Travelzoo Incorporated v. OMNI aka Jonathan Murphy
Claim Number: FA0111000102184
The Complainant is Travelzoo Incorporated, Mountain View, CA (“Complainant”) represented by David A. Roodman, of Bryan Cave LLP. The Respondent is Jonathan Murphy OMNI, Altamonte Springs, FL (“Respondent”) represented by Brian M. Mark.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <travelzoom.com> and <travelzoom.net>, registered with Network Solutions.
The undersigned certifies that they have acted independently and impartially and to the best of their knowledge, have no known conflict in serving as Panelist in this proceeding.
M. Scott Donahey, Chair, the Hon. R.Glen Ayers, Jr., and the Hon. Carolyn Marks Johnson sit as Panelists.
Complainant submitted a Complaint to the National Arbitration Forum (“the Forum”) electronically on November 15, 2001; the Forum received a hard copy of the Complaint on November 20, 2001.
On November 19, 2001, Network Solutions confirmed by e-mail to the Forum that the domain names <travelzoom.com> and <travelzoom.net> are registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 5.0 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 November 21, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December11, 2001 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 firstname.lastname@example.org, email@example.com by e-mail.
A timely response was received and determined to be complete on December 11, 2001.
Additional submissions were received late on December 19, 2001.
On December 28, 2001, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the Forum appointed M. Scott Donahey to act as chair of the panel.
The Complainant requests that the domain names be transferred from the Respondent to the Complainant.
Complainant contends that Respondent has registered a domain name that is confusingly similar to complainant's registered service mark, that Respondent must have known of Complainant before beginning a business in the same field as that of Complainant, and that Respondent registered and is using the domain at issue in bad faith.
Respondent contends that it had no knowledge of Complainant or its business at the time it registered the domain name at issue, that it has rights and legitimate interests in respect of the domain name at issue, and that the name was registered is being used in the good faith operation of a legitimate business.
C. Additional Submissions
Paragraph 10(a) of the Uniform Rules gives the Panel broad discretion in the conduct of the proceeding. Although the Panel believes that the supplemental submissions add little, if anything, to the facts necessary to this decision, the Panel elects to exercise its discretion to receive and consider the supplemental submissions from each party.
The Panel makes the following findings:
1. Complainant alleges that it first began using the service mark TRAVELZOO on January 26, 1998. Complaint, Annex B. Complainant used the mark to offer travel services over the Internet. Complainant's revenues are primarily derived from advertising placed on Complainant's web site. Respondent's Supplemental Response, Annex A.
2. On April 27, 1999, Respondent registered the domain name <travelzoom.com>. Complaint, Annex K.
3. In late May 1999, Respondent began to use the domain name <travelzoom.com> and the name "Travel Zoom" in the business of offering travel services over the Internet. Response, Annexes 2, 4 and 5.
4. On June 21, 1999, Complainant filed an application for registration of the service mark TRAVELZOO with the United States Patent and Trademark Office (the "USPTO"). Complaint, Annex B.
5. On October 20, 2000, Respondent registered the domain name <travelzoom.net>. Complaint, Annex K.
6. On October 30, 2000, the USPTO published Complainant's application for opposition. Response, Annex 9.
7. On January 23, 2001, registration of Complainant's service mark TRAVELZOO issued. Complaint, Annex B.
8. On February 6, 2001, Complainant's counsel first sent a letter to Respondent, stating that it had recently come to Complainant's attention that Respondent had registered the domain names at issue and demanding additional information. Complaint, Annex G. Respondent did not respond to this letter.
9. Complainant produced evidence that in September 2001, in the category of travel related web sites, Complainant ranked 19th in number of unique visitors. Complaint, Annex F.
10. Complainant referred to evidence that Complainant alleged would show that in August 1999 a survey of Internet users ranked <travelzoo.com> first among twenty-five leading travel web sites.
11. Complainant produced evidence that in December 1999 <travelzoo.com> had over 890,000 unique visitors. Complainant's Supplemental Pleading, Annex A.
12. Complainant produced evidence that between April 26-May 14, 1999, <travelzoo.com> finished first among general travel sites in a customer satisfaction survey. Complainant's Supplemental Pleading, Annex D
13. Respondent produced evidence that in April 1999, Complainant did not rank among the top thirty-four web sites in Forrester's rating of the top online travel sites.
14. Respondent produced evidence that the name "Travel Zoom" was developed in March and April 1999 by independent consultants and first presented to Respondent's principal in April 1999. Response, Annex 2.
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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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
The Panel finds that Complainant has failed to carry its burden of proof that the domain names at issue are confusingly similar to Complainant's service marks. The suffix to Complainant's trade name, "zoo," is a separate and distinct word from the suffix in Respondent's Second Level Domain name, "zoom." In such a case, there is a presumption that confusing similarity does not exist. See, e.g., Dollar Fin. Group, Inc. v. Oakridge, FA 94977 (Nat Arb. Forum July 17, 2000). Complainant failed to produce evidence sufficient to establish confusing similarity.
Rights or Legitimate Interests
Respondent produced evidence in the form of affidavits from third party consultants that the name "Travel Zoom" had been developed independently and without knowledge of Complainant's business name or service mark. IG Index PLC v. Index Trade, D1000-1124 (WIPO Oct. 16, 2000). Indeed, at the time that Respondent registered the first of the domain names at issue, Complainant had not even applied for registration of the service mark. At the time that Respondent registered the second of the domain names at issue, Complainant's mark had not yet been published for opposition. Mpower Communications Corp. v. Park Lodge Hotel, D2000-0078 (WIPO Apr. 3, 2000). At the time that Complainant discovered that Respondent had registered the above domain names and sent Respondent the first letter of inquiry, Respondent had been using the domain name in commerce for almost two years. Bankinter S.A. v. BI Fin. Inc., D2000-0460 (WIPO Sept. 5, 2000). Accordingly, the Panel finds that Respondent has established rights and legitimate interests in respect of the domain names at issue.
Registration and Use in Bad Faith
Because Respondent registered the first of the domain names at issue prior to Complainant's application for registration, because Respondent registered the second domain name at issue prior to the publication of Complainant's application for opposition, and because Respondent produced evidence of independent development of the domain names without knowledge of Complainant's service mark and evidence of use in commerce of the mark for a substantial period before any communication from Complainant, the Panel does not find that Respondent registered or is using the domain names at issue in bad faith. Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Nat. Arb. Forum Mar. 7, 2001); Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000).
For all of the foregoing reasons, the Panel dismisses the Complaint. Because Respondent failed to respond to the communication from Complainant concerning Respondent's registration of the domain names at issue, this is not an appropriate case for a finding of reverse domain name hijacking, and the Panel makes no such finding.
Dated: January 10, 2002
Panelists M. Scott Donahey, R. Glen Ayers, Jr. & Carolyn Marks Johnson
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