Carlson Wagonlit Travel Inc v. Scott Loughrey
Claim Number: FA0201000103968
Complainant is Carlson Wagonlit Travel, Inc., Minneapolis, MN (“Complainant”) represented by Dan Lee, of Carlson Wagonlit Travel, Inc. Respondent is Scott Loughrey, Baltimore, MD (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <carlsonwagonlittravel.com>, registered with Stargate Communications Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on January 21, 2002; the Forum received a hard copy of the Complaint on January 21, 2002.
On January 22, 2002, Stargate Communications Inc. confirmed by e-mail to the Forum that the domain name <carlsonwagonlittravel.com> is registered with Stargate Communications Inc. and that Respondent is the current registrant of the name. Stargate Communications Inc. has verified that Respondent is bound by the Stargate Communications Inc. 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 February 4, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 25, 2002 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 email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On March 4, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson 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.” 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 makes the following allegations:
1. The disputed domain name <carlsonwagonlittravel.com> is identical to Complainant’s CARLSON WAGONLIT TRAVEL mark.
2. Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of the domain name. Further, Respondent has never been commonly known by the domain name, therefore, Respondent does not have rights or legitimate interests with respect to <carlsonwagonlittravel.com>.
3. The disputed domain name was registered to obtain money from Complainant. Respondent has registered other domain names corresponding to individual and company names in an effort to sell them back to these individuals and companies. Respondent is not actively using the domain name. And, Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s domain name. Therefore, Respondent has registered and used the disputed domain name in bad faith.
B. Respondent did not file a Response in this proceeding.
Complainant operates a travel agency and offers a variety of travel related services. Complainant has used CARLSON WAGONLIT TRAVEL in commerce continuously since 1994. Complainant registered CARLSON WAGONLIT TRAVEL with the United States Patent and Trademark Office on September 9, 1997, Reg. No. 2,094,018.
Respondent registered the domain name, <carlsonwagonlittravel.com>, on December 13, 2001. Respondent has not acquired a license to use Complainant’s mark in a corresponding domain name. There is no evidence presented on how the disputed domain name has been used and it currently remains undeveloped. According to Complainant, Respondent offered to sell the disputed domain name for an amount in excess of Respondent’s direct out-of-pocket costs.
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.”
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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.
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.
Complainant has established its rights in the CARLSON WAGONLIT TRAVEL mark through federal registration and continuous use.
Respondent’s <carlsonwagonlittravel.com> domain name is identical to Complainant’s mark. There are two minor differences between Respondent’s domain name and Complainant’s mark. The first minor difference is that the disputed domain name does not incorporate the spaces in Complainant’s mark. However, since it is impossible to incorporate spaces in a domain name, this trivial alteration does not distinguish <carlsonwagonlittravel.com> from CARLSON WAGONLIT TRAVEL. See Hannover Ruckversicherungs-Aktiengesellschaft v. Hyungki Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2002) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names”); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding that <mysticlake.net> is plainly identical to Complainant’s MYSTIC LAKE trademark and service mark); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that the <bodybyvictoria.com> domain name is identical to Complainant’s BODY BY VICTORIA mark). The other minor change between the domain name and Complainant’s mark is the addition of the generic top-level domain “.com.” However, the addition of “.com” does not distinguish the disputed domain name from Complainant’s registered mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant). Therefore, the Panel finds that <carlsonwagonlittravel.com> is identical to Complainant’s CARLSON WAGONLIT TRAVEL mark.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has failed to file a Response in this matter. Therefore, the Panel may conclude that Respondent has no rights or legitimate interests in the disputed domain name, <carlsonwagonlittravel.com>. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
According to Complainant, Respondent has passively held the disputed domain name since registration and has offered to sell the domain name in dispute to Complainant for consideration in excess of out-of-pocket costs. Since Respondent has failed to file a Response, the Panel may presume that Complainant’s assertions are correct. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that Respondent’s failure to produce requested documentation supports a finding for Complainant). Therefore, Respondent has failed to demonstrate its use of the disputed domain name is in connection with a bona fide offering of goods or service as pursuant to Policy ¶ 4(c)(i). See J. Paul Getty Trust v. Domain 4 Sale & Co., FA 95262 (Nat. Arb. Forum Sept. 7, 2000) (finding rights or legitimate interests do not exist when one has made no use of the websites that are located at the domain names at issue, other than to sell the domain names for profit).
Respondent registered a domain name that is identical to Complainant’s registered mark. Based on the evidence provided, Respondent has passively held the domain name and has offered to sell it to Complainant. It can be inferred from Respondent’s behavior that Respondent registered the domain name solely for the purpose of selling it to Complainant. Thus Respondent’s actions do not demonstrate a legitimate noncommercial or fair use of <carlsonwagonlittravel.com> and therefore, Respondent fails to satisfy Policy ¶ 4(c)(iii). See Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the Respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the Complainant).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent acted in bad faith in registering and holding the domain name passively. According to the evidence presented, Respondent has offered the disputed domain name for consideration in excess of out-of-pocket costs. Such action by Respondent is considered to in bad faith. See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that Respondent demonstrated bad faith when he requested monetary compensation beyond out of pocket costs in exchange for the registered domain name); see also World Wrestling Fed’n Entmt., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that Respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out of pocket costs).
By registering a domain name that is identical to Complainant’s mark, the Panel may presume that Respondent registered <carlsonwagonlittravel.com> to prevent Complainant from reflecting its mark in a corresponding domain name. Respondent has also engaged in pattern of such conduct in the past. See Squatting For Dollars (June 12, 2000), available at http://salon.com/politics/feature/2000/06/12/squatter (The website reports that Scott Loughery, a cybersquater of some reknown, has registed numerous domain names of political candidates and has been known to ask for money in exhange for the domain names). Therefore, the Panel finds that Respondent has registered the disputed domain name in bad faith as pursuant to Policy ¶ 4(b)(ii). See America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that Respondent has registered numerous domain names that infringe upon the Complainant’s marks and in addition, Respondent has registered domain names that infringe upon other entities’ marks).
In addition, Respondent’s passive holding of the disputed domain name is evidence that Respondent has used <carlsonwagonlittravel.com> in bad faith. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (finding that “it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith”); see also Cruzeiro Licenciamentos Ltda v. Sallen & Sallen Enter., D2000-0715 (WIPO Sept. 6, 2000) (finding that mere passive holding of a domain name can qualify as bad faith if the domain name owner’s conduct creates the impression that the name is for sale).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief be hereby granted.
Accordingly, it is Ordered that the domain name <carlsonwagonlittravel.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 11, 2002.
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