Travelzoo Inc. v. SZK.com
Claim Number: FA0207000115088
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.
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.
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 firstname.lastname@example.org 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.
Complainant requests that the domain name be transferred from Respondent to 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.
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.
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.
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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