use of the terms MANHATTAN LIMOUSINE and MANHATTAN are sufficient to demonstrate the marks' secondary meaning and thereby establish Complainant's enforceable rights in these marks. Indeed, registration is not the only permissible source of trademark or service mark rights under the UDRP. To quote once again the much quoted in UDRP Panel Decisions McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000), the ICANN dispute resolution policy is "broad in scope" in that "the reference to a trademark or service mark 'in which the complainant has rights' means that ownership of a registered mark is not required - unregistered or common law trademark or service mark rights will suffice" to support a domain name complaint under the policy; also see MatchNet PLC. v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (citing British Broadcasting Corp. v. Renteria, D2000-0050 (WIPO Mar. 23, 2000)) (noting that the UDRP "does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names" and applying the UDRP to "unregistered trademarks and service marks"). Panels interpreting the UDRP have consistently held that the Policy affords protection to those having common law trademark rights as well as to those having rights in registered trademarks. See Cedar Trade Assocs., Inc., v. Ricks, FA 93633 (Nat. Arb. Forum Feb. 25, 2000); see also Bennett Coleman & Co. Ltd. v. Lafwani, D2000-0014 (WIPO Mar. 11, 2000) ("it is this reputation from actual use which is the nub of the complaint, not the fact of registration as trade marks."). Many of the cases in which common law trademark rights are asserted have involved personal names that have, through use and publicity, acquired the distinctiveness necessary to become trademarks or service marks: see Stam v. Cohen, D2000-1061 (WIPO Nov. 4, 2000); see also MPL Communications Ltd. v. Hammerton, FA 95633 (Nat. Arb. Forum Oct. 25, 2000); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000); see also Estate of Francis v. Magidson Fine Art, Inc., D2000-0673 (WIPO Sep. 27, 2000); see also Adu v. Quantum Computer Servs. Inc., D2000-0794 (WIPO Sep. 26, 2000); see also Rattner v. BuyThisDomainName, D2000-0402 (WIPO July 3, 2000); see also Monty

and Pat Roberts, Inc. v. Keith, D2000-0299 (WIPO June 9, 2000); see also Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000); see also Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that ICANN Policy does not require that the complainant have rights in a registered trademark and that it is sufficient to show common law rights); see also Dustin N. Diamond v. Goldberg, FA 237446 (Nat. Arb. Forum Apr. 5, 2004); see also Bibbero Systems, Inc. v. Tseu & Assoc., FA 94416 (finding common law rights in the mark BIBBERO as the complainant, Bibbero Systems, Inc. had developed brand name recognition with this term by which the complainant is commonly known). Just as in the above cited cases, Complainant may enjoy common law trademark rights in MANHATTAN if that service name has acquired a "secondary meaning". Secondary meaning means that although a name (whether a personal name or a product or service name) or a design is not a registered mark, the public has come to associate that name or design with a particular person or company or goods or services. Secondary meaning is defined as "the consuming public's understanding that the mark, when used in context, refers not to what the descriptive word ordinarily describes, but to the particular business that the mark is meant to identify." Secondary meaning therefore refers to the manner in which a consumer identifies a specific business or a business's reputation by a particular trademark. By secondary meaning, one is referring to the capacity of a mark in the relevant consumer marketplace to identify and distinguish a particular business or source. Initially, the Panel accepts Complainant's contentions that MANHATTAN is the dominant portion of its registered mark MANHATTAN INTERNATIONAL. Furthermore, the Panel accepts Complainant's contentions that in the relevant consumer marketplace, that is, the transportation sector, through long and exclusive use, MANHATTAN serves to identify the source of the services and to distinguish the services of Complainant and of Complainant's subsidiary company from those of others. It was stated in All Packaging Mach. Supplies, Corp. v. Crystal Flex Packaging Corp., D2002-0383 (WIPO July 17, 2002), "although the phrase may be descriptive, it is entitled to protection as a mark based on 20 years of use. As a result of that long use, there is a presumption that the mark has acquired distinctiveness, and Respondent has presented no evidence to rebut that presumption". See Fishtech v. Rossiter, FA 92976 (Nat. Arb. Forum Mar. 10, 2000) (finding that the complainant has common law rights in the mark "fishtech" which it has used since 1982).

