Travelzoo Inc. v. Viper a/k/a Slavik Viner
Claim Number: FA0208000117866
Complainant is Travelzoo Inc., Mountain View, CA (“Complainant”) represented by Ralph Bartel. Respondent is Slavik Viner, San Francisco, CA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travelzo.com>, registered with Register.com.
The undersigned certifies that he as acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on August 2, 2002; the Forum received a hard copy of the Complaint on August 5, 2002.
On August 5, 2002, Register.com confirmed by e-mail to the Forum that the domain name <travelzo.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 August 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of August 28, 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 September 16, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Ralph Yachnin 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.
A. Complainant makes the following contentions:
1. Respondent’s <travelzo.com> domain name is confusingly similar to Complainant’s registered TRAVEL ZOO mark.
2. Respondent does not have rights or legitimate interests in the <travelzo.com> domain name.
3. Respondent registered and used the <travelzo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is one of the world’s leading providers of online travel-related news, information and services.
Complainant holds a registered trademark with the U.S. Patent and Trademark Office (“USPTO”) for the TRAVELZOO mark (Reg. No. 2,422,810) denoting, inter alia, the promotion of goods and services of others for travel purposes. Complainant’s TRAVELZOO mark was registered with the USPTO on January 23, 2001 and is listed on the Principal Register; first use is listed as January 26, 1998. Complainant also asserts rights in the TRAVELZOO.COM service mark, used for “providing information and news in the field of travel via an online global communications network.”
Complainant’s TRAVELZOO mark has extensive business contacts and relationships with over 180 “travel supplier clients” including, Hilton, Hertz, Virgin Airlines, Marriott, and Travelocity.com, among others. According to Complainant’s Submission, a polling entity operating under the Media Metrix business name placed Complainant’s <travelzoo.com> website among the top fifteen most visited travel-related websites. Complainant further asserts, “In one of the largest e-commerce studies ever conducted, netsurfers ranked TRAVELZOO.COM #1 among twenty-five leading travel websites.”
Because of Complainant’s continuous and widespread use of the TRAVELZOO mark in connection with its travel-related services, Complainant’s TRAVELZOO mark has gained significant consumer recognition as identifying Complainant’s quality services.
Respondent registered the <travelzo.com> domain name on November 17, 2000. Complainant’s investigation of Respondent’s activities indicates that the subject domain name resolves to a website that offers travel-related services. Respondent’s attached website contains the following links: “Travel,” “Last Minute Travel,” “Travel Deal,” and “Air Travel.”
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.
Although Complainant presently holds a trademark registration for its TRAVELZOO mark (registered on January 23, 2001), for the purposes of this proceeding, it is necessary to establish rights in the mark prior to Respondent’s registration of the domain name on November 17, 2000. Complainant’s Submission contains a significant amount of information that supports a finding of rights in the TRAVELZOO mark since the date of first use, specified as January 26, 1998 by the USPTO.
For almost four years, Complainant has been continuously engaged in the marketing, advertising and sale of high quality travel information and news, marketing all its services and products under the TRAVELZOO mark. Complainant has expended a substantial amount of resources, money, time and effort promoting, marketing, advertising and building consumer recognition and goodwill in its TRAVELZOO mark and corresponding domain name. Complainant’s initial developmental efforts have been an effective investment; its <travelzoo.com> website is visited by 4.2 million Internet users per month. The USPTO’s subsequent registration of Complainant’s TRAVELZOO mark may not constitute prima facie evidence of rights in the mark for the purpose of this proceeding, however, it reinforces Complainant’s assertion of rights in the mark prior to registration. The Panel finds that Complainant has provided significant evidence that supports the finding of rights in the mark prior to Respondent’s registration of the <travelzo.com> domain name. The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights’ means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name Complaint under the policy. See McCarthy on Trademarks and Unfair Competition, § 25:74.2, Vol. 4 (2000).
