Best Fares USA, Inc. v. Joe Fontina
Claim Number: FA0803001157048
Complainant is Best Fares USA, Inc. (“Complainant”), represented by Deborah
L. Lively, of Thompson & Knight, LLP, Texas, USA. Respondent is Joe Fontina (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cancunbestfares.com>, registered with Wild West Domains, 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 March 20, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 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 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <cancunbestfares.com> domain name is confusingly similar to Complainant’s BEST FARES mark.
2. Respondent does not have any rights or legitimate interests in the <cancunbestfares.com> domain name.
3. Respondent registered and used the <cancunbestfares.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Best Fares USA, Inc., operates a business which
offers travel related goods and services.
Complainant promotes its business using its BEST FARES mark which it
registered with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <cancunbestfares.com>
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 provided evidence of the registration of its
BEST FARES mark with the USPTO. The
Panel finds this evidence adequately establishes Complainant’s rights in its
BEST FARES mark 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
domain name fully incorporates Complainant’s BEST FARES mark with the addition
of the geographic identifier “Cancun” and the generic top level domain (“gTLD”)
“.com.” The additions of a geographic
identifier and a gTLD to Complainant’s BEST FARES mark do not sufficiently
distinguish Respondent’s domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s
disputed domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i). See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept.
26, 2000) (finding that the respondent’s domain name
<net2phone-europe.com> is confusingly similar to the complainant’s mark
because “the combination of a geographic
term with the mark does not prevent a domain name from being found confusingly
similar"); see also VeriSign, Inc. v. Tandon,
D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between the
complainant’s VERISIGN mark and the <verisignindia.com> and
<verisignindia.net> domain names where the respondent added the word “
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts Respondent lacks rights or legitimate
interests in the disputed domain name. Complainant must establish a prima facie case to support these
assertions, and the Panel finds Complainant has done so in these
proceedings. Since Complainant has
produced a sufficient prima facie
case, the burden shifts to Respondent to establish it does have rights or
legitimate interests in the disputed domain name. Respondent failed to submit a response to
these proceedings, thus the Panel may infer Respondent lacks rights and
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests pursuant to
Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace
Int’l, D2001-0376 (WIPO
Respondent’s <cancunbestfares.com> domain name resolves to a website which offers travel related goods and services that directly compete with Complainant’s business. The Panel finds Respondent’s use constitutes diversion and is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
Additionally, Respondent does not appear to be commonly known by the <cancunbestfares.com> domain name. Respondent is known as “Joe Fontina,” and the record indicates Complainant has not authorized Respondent to use its BEST FARES mark. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain name offers Internet users travel related products and services which directly compete with Complainant’s business. The Panel finds Respondent’s use constitutes disruption and is 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 Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion).
Respondent is using the website resolving from its
confusingly similar disputed domain name to provide Internet users with
competing travel related products and services.
Respondent presumably profits from this use. Additionally, Respondent’s use of
Complainant’s BEST FARES mark creates a likelihood of confusion regarding the
source of the content resolving from the disputed domain name. The Panel finds this is an attempt by
Respondent to profit from the goodwill associated with Complainant’s mark. Therefore, the Panel finds Respondent’s
actions constitute bad faith registration and use pursuant to Policy ¶
The Panel finds 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 <cancunbestfares.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 29, 2008
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