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 non-

commercial 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., D2000-
0020 (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 well-
known 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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