National Arbitration Forum

 

DECISION

 

Tahiti One Travel v. Alexandre Menini

Claim Number: FA0802001152430

 

PARTIES

Complainant is Tahiti One Travel (“Complainant”), represented by Brian A. Hall, 810 Cottageview Drive, Unit G-20, Traverse City, MI 49684.  Respondent is Alexandre Menini (“Respondent”), Via della Concia,19, Castelfidardo (AN) 60022, IT, IT.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <easytahiti.org>, registered with eNom, 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.

 

Robert T. Pfeuffer, Senior District Judge as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 19, 2008; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2008.

 

On February 19, 2008, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <easytahiti.org> domain name is registered with eNom, Inc. and that the Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 February 27, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 18, 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@easytahiti.org by e-mail.

 

A timely Response was received and determined to be complete on March 18, 2008.

 

On March 26, 2008, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Robert T. Pfeuffer, Senior District Judge as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

Complainant contends that it has rights in the EASYTAHITI.COM trademark by virtue of its registration with the Institut National de la Propriete Industrielle (“INPI”), the French Patent Trademark under Registry number 07-3-500-008 issued May 9, 2007.

 

Complainant further contends that the Respondent’s <easytahiti.org> domain name is identical to Complainant’s EASYTAHITI.COM trademark and that Respondent’s domain name simply replaces the generic top-level domain (“gTLD”) “.com” with the gTLD “.org.” 

 

All of these contentions are in support of Complainant’s efforts to establish that the domain name in dispute is identical or confusingly similar to it’s trademark.  Additionally, Complainant addresses the Respondent’s rights and legitimate interests in the disputed domain name and asserts that it has made a prima facie case in support of its allegations, and therefore the burden has shifted to the Respondent to show that Respondent does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). 

 

In further support of Complainants contention that Respondent has no rights or legitimate interests in the disputed name, Complainant contends that Respondent is using the <easytahiti.org> domain name to operate a website that contains advertisements to Complainant’s various competitors as well as to various non-competing websites. 

 

Morever, Complainant contends that Respondent is not commonly known by the <easytahiti.org> domain name or licensed to register names featuring the EASYTAHITI.COM  mark, or any derivation thereof.

 

Complainant also alleges that Respondent’s registration and use of the disputed domain name is in bad faith in violation of Policy ¶ 4(a)(iii). 

 

Complainant points out that Respondent is using the <easytahiti.org> domain name to operate a website that provides links to various websites offering services that compete with Complainant’s business.

 

Additionally, with respect to the question of registration and use in bad faith, Complainant contends that Respondent’s manner of use of the <easytahiti.org> domain name will likely lead to confusion among internet users as to Complainant’s sponsorship of or affiliation with the resulting website.

 


B. Respondent

Respondent contends that the EASYTAHITI.COM mark is registered solely for the use in connection with travel services and that Respondent is operating a free web directory.

 

On the question of rights and legitimate interests, Respondent advances the theory that Complainant has failed to allege sufficient facts to create a prima facie case for lack of rights or legitimate interests by Respondent as required by Policy ¶ 4(a)(ii). 


Respondent’s many allegations advance it’s theory that the <easytahiti.org> domain name is comprised entirely of generic terms and therefore where a domain name is comprised entirely of descriptive and common terms, a Respondent may establish rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).

 

Respondent further contends that Respondent’s use of the disputed domain name in connection with a free web directory is sufficient to establish rights and legitimate interests under Policy ¶ 4(a)(ii).

 

On the subject of registration and use in bad faith, Respondent replies to Complainant’s allegations that Complainant failed to meet its burden of proof of bad faith and registration and use under Policy ¶ 4(a)(iii).

 

Respondent’s allegations further contend that it has rights and legitimate interests in the <easytahiti.org> domain name pursuant to Policy ¶ 4(a)(ii) because Respondent’s domain name is comprised entirely of generic terms.  It would therefore have the Panel conclude that Respondent did not register or use the domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

It is further asserted by Respondent that its <easytahiti.org> domain name is comprised entirely of generic terms and that Respondent did not exhibit the requisite bad faith registration and use of the <easytahiti.org> domain name under Policy ¶ 4(a)(iii) as a result of its generic composition

 

FINDINGS

The Panel has concluded that Complainant has established by a preponderance of the evidence that Respondent’s registration of the <easytahiti.org> name is in violation of Policy ¶¶ 4(a)(i)-(iii).

 

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

 

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;

(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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s registration of the mark with the French trademark authority is sufficient to establish rights pursuant to Policy ¶ 4(a)(i).  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); 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.”).

 

The Panel also finds replacing one gTLD for another gTLD is not a sufficient means of differentiating Respondent’s domain name from Complainant’s mark pursuant to Policy ¶ 4(a)(i).  See Koninklijke Philips Elecs. NV v. Goktas, D2000-1638 (WIPO Feb. 8, 2001) (finding that the domain name <philips.org> is identical to the complainant’s PHILIPS mark); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to the complainant’s mark).

 

Rights or Legitimate Interests

 

The Panel finds that the burden of proof has shifted on this issue, the Complainant having established a prima facie case in support of its allegations and Respondent now must show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 221, 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”); see also 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).  The Panel finds that Respondent has failed to discharge its burden of proof in this respect.

 

From the evidence the Panel infers from Respondent’s use that Respondent is receiving click-through fees for each internet user redirected to a commercial website unrelated to Complainant, all as alleged by Complainant and supported by its evidence.  The Panel further finds that the Respondent is not using the easy <easytahiti.org> domain name in connection with 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 ALPITOUR S.p.A. v. Ali Albloushit, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent is profiting from its use of the <easytahiti.org> domain name to operate a website that provides links to various websites offering services that compete with Complainant’s business.  As such, this use constitutes a disruption of Complainant’s business and is therefore evidence of bad faith, registration and use pursuant to Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc. FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO) Dec. 15, 2000) (finding that the respondent registered and used the domain name to promote competing auction sites).  The Panel finds, as Complainant contends, that Respondent’s manner of the use of the <easytahiti.org> domain name will likely lead to confusion among internet users as to Complainant’s sponsorship of or affiliation with the resulting website.  The Panel therefore concludes that such use is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another’s mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <easytahiti.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Robert T. Pfeuffer, Senior District Judge, Panelist
Dated: April 4, 2008

 

 

 

 

 

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