Travelzoo Inc. v. SZK.com
Claim Number: FA0207000115088
PARTIES
Complainant
is Travelzoo Inc., Mountain View,
CA, USA (“Complainant”). Respondent is SZK.com, Barletta Ba, ITALY
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <wwwtravelzoo.com>,
registered with Tucows, Inc.
PANEL
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.
John
J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on July 12, 2002; the Forum received a hard copy of the
Complaint on July 17, 2002.
On
July 18, 2002, Tucows, Inc. confirmed by e-mail to the Forum that the domain
name <wwwtravelzoo.com> is
registered with Tucows, Inc. and that Respondent is the current registrant of
the name. Tucows, Inc. has verified
that Respondent is bound by the Tucows, 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
July 22, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of August 12,
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@wwwtravelzoo.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
August 23, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Respondent’s <wwwtravelzoo.com> domain
name is confusingly similar to Complainant’s TRAVELZOO registered mark.
2. Respondent does not have any rights or
legitimate interests in the <wwwtravelzoo.com> domain name.
3. Respondent registered and uses the <wwwtravelzoo.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
FINDINGS
Complainant holds U.S. Patent and
Trademark Office (“USPTO”) Reg. No. 2,422,810 for its TRAVELZOO mark, which
denotes, inter alia, “promoting the goods and services of others through
the offer of travel goods and services and shopping club services, namely
providing information on travel goods and services to members.” Complainant’s
mark was listed on the Principal Register of the USPTO on January 23, 2001 and
lists the first use of the mark in commerce as being January 26, 1998.
Complainant is one of the world’s leading
providers of on-line travel-related news. One of Complainant’s most popular
services offered under the TRAVELZOO mark is the TRAVELZOO Top 20, which is
sent to over 2.0 million subscribers weekly. Complainant presently maintains
business relationships with and promotes travel specials and deals for over 180
travel supplier clients, including: Hilton, Hertz, Virgin Airlines, Marriott
and Travelocity.com. Complainant’s <travelzoo.com> website receives about
4.2 million users a month, a rate that places it among the top fifteen most
visited travel-related websites.
Complainant’s customers have come to
associate the TRAVELZOO mark as representing not only quality discounts and
deals, but also Complainant’s travel promotion services and newsletters.
Because of Complainant’s continuous and widespread use of its TRAVELZOO mark in
connection with its <travelzoo.com> website, Complainant’s mark has
acquired a significant amount of consumer recognition and fame.
Respondent registered <wwwtravelzoo.com>
on August 8, 2001. Complainant’s investigation indicates Respondent’s
domain name currently resolves to a website that offers competing travel
related services. When Internet users attempt to access Respondent’s domain
name they are confronted with a search engine containing various categories
that advertise airlines, cruises and hotels.
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 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; and
(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.
Complainant has established rights in the
TRAVELZOO mark by registration with the USPTO and continuous use of the mark in
relation to its travel-related services since 1998.
Respondent’s <wwwtravelzoo.com> domain
name is confusingly similar to Complainant’s TRAVELZOO mark. Respondent’s
domain name incorporates Complainant’s mark in its entirety, and includes the
strategic addition of the “www” prefix. Respondent’s domain name capitalizes on
a common typographical error that Internet users make, namely, keying the
mandatory “www” introduction while not inserting the period before the
beginning of the second-level domain. See Bank of Am. Corp. v. InterMos, FA 95092 (Nat. Arb. Forum Aug. 1,
2000) (finding that Respondent’s domain name <wwwbankofamerica.com> is
confusingly similar to Complainant’s registered trademark BANK OF AMERICA
because it “takes advantage of a typing error (eliminating the period between
the www and the domain name) that users commonly make when searching on the
Internet”).
Respondent’s registration of the subject
domain name represents a classic example of typosquatting, whereby a domain
name registrant incorporates a common misspelling or typographical error into a
famous mark. This practice of “typosquatting” has been recognized as an
infringing use of a domain name under the UDRP, and by its definition is confusingly similar. See
e.g. AltaVista Co. v. Stoneybrook, D2000-0886 (WIPO Oct. 26, 2000)
(awarding <wwwalavista.com>, among other misspellings of altavista.com,
to Complainant); Dow Jones & Co. v.
Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (awarding domain names
<wwwdowjones.com>, <wwwwsj.com>, <wwwbarrons.com> and
<wwwbarronsmag.com> to Complainants).
Accordingly, the Panel finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant has fulfilled its initial
burden of establishing, by a preponderance of the credible, relevant and
admissible evidence, a prima facie case demonstrating its rights in the
TRAVELZOO mark while concurrently discounting Respondent’s. Because Respondent
failed to submit a Response in this proceeding to refute Complainant’s
assertions, it is presumed that Respondent lacks rights and legitimate
interests in the <wwwtravelzoo.com> domain name. See Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that under
certain circumstances the mere assertion by the Complainant that the Respondent
has no right or legitimate interest is sufficient to shift the burden of proof
to the Respondent to demonstrate that such a right or legitimate interest does
exist); see also Canadian Imperial
Bank of Commerce v. D3M Virtual Reality Inc., AF-0336 (eResolution Sept.
23, 2000) (finding no rights or legitimate interests where no such right or
interest was immediately apparent to the Panel and Respondent did not come
forward to suggest any right or interest it may have possessed).
