DECISION

 

Vacation Publications, Inc. v. e-ventures Worldwide, LLC / Jeev Trika

Claim Number: FA2011001921872

 

PARTIES

Complainant is Vacation Publications, Inc (“Complainant”), Texas, USA.  Respondent is e-ventures Worldwide, LLC / Jeev Trika (“Respondent”), represented by Michael Pogue of Idaho, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <vacations2go.com>, registered with Name.com, Inc..

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on November 24, 2020; the Forum received payment on November 24, 2020.

 

On November 25, 2020, Name.com, Inc. confirmed by e-mail to the Forum that the <vacations2go.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name.  Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. 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 December 2, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@vacations2go.com.  Also on December 2, 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.

 

A timely Response was received and determined to be complete on December 23, 2020.

 

On December 28, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant provides travel services. Complainant has rights in the VACTION TO GO mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,330,100, registered Apr. 9, 1985). See Compl. Ex. IV. Respondent’s <vacations2go.com> domain name is identical or confusingly similar to Complainant’s mark, as Respondent merely replaces the word “to” with the phonetically identical number “2.”

 

2.    Respondents has no rights or legitimate interests in the <vacations2go.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely attempting to pass of as Complainant.

 

3.    Respondent registered and uses the <vacations2go.com> domain name in bad faith. Specifically, Respondent is attempting to pass off as Complainant. Furthermore, Respondent had actual or constructive knowledge of Complainant’s rights in the VACATION TO GO mark at the time of registration.

 

B.   Respondent

1.    Respondent registered the <vacations2go.com> domain name based on the generic attributes of the words used in the domain name. Respondent did not register the disputed domain name in bad faith. Complainant has not proved enough evidence of Respondent’s supposed wrongdoing to meet Complainant’s burden of proof under the UDRP.

 

2.    Complainant should have acted a long time ago stop the alleged abuse of Complainant’s mark, but did not do so and is barred by the doctrine of laches.

 

3.    The <vacations2go.com> domain name was registered by Respondent in 2016.

 

FINDINGS

1.    Respondent’s <vacations2go.com> domain name is confusingly similar to Complainant’s VACATION TO GO mark.

 

2.    Respondent does not have any rights or legitimate interests in the <vacations2go.com> domain name.

 

3.    Respondent registered and used the <vacations2go.com> domain name in bad faith.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

Complainant has rights in the VACATION TO GO mark through its registration of the mark with the USPTO (e.g., Reg. No. 1,330,100, registered Apr. 09, 1985). See Compl. Ex. IV. Registration with the USPTO is sufficient to demonstrate 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).”). Therefore, the Panel finds that the Complainant has rights in the VACATION TO GO mark under Policy ¶ 4(a)(i).

 

Complainant argues Respondent’s <vacations2go.com> domain name is identical or confusingly similar to Complainant’s mark, as Respondent merely replaces the word “to” with the phonetically identical number “2.” Although not argued by Complainant, the disputed domain name also includes the “.com” generic top-level domain (“gTLD”). Replacing a letter with a number and adding a gTLD to a complainant’s mark may not sufficiently distinguish a disputed domain name from the mark under Policy ¶ 4(a)(i). See Oxygen Media, LLC v. Primary Source, D2000-0362 (WIPO June 19, 2000) (finding that the domain name <0xygen.com>, with zero in place of letter “O,” “appears calculated to trade on Complainant’s name by exploiting likely mistake by users when entering the url address”). Therefore, the Panel finds Respondent’s <vacations2go.com> domain name is identical or confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

While Respondent contends that the <vacations2go.com> domain name is comprised of common and generic terms and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark.  See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

 

Rights or Legitimate Interests

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”).

 

Complainant argues that Respondent has no rights or legitimate interests in the <vacations2go.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The Panel notes the WHOIS of record identifies the Respondent as “e-ventures Worldwide, LLC / Jeev Trika” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the <vacations2go.com> domain name as Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

 

Next, Complainant argues that Respondent fails to use the <vacations2go.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is attempting to pass of as Complainant. Using a disputed domain name to deceive Internet users into believing an affiliation exists between a respondent an the complainant may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See ShipChain, Inc. v. 谢东东 / 谢东东, FA 1785189 (Forum June 21, 2018) (“The resolving webpages between Complainant’s and Respondent’s websites are virtually the same. Respondent’s use of the disputed domain name does not confer rights and legitimate interests under Policy ¶¶4(c)(i) and (iii).”). Here, Complainant provides a screenshot of the <vacations2go.com> domain name’s resolving webpage, which has a similar layout and offerings as Complainant’s legitimate site. See Compl. Exs. II and V. Respondent’s webpage duplicates Complainant’s home page and other pages verbatim.  Therefore, the Panel finds Respondent fails to use the <vacations2go.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant argues Respondent registered and uses the <vacations2go.com> domain name in bad faith. Specifically, Respondent is attempting to pass off as Complainant. Registering a disputed domain name for the purpose of deceiving Internet users as to the affiliation between a complainant and the respondent so to disrupt the complainant’s business and attract Internet users for commercial gain may be evidence of bad faith under Policy ¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”). The Panel finds Respondent registered and uses the <vacations2go.com> domain name in bad faith under Policy ¶ 4(b)(iii) and (iv).

 

Finally, Complainant argues that Respondent had knowledge of Complainant’s rights in the VACATION TO GO mark at the time of registering the <vacations2go.com> domain name. The Panel disregards arguments of bad faith based on constructive notice as UDRP case precedent declines to find bad faith as a result of constructive knowledge. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel chooses to determine whether Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name as actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this assertion, Complainant points to its trademark registrations along with the fact that Respondent impersonates Complainant. As such, the Panel determines whether Respondent did have actual knowledge of Complainant’s right in its mark, which would support a finding of bad faith under Policy ¶ 4(a)(iii).

 

Doctrine of Laches

The Panel finds that the doctrine of laches does not apply as a defense, and correspondingly chooses to disregard Respondent’s assertions.  See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequential value); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. 

 

Reverse Domain Name Hijacking

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), or any or all of the elements of Policy ¶ 4(a), and thus has not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <vacations2go.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  January 11, 2021