Respondent contends that "Manhattan limo" is a combination of a generic description of services offered by Complainant, Respondent and many other businesses, together with a geographic designation of where those services are provided. Although these are common terms, in the context of the transportation sector and particularly chauffeured services, MANHATTAN is no longer a purely descriptive term and it is reasonable that an ordinary user would expect to find Complainant or Complainant's subsidiary company at a website that resolves from the domain name <manhattanlimo.com>. Moreover the content of the website that currently resolves from that domain name is not of a nature to distinguish Respondent's services from those of Complainant's. Additionally, with specific regard to "limo," it is well established that the addition of a generic or descriptive term to an otherwise strong trademark does not necessarily eliminate or even reduce the risk of confusion between the mark and domain name at issue. Indeed several previous panels have concluded that a domain name incorporating both a mark and a term referring to the goods or services sold under that mark may actually be more confusing than a domain name incorporating the mark alone. See Am. Online, No. D2000-1606 ("[t]he addition of a word like "net," which is a basic term in the IT vocabulary, strengthens the impression that the domain name is associated with or controlled by ICQ"); see also State Farm Mut. Auto. Ins. Co. v. All Phase Builders, FA 99608 (Nat. Arb. Forum, Oct. 11, 2001) (finding confusing similarity between STATE FARM and <statefarm-claims.com>); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO, Jan. 29, 2001) (concluding that the addition of terms like PIER increased the likelihood of confusion because the complainant's mark was in the field of piering services); see also Advance Magazine Publishers Inc. v. Buy This Domain, D2002-0803 (WIPO Nov. 1, 2002) ("if anything, the inclusion of 'mag' may tend to heighten Internet users' confusion in differentiating between" <vougemag.com> and the VOGUE mark"); see also Gerber Prod. Co. v. Cybertexx.com, FA 257646 (Nat. Arb. Forum June 15, 2004) ("The addition of the generic terms 'baby' and 'foods' to Complainant's GERBER mark only increases the likelihood of confusion, as Complainant is primarily known for its baby food products."). The Panel finds that there would be identification in the minds of the public between the name MANHATTAN and MANHATTAN LIMOUSINE and the person of Complainant and that the use by Respondent of the domain name <manhattanlimo.com> is likely to confuse the public into believing that Carey International or their subsidiary company Manhattan International Limousine Network, Ltd. is related to this domain.

For these reasons, the Panel finds that the Complainant has common law trademark rights in the marks MANHATTAN and MANHATTAN LIMOUSINE and therefore the domain name <manhattanlimo.com> registered by Respondent is confusingly similar to these common law trademarks and to Complainant's registered service mark MANHATTAN INTERNATIONAL. In conclusion, the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i) in relation to this domain name. Rights or Legitimate Interests Policy ¶ 4(c) sets forth the manner in which a Respondent may establish rights to and legitimate interests in a domain name. It provides that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate Respondent's rights or legitimate interests to the domain name for purposes of Policy ¶ 4(a)(ii): (i) that before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or (iii) that the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Complainant has made out a prima facie case that Respondent does not have rights or legitimate interests in respect of the domain names <manhattanlimo.com>, <careyus.com> and <careyglobal.com>. Where Complainant rebuts each of these elements, it has satisfied its burden by providing prima facie evidence against any of the particular claims Respondent could make under Policy ¶ 4(c)(i)-(iii), thereby shifting the burden to Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding where a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is "uniquely within the knowledge and control of the respondent"); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that

once the complainant asserts that the respondent has no rights or legitimate interests in respect of the domain, the burden shifts to the respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name). Respondent does not attempt to establish that he is making a noncommercial use of the domain names and thus the circumstances of Policy ¶ 4(c)(iii) do not apply. In relation to Policy ¶ 4(c)(ii), Respondent does not allege that he has been commonly known by the domain names <careyus.com> and <careyglobal.com> other than those disputed in this section and thus has failed to establish a right or legitimate interest in these domain names on this ground. However, Respondent does allege that he has been commonly known by the domain name <manhattanlimo.com> since approximately June 1, 2003 and that the domain name has been registered as a tradename with the State of Washington. Firstly, the tradename registration is in the name of Alexandler Sandler who is not the Respondent in this proceeding. Secondly, it is necessary for Respondent to have been commonly known by <manhattanlimo.com> before the domain name was registered or acquired in April 2002. It was stated in RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) that "[i]t is clear from the evidence that Respondent was never known by the domain name prior to his registration of it but only thereafter. This Panel interprets Paragraph (ii) to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail. Respondent's showing fails to prove the elements of Paragraph (ii)." See also Compagnie de Saint Gobain v. Com-Union Corp., D20000020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where respondent was not commonly known by the mark and never applied for a license or permission from complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) respondent is not a licensee of complainant; (2) complainant's rights in the mark precede respondent's registration; (3) respondent is not commonly known by the domain name in question). For these reasons, the Panel concludes that Respondent is not commonly known as <manhattanlimo.com> for the purposes of Policy ¶ 4(c)(ii). With regard to whether Respondent has used the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i),

