NexTag, Inc. v. Nextag.Travel
Claim Number: FA0803001163853
Complainant is NexTag, Inc. (“Complainant”), represented by Todd
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <nextag.travel>, registered with ENCIRCA, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On March 26, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 15, 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 firstname.lastname@example.org 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 <nextag.travel> domain name is identical/confusingly similar to Complainant’s NEXTAG mark.
2. Respondent does not have any rights or legitimate interests in the <nextag.travel> domain name.
3. Respondent registered and used the <nextag.travel> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has registered the NEXTAG mark with both the
United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,820,935 issued
Respondent registered the <nextag.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 timely 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.
The Panel finds Complainant’s trademark registrations for
the NEXTAG mark sufficient to demonstrate its rights pursuant to Policy ¶
4(a)(i). See Microsoft Corp. v. Burkes,
FA 652743 (Nat. Arb. Forum
Moreover, the Panel finds the disputed domain name to be
identical to Complainant’s NEXTAG mark pursuant to Policy ¶ 4(a)(i). The <nextag.travel>
domain name includes nothing more than Complainant’s mark in its entirety
and the sponsored top-level domain (“sTLD”) “.travel.” This Panel finds that the addition of an
sTLD, like “.travel,” should be treated the same as the addition of a generic
top-level domain, such as “.com,” for the purposes of analysis under Policy ¶
4(a)(i). The Panel therefore finds the
addition of “.travel” to be irrelevant in its analysis under Policy ¶
4(a)(i). See Vacation Publ’ns., Inc. v. Best
Flights Pty. Ltd., FA 1126493 (Nat.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
The Panel finds Complainant has established a prima facie case against Respondent’s
lack of rights and legitimate interests under Policy ¶ 4(a)(ii). Therefore, the burden shifts to Respondent to
demonstrate its rights or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by
the complainant, the burden then shifts to the respondent to demonstrate its
rights or legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding the “complainant must first make a prima facie case that
[the] respondent lacks rights and legitimate interests in the disputed domain
names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent
to show it does have rights or legitimate interests.”). Here, Respondent has not replied a timely
response to the Complaint. Although, the
Panel is entitled to infer that Respondent lacks all rights and legitimate
interests in the disputed domain name, see
American Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
While the WHOIS record indicates that the disputed domain name was registered by “nextag.travel,” Complainant contends, and Respondent has not argued, that Respondent is not currently nor ever was commonly known by the <nextag.travel> domain name. Moreover, the record indicates that a search on the Google search engine for “nextag.travel” yielded no results. The Panel finds that the record as a whole does not support the inference that Respondent is or was commonly known by the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <nextag.travel> domain name pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”).
Respondent currently utilizes the <nextag.travel> domain name to resolve to a website that directly competes with Complainant’s services offered under the identical NEXTAG mark. Thus, the Panel finds Respondent’s use of the disputed domain name to be 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds Respondent’s registration and use of the disputed domain name to be in bad faith pursuant to Policy ¶ 4(b)(iii). Respondent is attempting to disrupt Complainant’s competing business by utilizing the <nextag.travel> domain name, which is identical to Complainant’s NEXTAG mark, to operate a business that competes with Complainant. See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under Policy ¶ 4(b)(iii)); see also Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate websites that compete with the complainant’s business).
Complainant claims that Respondent is using the <nextag.travel> domain name to
divert Internet users to a website that directly competes with the services
offered by Complainant under the NEXTAG mark and which features logos that are
strikingly similar to Complainant’s logo.
The Panel agrees with this assertion and finds that Respondent is taking
advantage of the confusing similarity between the <nextag.travel> domain name and Complainant’s NEXTAG mark in
order to profit from the goodwill associated with the mark. Therefore, the Panel finds that Respondent
has registered and is using the disputed domain name in bad faith pursuant to
Policy ¶ 4(b)(iv). See Allianz of Am.
Corp. v. Bond, FA
680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use
under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users
searching for the complainant to its own website and likely profiting); see
also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <nextag.travel> domain name be TRANSFERRED from Respondent to Complainant.
Dated: May 6, 2008
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National Arbitration Forum
 After the deadline for response expired, Respondent
submitted an email stating: “We are