Orbitz, LLC v. Rupen Vikamsey a/k/a Visit
Trade Fair.com a/k/a Deepak Aravind, on behalf of Orbitz Corporate &
Leisure Travels (India) Private Limited
Claim Number: FA0805001190997
PARTIES
Complainant is Orbitz, LLC (“Complainant”), represented by Julie Nichols Matthews, of Wildman, Harrold, Allen & Dixon LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <orbitz-world.com>,
<orbitzmiceindia.com>, and <orbitzexhibitions.com>,
registered with Direct Internet Solutions
Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Alan L. Limbury, as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on May 14, 2008. The National Arbitration Forum received a hard
copy of the Complaint on May 16, 2008.
On May 16, 2008, Direct Internet Solutions Pvt. Ltd. confirmed by
e-mail to the
In response to a notification from the Forum that the Complaint was
deficient in certain respects, the Complainant submitted an amended Complaint
on May 27, 2008 naming “Orbitz Corporate & Leisure Travels (India) Private
Limited aka Rupen Vikamsey and Visit Trade Fair.com and Deepak Aravind” as sole
Respondent in accordance with the Forum’s Supplemental Rule 1(d).
On May 30, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 19, 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@orbitz-world.com,
postmaster@orbitzmiceindia.com, and postmaster@orbitzexhibitions.com by e-mail.
A timely Response was received by the Forum electronically on June 17,
2008 and in hard copy on June 19, 2008.
On June 23, 2008 a timely Additional Submission from the Complainant
was received by the Forum in accordance with the Forum’s Supplemental Rule #7.
On June 25, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant says it has provided travel agency services under the mark
ORBITZ since at least 2001 and is well known under that mark in the United
States and internationally, including in India, where it first registered the
ORBITZ mark on October 9, 2000, No.962147 for computer software for providing
travel information and maps for booking and checking travel reservations and No.962147
for newsletters, pamphlets, magazines, books, instruction manuals, user guides
and reference guides, all in the fields of travel, computers and electronic
communication networks and related areas.
The ORBITZ mark and other ORBITZ-formative marks are registered in over
30 countries. Since 2001 Complainant has spent millions of dollars annually in
promoting its business under the ORBITZ mark. In 2004, through its website at
www.orbitz.com, Complainant began accepting bookings for hotel rooms and car
rentals in
On June 6, 2005, Complainant applied to register the ORBITZ mark in
The domain name <orbitz-world.com>
was registered in the name Rupen Vikamsey on November 17, 2006. The domain
names <orbitzexhibitions.com>
and <orbitzmiceindia.com> were
registered in the name “Visit Trade Fair.com Deepak Aravind” on April 23, 2007
and October 15, 2007 respectively. Complainant says the names in which the
domain names are registered are all aliases of Orbitz Corporate & Leisure
Travels (
According to Complainant, Rupen Vikamsey’s father, V.K. Vikamsey,
operated a travel business in
Complainant says each of the domain names is confusingly similar to its
internationally famous ORBITZ marks. In particular, Complainant says “MICE” is
a commonly used acronym in
B. Respondent
The Response proceeds on the basis that each domain name registrant is
a separate Respondent and accordingly refers throughout to “Respondents”. The
Panel adopts the same approach in this section of its decision, while noting
that the Response does not deny that all the domain names are controlled by
Orbitz Corporate & Leisure Travels (
As a threshold issue, Respondents submit that since they are all from
Respondents say Complainant has no rights in the mark ORBITZ, given the
prior reputation and goodwill of Orbit Tours & Trade Fairs Private Limited in
the mark ORBIT. That company continues to exist and did not cease operations
and split into two separate businesses.
