Viking River Cruises, Inc. and Viking River Cruises (Bermuda) LTD v. na song / song na
Claim Number: FA2003001887052
Complainant is Viking River Cruises, Inc. and Viking River Cruises (Bermuda) LTD (“Complainant”), represented by Beth M. Goldman of Orrick, Herrington & Sutcliffe LLP, California, USA. Respondent is na song / song na (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hotvikingcruises.com>, registered with DropCatch.com 1378 LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 5, 2020; the Forum received payment on March 5, 2020.
On March 5, 2020, DropCatch.com 1378 LLC confirmed by e-mail to the Forum that the <hotvikingcruises.com> domain name is registered with DropCatch.com 1378 LLC and that Respondent is the current registrant of the name. DropCatch.com 1378 LLC has verified that Respondent is bound by the DropCatch.com 1378 LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@hotvikingcruises.com. Also on March 10, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 1, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
i) Complainant owns and operates river and ocean cruise lines. Complainant has rights in the VIKING CRUISES mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,495,438, registered Mar. 11, 2014). The disputed domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s VIKING CRUISES mark in its entirety, simply adding the generic or descriptive term “hot” and the “.com” generic top-level domain (“gTLD”)
ii) Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not licensed or authorized to use Complainant’s VIKING CRUISES mark and is not commonly known by the disputed domain name. Additionally, Respondent doesn’t use the disputed domain for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain to display various clickbait advertising and other hyperlinks.
iii) Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to attract Internet users to its website for commercial gain. Additionally, Respondent has at least constructive knowledge of Complainant’s rights in the VIKING CRUISES mark.
B. Respondent
Respondent did not submit a response.
1. The disputed domain name was registered on January 15, 2020.
2. Complainant has established rights in the VIKING CRUISES mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,495,438, registered Mar. 11, 2014).
3. Respondent uses the disputed domain name to attract, confuse, and profit from Internet users seeking Complainant’s services.
Paragraph 15(a) of 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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the VIKING CRUISES mark based upon the registration with the USPTO. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides the Panel with a copy of its USPTO registration for the VIKING CRUISES (e.g., Reg. No. 4,495,438, registered on March 11, 2014). Thus, the Panel finds that Complainant has rights in the VIKING CRUISES mark under Policy ¶ 4(a)(i).
Complainant argues that the disputed domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s VIKING CRUISES mark in its entirety, simply adding a generic or descriptive term and a gTLD. Addition of a generic and/or descriptive terms and a gTLD to a mark does not mitigate the likelihood of confusion between a disputed domain name and mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Complainant argues that Respondent merely adds the generic or descriptive term “hot” and the “.com” gTLD to Complainant’s VIKING CRUISES mark. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s VIKING CRUISES mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Respondent does not have rights or legitimate interests in the disputed domain name because Respondent is not licensed or authorized to use Complainant’s VIKING CRUISES mark and is not commonly known by the disputed domain name. When no response is submitted, WHOIS information can be used to show that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See H-D U.S.A., LLC, v. ilyas Aslan / uok / Domain Admin ContactID 5645550 / FBS INC / Whoisprotection biz, FA 1785313 (Forum June 25, 2018) (“The publicly available WHOIS information identifies Respondent as ‘Ilyas Aslan’ and so there is no prima facie evidence that Respondent might be commonly known by either of the [<harleybot.bid> and <harleybot.com>] domain names.”). Additionally, lack of authorization to use a mark constitutes further showing that a respondent lacks rights in a mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The WHOIS information of record lists “Na Song / Song Na” as the registrant and no information suggests that Complainant has authorized Respondent to use the VIKING CRUISES mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to use the disputed domain for a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain to display various clickbait advertising and other hyperlinks. Use of a disputed domain name to direct Internet traffic to a website featuring advertisements and/or links to third-party sites is not a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii). See Hewlett-Packard Co. v. Collazo, FA 144628 (Forum Mar. 5, 2003) (holding that the respondent’s use of the <hpcanada.com> domain name to post links to commercial websites and subject Internet users to pop-up advertisements was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name). Complainant provides screenshots of Respondent’s website and the websites users are redirected to upon interacting with the advertisements and hyperlinks. The Panel agrees with Complainant and finds that Respondent does not use the domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith because Respondent attempts to attract Internet users to its website for commercial gain. Use of a disputed domain name to display pay-per-click hyperlinks and other advertisements relating to commercial goods or services can be evidence of an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant argues that Respondent uses the confusingly similar domain name to attract, confuse, and profit from Internet users seeking Complainant’s services. The Panel recalls that Complainant provides screenshots of Respondent’s website and the websites that can be accessed by way of the links on Respondent’s website. Therefore, the Panel finds bad faith registration and use under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hotvikingcruises.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq. Panelist
Dated: April 13, 2020
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