Vacation Publications, Inc. v. Virtual Sky
Claim Number: FA0712001125350
Complainant is Vacation Publications, Inc. (“Complainant”), represented by Emerson
Hankamer, of Vacations To Go, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <tourvacations2go.com> and <resortvacation2go.com>, registered with Moniker Online Services, Inc.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On January 22, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 2008 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 and email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <tourvacations2go.com> and <resortvacation2go.com> domain names are confusingly similar to Complainant’s VACATIONS TO GO mark.
2. Respondent does not have any rights or legitimate interests in the <tourvacations2go.com> and <resortvacation2go.com> domain names.
3. Respondent registered and used the <tourvacations2go.com> and <resortvacation2go.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vacation Publications, Inc., is a leading company providing travel publications and travel services relating to the sale of ocean cruises, tour vacations, resort vacations, ski vacations, river cruises and safaris since 1984. Complainant owns a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VACATIONS TO GO mark (Reg. No. 1,330,100 issued March 8, 1991).
Respondent registered the <tourvacations2go.com> and <resortvacation2go.com>
domain names on
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Registration with the USPTO establishes rights in the VACATIONS TO GO mark under Policy ¶ 4(a)(i). The Panel finds that Complainant has sufficiently proved this registration to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Wal-Mart Stores, Inc. v. MacLeod, D2000-0662 (WIPO Sept. 19, 2000) (finding that the failure of the complainant to register all possible domain names that surround its substantive mark does not hinder the complainant’s rights in the mark. “Trademark owners are not required to create ‘libraries’ of domain names in order to protect themselves”).
Complainant contends that Respondent’s disputed domain names
are confusingly similar to Complainant’s VACATIONS TO GO mark. Respondent’s <tourvacations2go.com> and <resortvacation2go.com> domain
names contain a phrase phonetically similar to Complainant’s VACATIONS TO GO
mark, add a term with an obvious relationship to Complainant’s business and add
the generic top-level domain (“gTLD”) “.com.”
In VeriSign, Inc. v. VeneSign
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and
legitimate interests in the disputed domain names. When
Complainant makes a prima facie case
in support of its allegations, the burden is shifted to Respondent to prove
that it does have rights or legitimate interests in the disputed domain names
pursuant to Policy ¶ 4(a)(ii). The Panel
finds that in this case, Complainant has established a prima facie case. See Compagnie Generale des
Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Due to Respondent’s failure to respond to the Complaint, the
Panel assumes that Respondent does not have rights or legitimate interests in
the disputed domain names. See CMGI,
Inc. v. Reyes, D2000-0572 (WIPO
Complainant contends that Respondent is neither commonly
known by the disputed
domain names, nor licensed to register domain names using the VACATIONS TO
GO mark. Respondent’s WHOIS information
identifies Respondent as “Virtual Sky.”
This provides no evidence that Respondent is commonly known by either of
the disputed domain names. Therefore,
the Panel finds that Repondent is not commonly known by the disputed domain
names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc.
v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Complainant contends that Respondent is using the disputed domain names in order to intentionally cause confusion between Complainant’s VACATION TO GO mark and Respondent’s disputed domain names, then offering advertisements for products and services, some of which are in direct competition with Complainant. The Panel finds that this kind of use of a disputed domain name which is confusingly similar to a complainant’s mark is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain names to advertise websites in
direct competition to Complainant is evidence of bad faith. The Panel finds that a registered domain name
used primarily to disrupt the business prospects of a competitor is an
illustration of bad faith registration and use pursuant to Policy ¶
4(b)(iii). See Puckett,
Individually v. Miller, D2000-0297 (WIPO
Respondent’s use of the disputed domain names in order to intentionally attract Internet users to its website by creating a strong possiblity of confusion with Complainant’s VACATIONS TO GO mark and offering advertisements to competing websites. The Panel infers that Respondent receives click-through fees for diverting Internet users to such websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds such use of the disputed domain name constitutes bad faith registration and use. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <tourvacations2go.com> and <resortvacation2go.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: February 28, 2008
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