Vacation Publications, Inc. v. Best Flights Pty Ltd
Claim Number: FA0801001126493
Complainant is Vacation Publications, Inc. (“Complainant”), represented by Emerson
Hankamer, of Vacations To Go, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <vacationstogo.travel>, registered with Melbourne IT Ltd.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On January 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 7, 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 postmaster@vacationstogo.travel by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <vacationstogo.travel> domain name is identical to Complainant’s VACATIONS TO GO mark.
2. Respondent does not have any rights or legitimate interests in the <vacationstogo.travel> domain name.
3. Respondent registered and used the <vacationstogo.travel> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Vacation Publications, Inc., is an accredited
travel publication and services provider for oceanic and river cruises, tours,
and safaris. Since 1984, Complainant has
operated under the VACATIONS TO GO mark (Reg. No. 1,330,100 issued April 9,
1985), which was registered with the United States Patent and Trademark Office
(“USPTO”). Complainant has owned and
operated the <vacationstogo.com> domain name in conjunction with its
business since 1998. Complainant markets
its services throughout the
Respondent registered the <vacationstogo.travel>
domain name 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.
Complainant has asserted sufficient rights in the VACATIONS TO GO mark pursuant to Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <vacationstogo.travel> domain name includes Complainant’s entire VACATIONS TO GO mark while adding the top-level domain “.travel,” which describes Complainant’s business. Where a domain name incorporates fully a mark and adds a term descriptive of a complainant’s business, such a domain name is considered confusingly similar to the mark. See American Int’l Group v. Mary Ellen Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (finding <aigfraud.net> “confusingly similar to Complainant’s AIG mark because [the] domain name fully incorporates the mark with the addition of the generic or descriptive [term] ‘fraud’); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Furthermore, the addition of top-level domains is considered
irrelevant when conducting a Policy ¶ 4(a)(i) analysis. Therefore, the Panel finds that the disputed
domain name is identical to Complainant’s mark pursuant to Policy ¶
4(a)(i). See Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the <vacationstogo.travel> domain name. Once Complainant sets forth a prima facie case supporting its allegations, as it has here, Respondent carries the burden to prove that it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s use of the <vacationstogo.travel>
domain name attempts to divert Internet users seeking Complainant’s services to
a website that offers services and products in direct competition with
Complainant. Respondent is clearly
seeking to capitalize off of Complainant’s goodwill and name recognition, given
the disputed domain name’s exact duplication of Complainant’s mark. Therefore, the Panel finds that Respondent’s
registration of the disputed domain name fails to constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii). See Diners Club Int’l Ltd. v.
Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10,
2004) (“Since Complainant and Respondent both offer credit card accounts for
sale, the Panel finds that Respondent is using the domain names to offer
strictly competing services with Complainant, which would be legitimate had
Respondent not incorporated Complainant’s mark in a confusingly similar domain
name to accomplish this end.”); see also American Tool & Machining, Inc. v. EZ
Hitch Inc., FA 113961 (Nat. Arb. Forum
Respondent can point to no evidence in the record, including
the WHOIS domain name registration information, to suggest that it is commonly
known by the <vacationstogo.travel>
domain name. Respondent registered the
disputed domain name under the identity “Best Flights Pty Ltd,” which bears no
cognizable resemblance to the disputed domain name. Therefore, the Panel finds that Respondent
has no rights and 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
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration of the <vacationstogo.travel> domain name constitutes a transparent attempt to profit from Complainant’s mark by not only diverting Internet users to Respondent’s website, but also offering the identical form of services that Complainant provides its own customers. Such usage of the disputed domain name constitutes the quintessential intent to disrupt a competitor’s business. Therefore, the Panel finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Respondent has attempted to divert Complainant’s customers
to Respondent’s website via the disputed domain name. Respondent then offers those potential
customers the exact services that Complainant seeks to provide for its client
base. The duplication of Complainant’s
VACATIONS TO GO mark within the disputed domain name, combined with the
offering of identical services through the corresponding website, clearly
indicates that Respondent has created a likelihood of confusion regarding the
source, affiliation, and endorsement of the disputed domain name and
corresponding website. Internet users
diverted to Respondent’s website would likely be unable to differentiate
Respondent from Complainant’s mark and brand.
Therefore, the Panel finds that Respondent has engaged in bad faith
registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv). See Computerized
Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003)
(finding that the respondent’s use of the <saflock.com> domain name to
offer goods competing with the complainant’s illustrates the respondent’s bad
faith registration and use of the domain name, evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)); see also Nokia Corp. v. Private,
D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant
to Policy ¶ 4(b)(iv) where the domain name resolved to a website that offered
similar products as those sold under the complainant’s famous mark).
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 <vacationstogo.travel> domain name be TRANSFERRED from Respondent to Complainant.
Dated: February 27, 2008
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