Vacation
St. Croix v. Simon Pinthna
Claim
Number: FA0202000105185
PARTIES
Complainant is Vacation St. Croix, Christiansted,
U.S.Virgin Islands (“Complainant”) represented by Vincent Colianni, II, of Colianni
& Colianni. Respondent is Simon Pinthna, Munich, Germany
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at
issue is <vacationstcroix.com>,
registered with BulkRegister.
PANEL
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.
PROCEDURAL
HISTORY
Complainant submitted
a Complaint to the National Arbitration Forum (the “Forum”) electronically on February
25, 2002; the Forum received a hard copy of the Complaint on February 27, 2002.
On February 26, 2002, BulkRegister
confirmed by e-mail to the Forum that the domain name <vacationstcroix.com> is registered with BulkRegister and
that Respondent is the current registrant of the name. BulkRegister has verified that Respondent is
bound by the BulkRegister 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 March 6, 2002, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of March 6, 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 postmaster@vacationstcroix.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 April 3, 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.
RELIEF
SOUGHT
Complainant requests
that the domain name be transferred from Respondent to Complainant.
PARTIES’
CONTENTIONS
A. Complainant
makes the following allegations:
The <vacationstcroix.com>
domain name is identical to Complainant's VACATION ST. CROIX mark. Respondent has no rights or legitimate interests
in the disputed domain name. Respondent
registered and used the disputed domain name in bad faith.
B. Respondent did not
file a Response in this proceeding.
FINDINGS
Complainant
does business under the name VACATION ST. CROIX. It uses the name for all advertising, marketing, leasing and
management of its vacation villa rental properties on St. Croix. Complainant has used the name since 1997,
and has invested large sums of money in the name by placing ads in travel
magazines, newspapers and telephone directories. Complainant also established a website at <vacationstx.com>
in 2000. Complainant wanted to register
<vacationstcroix.com> but found that Respondent, a competitor of
Complainant had already registered the domain name.
Respondent
registered the disputed domain name on May 24, 1999. Respondent is commonly known as Rent-a-Villa, and offers services
that compete with Complainant’s at the <vacationstcroix.com>
domain name.
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.”
In view
of Respondent's failure to submit a Response, the Panel shall decide this
administrative proceeding on the basis of the 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 that it has rights in the VACATION ST. CROIX mark because it
has used it as a trade name since 1997.
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. McCarthy on Trademarks and Unfair Competition,
§ 25:74.2, Vol. 4 (2000). 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 Policy “does not distinguish between registered and unregistered trademarks
and service marks in the context of abusive registration of domain names” and
applying the Policy to “unregistered trademarks and service marks”).
Respondent’s
<vacationstcroix.com> domain name is identical to Complainant’s
mark because it incorporates the entirety of the mark and merely adds the
generic top-level domain name “.com.”
The addition of a generic top-level domain name is not enough to create
a distinct mark capable of overcoming a claim of confusing similarity. See 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); see also 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).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant
has established its rights to and legitimate interest in the mark contained in
its entirety in the domain name that Respondent registered. However, Respondent has failed to come
forward with a Response and therefore the Panel is permitted to presume that
Respondent has no rights or legitimate interests in the disputed domain
name. 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).
Furthermore,
when Respondent fails to submit a Response the Panel is permitted to make all
inferences in favor of Complainant. See Talk City, Inc.
v. Robertson, D2000-0009, (WIPO Feb. 29, 2000)
(“In the absence of a response, it is appropriate to accept as true all
allegations of the Complaint”).
Respondent
is using a confusingly similar domain name to divert Complainant’s customers to
Respondent’s website by creating a likelihood of confusion as to the source and
sponsorship of the services offered at <vacationstcroix.com>. This type of use is not considered to be a
bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i). See Vapor
Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb.
Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain
name to confuse and divert Internet traffic is not a legitimate use of the
domain name); see also North Coast
Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000)
(finding no bona fide use where Respondent used the domain name to divert
Internet users to its competing website).
Respondent
is known as Rent-a-Villa and Respondent is not commonly known as <vacationstcroix.com>. Therefore, Respondent does not have rights
to or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See
Gallup Inc. v. Amish
Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001)
(finding that Respondent does not have rights in a domain name when Respondent
is not known by the mark); see also Broadcom
Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because Respondent is not commonly
known by the disputed domain name and Respondent is not using the domain name
in connection with a legitimate or fair use).
Respondent
is not using the disputed domain name in connection with a legitimate
noncommercial or fair use because Respondent is intentionally diverting Complainant’s
customers to its own website by creating a likelihood of confusion as to the
source, affiliation and sponsorship of <vacationstcroix.com>. This type of use does not create rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(iii). See
Kosmea Pty Ltd. v.
Krpan, D2000-0948 (WIPO Oct. 3, 2000) (finding no
rights in the domain name where Respondent has an intention to divert consumers
of Complainant’s products to Respondent’s site by using Complainant’s mark).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent
registered the disputed domain name in bad faith because Respondent knowingly
is using Complainant’s trade name to offer services in competition with Complainant’s
services and is therefore disrupting Complainant’s business and creating user
confusion. This type of activity is
considered to be in bad faith pursuant to Policy ¶ 4(b)(iii). See Surface
Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb.
5, 2001) (finding that, given the competitive relationship between Complainant
and Respondent. The Panel is permitted
to find that Respondent likely registered the contested domain name with the
intent to disrupt Complainant's business and create user confusion); see
also Lubbock Radio Paging v. Venture
Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that
domain names were registered and used in bad faith where Respondent and
Complainant were in the same line of business in the same market area).
Furthermore,
it can be inferred that Respondent intended to benefit financially from the use
of Complainant’s trade name on the Internet and therefore Respondent’s
registration of the disputed domain name was in bad faith pursuant to Policy ¶
4(b)(iv). See
America Online, Inc.
v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21,
2000) (finding bad faith where Respondent registered and used an infringing
domain name to attract users to a website sponsored by Respondent); see also
Drs. Foster & Smith, Inc. v. Lalli,
FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the
Respondent directed Internet users seeking the Complainant’s site to its
website for commercial gain).
The
Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain
name <vacationstcroix.com> be transferred from Respondent
to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated:
April 17, 2002
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