national arbitration forum

 

DECISION

 

NexTag, Inc. v. Nextag.Travel

Claim Number: FA0803001163853

 

PARTIES

 

Complainant is NexTag, Inc. (“Complainant”), represented by Todd Murtha, of California, USA.  Respondent is Nextag.Travel (“Respondent”), of Alberta, Canada.

 

REGISTRAR AND DISPUTED DOMAIN NAME

 

The domain name at issue is <nextag.travel>, registered with ENCIRCA, 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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

 

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 14, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 18, 2008.

 

On March 19, 2008, ENCIRCA, INC. confirmed by e-mail to the National Arbitration Forum that the <nextag.travel> domain name is registered with ENCIRCA, INC. and that Respondent is the current registrant of the name.  ENCIRCA, INC. has verified that Respondent is bound by the ENCIRCA, 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 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 postmaster@nextag.travel by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On April 22, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson as Panelist.

 

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.

 

RELIEF SOUGHT

 

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

 

PARTIES' CONTENTIONS

 

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.[1]

 

FINDINGS

 

Complainant has registered the NEXTAG mark with both the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,820,935 issued March 9, 2004) and the Canadian Intellectual Property Organization (“CIPO”) (Reg. No. TMA 625,810 issued November 18, 2004).  Complainant uses the mark in connection with Complainant’s Internet based comparison shopping services.  Specifically, Complainant offers a travel comparison shopping service at the website which resolves from the <travel.nextag.com> domain name.  Complainant has offered its travel shopping service for more than seven years.

 

Respondent registered the <nextag.travel> domain name on July 27, 2007.  The disputed domain name currently resolves to a website with a competing travel service.

 

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 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.

 

Identical and/or Confusingly Similar

 

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 Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Metropolitan Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

 

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. Arb. Forum Feb. 27, 2008) (finding the <vacationstogo.travel> domain name identical to the complainant’s VACATIONS TO GO mark); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”), the Panel will nonetheless examine the record to determine if Respondent may have any rights or legitimate interests in the <nextag.travel> domain name pursuant to one of the Policy ¶ 4(c) elements.

 

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).

 

Registration and Use in Bad Faith

 

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 July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks.  Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”).

 

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 <nextag.travel> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Bruce E. Meyerson, Panelist

Dated:  May 6, 2008

 

 

Click Here to return to the main Domain Decisions Page.

 

Click Here to return to our Home Page

 

National Arbitration Forum