Respondent merely states that he has used the disputed domain names to offer limousine services since approximately August 2003 and approximately October 2004 and that this offering of services is bona fide. However, Complainant contends, and Respondent has provided no evidence to rebut, that Respondent has no commercial or other relationship with Complainant that would allow Respondent to use Complainant's registered trademark CAREY in connection with transportation services. Respondent has no license, agreement or franchise with Complainant. The Panel accepts Complainant's contention to the effect that Respondent's appropriation of the CAREY mark and MANHATTAN marks to market services that compete with Complainant's does not constitute a bona fide offering of services. As it was stated in America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 12, 2000), "it would be unconscionable to find a bona fide offering of services in a respondent's operation of a website using a domain name which is confusingly similar to Complainant's mark and for the same business." See also Pfizer, Inc. v. Internet Gambiano Prods., WIPO Case No. D2002-0325 (finding that because the VIAGRA mark was clearly wellknown at the time of the respondent's registration of the domain name it can be inferred that the respondent is attempting to capitalize on the confusion created by the domain name's similarity to the mark); see also MBS Computers Ltd. v. Workman, FA 96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate interests when the respondent is using a domain name identical to the complainant's mark and is offering similar services); see also United States Postal Service v. Postoffice.com, Inc., FA 96313 (Nat. Arb. Forum March 19, 2001) (finding rights and legitimate interests in the disputed domain name where the respondent had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of services and where the respondent was making a fair legitimate use of the domain name offering an international service to Internet users with a disclaimer of any connection to the complainant). Respondent therefore has not met the burden that is required of him under this section to establish rights or legitimate interests in the domain name. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names; thus, Policy ¶ 4(a)(ii) is satisfied.

Registration and Use in Bad Faith Policy ¶ 4(b) sets forth the circumstances, in particular but without limitation, if found by the Panel to be present, that shall be evidence of the registration and use of a domain name in bad faith for purposes of Policy ¶ 4(a)(iii): (i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the domain name; or (ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location. Moreover, this list is not an exhaustive representation of bad faith conduct and numerous other examples of bad faith behavior have been articulated by previous panel decisions. The Panel may look at the "totality of circumstances" in determining if Respondent's conduct reaches the threshold of bad faith. See Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the "totality of circumstances"). The CAREY mark is, as established above, a widely registered trademark. This trademark registration generally constitutes constructive knowledge of the mark. Registration of the disputed domain names took place in October 2004, when CAREY was a long-

standing trademark and service name around the world. Manhattan International Limousine Network Ltd. has been trading since 1978 and the MANHATTAN INTERNATIONAL service mark was registered in the United States in 1999. Again, when Respondent acquired or registered the domain name in 2002 in order to provide services similar or identical to those of Complainant in similar geographical areas, Respondent knew or should have known of the MANHATTAN marks. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration). Furthermore, Respondent is a competitor of Complainant, operating in the same sector and offering similar services; the Panel in Register.com, Inc. v. Wolfgang Reile, FA 208576 (Nat. Arb. Forum January 27, 2004) determined that "[g]iven that the parties are direct competitors, it stands to reason that either Respondent knew of Complainant at the time the former started registering the disputed domain names or at least should have. It strains one's belief to think that anyone starting a business or offering a new service under a specific name (or here through a domain name) -- as Respondent has done -- would not know his primary competitors. Complainant was clearly one such competitor, particularly a rather large competitor, at the time and for some 3 years prior." In the case before us, Complainant has been in the same market as Respondent for some 70 years prior to the registration of the disputed domain names and is a direct competitor of Respondent. The Panel finds that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor, which evidences bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competed with the complainant's business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent diverted business from the complainant to a competitor's website in violation of Policy 4(b)(iii)). Additionally, the Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly

similar domain name to attract Internet users to its commercial website); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where the respondent registered and used an infringing domain name to attract users to a website sponsored by the respondent). Consequently, Respondent's conduct constitutes bad faith use under Policy ¶ 4(a)(iii). That said, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied. Reverse Domain Name Hijacking Respondent requested the Panel to find that Complainant has engaged in reverse domain name hijacking. See UDRP Rule 1. "Reverse Domain Name Hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." To establish reverse domain name hijacking, Respondent must show knowledge on the part of Complainant of Respondent's rights or legitimate interests in the disputed domain name and evidence of harassment or similar conduct by Complainant in the face of such knowledge. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that to prevail on a claim of reverse domain name hijacking, the respondent must show that the complainant brought the claim in bad faith despite the knowledge that the respondent has an unassailable right or legitimate interest in the disputed domain name, or that the respondent lacks the requisite bad faith registration and use of the disputed domain name). In view of the decision reached in relation to the Complaint, the Panel concludes that Complainant has not engaged in reverse domain name hijacking. DECISION Having established all three elements required under the ICANN Policy in relation to <manhattanlimo.com>, <careyglobal.com> and <careyus.com> domain names, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <manhattanlimo.com>, <careyglobal.com> and <careyus.com> domain names be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist Dated: July 29, 2005

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