Respondent’s <travelzo.com> domain name is confusingly similar to Complainant’s TRAVELZOO mark. Respondent’s domain name is nearly identical to Complainant’s mark, except a slight typographical error. Respondent’s mark incorporates Complainant’s TRAVELZOO mark in its entirety, but contains the deletion of the letter “o.” Precedent has determined that the deliberate introduction of errors or insignificant changes, such as the addition or deletion of a letter, does not change Respondent’s infringement on a trademark holder’s rights. See Compaq Info. Techs. Group, L.P. v. Seocho , FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to Complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also American Airlines Inc. v. Data Art Corp., FA 94908 (Nat. Arb. Forum July 11, 2000) (finding <americanairline.com> "effectively identical and certainly confusingly similar" to Complainant's AMERICAN AIRLINES registered marks).
Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has presented a prima facie case before the Panel, comprised of evidence supporting its assertions and inferences. Because Respondent did not submit a Response in this proceeding, it has failed to propose any set of circumstances that would suggest it has rights or interests in the <travelzo.com> domain name under Policy ¶ 4(a)(ii). Complainant’s assertions have gone unopposed and unrefuted. Therefore, it is proper for the Panel to accept all reasonable inferences made by Complainant as true. 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); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
As stated, Respondent’s <travelzo.com> domain name resolves to a website that offers travel-related services, and competes with Complainant’s <travelzoo.com> website and corresponding services. Circumstances indicate that Respondent is engaged in a practice called typosquatting, whereby a registrant seeks to register slight variations of marks in order to capitalize on diverting unsuspecting Internet users to a confusingly similar domain name. Respondent has opportunistically taken advantage of Complainant’s TRAVELZOO mark by creating a website, dedicated to the same field of interest, that is perceived to be affiliated with Complainant’s reputable business. Such use is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it constitute a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent used the domain name to divert Internet users to its competing website); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).
There is no information before this Panel, nor has Respondent submitted any evidence, that would suggest Respondent is commonly known by the <travelzo.com> domain name pursuant to Policy ¶ 4(c)(ii). In fact, Respondent represents itself as “Viper” in the domain name registration agreement, which has no apparent connection with the “travelzo” second-level domain. Complainant’s investigation of Respondent failed to produce any legitimate trademarks, service marks or other intellectual property rights that would signify rights or legitimate interests in the subject domain name. See Hartford Fire Ins. Co. v. Webdeal.com, Inc., FA 95162 (Nat. Arb. Forum Aug. 29, 2000) (finding that Respondent has no rights or legitimate interests in domain names because it is not commonly known by Complainant’s marks and Respondent has not used the domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use); see also 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).
Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s registration of the infringing domain name represents the practice of typosquatting. Complainant’s Submission contains uncontested assertions that Respondent intentionally registered the domain name despite knowledge of Complainant’s rights in the TRAVELZOO mark. It is proper to infer bad faith registration when a Respondent intentionally registers a domain name he knows to be confusingly similar to another’s mark. See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat. Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (awarding <davemathewsband.com> and <davemattewsband.com>, common misspellings of DAVE MATTHEWS BAND to Complainant); see also See 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").
Respondent’s bad faith use of the <travelzo.com> domain name is illustrated by its diversionary use and opportunistic character. As stated, Respondent’s behavior exhibits qualities specific to the practice of typosquatting. Typosquatting, by definition, constitutes bad faith use, as it is the opportunistic registration of a variation of an established mark in a domain name for the purpose of profiting from the confusion that results. Furthermore, Respondent is disrupting Complainant’s business by competing in the same industry while using a variation of Complainant’s TRAVELZOO mark to perpetuate consumer interest. Such use of the domain name constitutes bad faith use pursuant to 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 Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements of the ICANN Policy, the Panel concludes that relief shall be hereby GRANTED.
Accordingly, it is Ordered that the <travelzo.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: September 18, 2002
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page