Furthermore, because Respondent failed to
submit a Response in this proceeding, the Panel is permitted to make all
reasonable inferences in favor of Complainant. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095
(Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true).
Over the last four years, Complainant has
expended a substantial amount of resources promoting, marketing and advertising
its services under the TRAVELZOO mark. As stated, Complainant has established a
consumer base of some 4.2 million Internet users per month through its efforts.
Because Respondent’s registered domain name exhibits all the characteristics of
typosquatting, it is proper for the Panel to presume that Respondent is
attempting to divert interested consumers to its competing website by using
Complainant’s TRAVELZOO mark. Respondent is attempting to profit from a
perceived affiliation with Complainant and the goodwill associated with the
TRAVELZOO mark. Such attempts to divert Internet users do not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i). Respondent’s opportunistic
registration and use of Complainant’s mark in its domain name is also not a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii), since Respondent
undoubtedly receives commissions from the advertisements and sponsors listed on
its travel website. 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 Chip Merch., Inc. v. Blue Star
Elec., D2000-0474 (WIPO Aug. 21, 2000) (finding that the disputed domain
names were confusingly similar to Complainant’s mark and that Respondent’s use
of the domain names to sell competing goods was illegitimate and not a bona
fide offering of goods); see also Ticketmaster
Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no
rights or legitimate interests where Respondent generated commercial gain by
intentionally and misleadingly diverting users away from Complainant's site to
a competing website).
Complainant’s assertion that Respondent
is not commonly known by the <wwwtravelzoo.com> domain name
pursuant to Policy ¶ 4(c)(ii) has gone unopposed. Furthermore, there is no
evidence before the Panel that would suggest a legitimate connection between
Respondent, SZK.com, and the infringing domain name. As stated, Respondent has
engaged in the practice of typosquatting, and has merely wrongfully
misappropriated and infringed upon Complainant’s mark and goodwill. See 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 or using
the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp.,
D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where
Respondent was not commonly known by the mark and never applied for a license
or permission from Complainant to use the trademarked name).
Accordingly, the Panel finds that Policy
¶ 4(a)(ii) has been satisfied.
Circumstances surrounding Respondent’s
registration of the infringing domain name suggest Respondent was aware of
Complainant’s rights in its mark prior to registering the domain name.
Complainant holds a USPTO registration for the mark that lists first use as
occurring nearly four years ago, and Respondent’s registration resembles
typosquatting, an infringing practice that in theory requires previous
knowledge of a mark before registering the domain name, or a variation thereof.
Respondent’s subsequent registration of <wwwtravelzoo.com>,
despite knowledge of Complainant’s preexisting rights, evidences bad faith
registration under Policy ¶ 4(a)(iii). See Samsonite Corp. v. Colony
Holding, FA 94313 (Nat.
Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual
or constructive knowledge of a commonly known mark at the time of
registration); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135,
1148 (9th
Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also L.L.
Bean, Inc. v. Cupcake Patrol, FA 96504 (Nat. Arb. Forum Mar. 12, 2001)
(finding that Respondent acted in bad faith by registering misspellings of
famous trademarks and names).
Respondent’s registration of the
infringing domain name is intended to disrupt Complainant’s travel operations
as conducted on the <travelzoo.com> website and under the TRAVELZOO
moniker. The registration of a confusingly similar domain name in conjunction
with a website that bears a striking resemblance to Complainant’s services and
products implies that Respondent is attempting to capture a portion of
Complainant’s market share, thereby profiting from Complainant’s advertising
and marketing. Respondent’s actions evidence bad faith registration and use
under Policy ¶ 4(b)(iii). See Mission Kwa Sizabantu v. Rost, D2000-0279 (WIPO June 7,2000) (defining
“competitor” as "…one who acts in opposition to another and the context
does not imply or demand any restricted meaning such as commercial or business
competitor”); see also Surface
Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding
that, given the competitive relationship between Complainant and Respondent,
Respondent likely registered the contested domain name with the intent to
disrupt Complainant's business and create user confusion).
Furthermore, Respondent utilizes its
confusingly similar domain name to divert unsuspecting Internet users to its
website that specializes in lodging, travel and transportation. Once at the
website, Internet users seeking or expecting to find Complainant’s TRAVELZOO services
are deceived into believing that some affiliation exists between the two
competing entities, WWWTRAVELZOO and TRAVELZOO. Presumably, Respondent benefits
from the competing travel website it controls, either through advertisements,
commissions or the leasing of web space to businesses desiring to market their
products. In doing so, Respondent has intentionally attempted to attract, for
commercial gain, Internet users to its website by creating a likelihood of
confusion with Complainant’s mark and corresponding services; thus,
Respondent’s actions evidence bad faith registration and use under Policy ¶
4(b)(iv). See Am. 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 TM Acquisition Corp. v. Carroll, FA
97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where Respondent used
the domain name, for commercial gain, to intentionally attract users to a
direct competitor of Complainant); see also AltaVista v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad
faith under Policy ¶ 4(b)(iv) where the Respondent linked the domain name to a
website that offers a number of web services).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements
required under ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <wwwtravelzoo.com>
domain name be TRANSFERRED from Respondent to Complainant.
John
J. Upchurch, Panelist
Dated: August 27, 2002
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