Respondents say the domain names are not confusingly similar to
Complainant’s claimed trademark ORBITZ, having regard to the suffixes, which
are capable of distinguishing Respondents’ domain names. Respondents also refer
in this regard to the different geographic domiciles of the parties, their
different web site content and the different travel-related services they
provide. Respondent agrees that “MICE” stands for “Meetings, Incentives,
Conferences and Exhibitions” in
As to legitimacy, Respondents say that, through use and promotion of
the mark ORBIT since 1988, Orbit Tours & Trade Fairs Private Limited and
the mark have achieved tremendous reputation and goodwill in
In an affidavit included in the Response, Mr. V.K. Vikamsey attests to
the above and says:
“…my son Rupen Vikamsey has been associated with the company Orbit
Tours & Trade Fairs Pvt. Ltd since 1988. Through his sheer hard work and
sincerity, Rupen Vikamsey gradually rose to the position of Business
Development Manager and was working in the said capacity until about November
2006. In or about November 2006, Rupen
Vikamsey incorporated the company Orbitz Corporate & Leisure Travels (I)
Pvt. Ltd. I say that at the time of the
adoption of the name of the said company, I advised Rupen Vikamsey to adopt the
name containing the word ORBIT (as the said name had brought prosperity to my
business). I say that accordingly, my
son Rupen Vikamsey chose the name “Orbitz” so as to retain the word “Orbit” but
at the same time create a fresh and separate name/identity for the new company
i.e. Respondent Company by adding the letter “Z” to the name and word “Orbit”.”
Respondents say in their Response that they adopted the inpugned domain
names in an independent and bona fide
manner “without recourse or reference to domain name of Complainant” [sic];
that their domain names have acquired an enviable reputation and goodwill and
connote and denote Responents’ services. In the circumstances, Respondents are
making a legitimate and fair use of their domain names, without intent to
mislead or divert consumers or tarnish Complainant’s domain name or trade mark
at issue.
Respondents deny bad faith registration and use and say there is no
evidence to support any of the circumstances set out in Policy paragraph 4(b).
In January, 2008, Orbit Tours & Trade Fairs Private Limited filed
an opposition to Complainant’s application No.1362876 to register the trade mark
ORBITZ in classes 39 and 42 in India, on the ground that the mark ORBITZ is
identical with and/or deceptively similar to Orbit Tours & Trade Fairs
Private Limited’s trade mark ORBIT and that the travel-related services in
relation to which Complainant seeks to register the ORBITZ mark are the same or
of the same description as those for which the ORBIT mark is popular.
Respondents also say Complainant is guilty of inordinate delay,
laches and acquiescence since sending its cease-and-desist letter on September
12, 2007.
C. Additional Submission
While the Forum’s Supplemental Rules permit the filing of submissions in addition to the Complaint and Response, they cannot require the Panel to consider them because to do so would be inconsistent with paragraph 12 of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), which does not contemplate unsolicited submissions after the Complaint and Response and gives the Panel the "sole discretion" as to acceptance and consideration of additional submissions. See Eskimos, Inc. v. Phillips, FA 105950 (Nat. Arb. Forum May 15, 2002); see also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002); see also Alain-Martin Pierret v. Sierra Tech. Group, LLC, FA 472135 (Nat. Arb. Forum July 1, 2005).
In this case the Panel admits Complainant’s Additional Submission only insofar as it submits (a) that the Forum does have jurisdiction by virtue of the registration agreements applicable to the disputed domain names; (b) that Respondent’s explanation for the adoption of the word “Orbitz” does not address the choice of the letter “Z”; and (c) that Complainant is not guilty of inordinate delay, laches and acquiescence. None of these issues could reasonably have been anticipated in the Complaint.
FINDINGS
Complainant has established all the elements
entitling it to the relief which it seeks.
DISCUSSION
Jurisdiction
Respondent contends that the Forum lacks jurisdiction because
Respondent resides in
Substantive
issues
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.”
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.
For the purposes of paragraph 4(a)(i) of the Policy, it is sufficient to show that a complainant has rights in a trade mark somewhere in the world at the time of the filing of the Complaint. Whether or not that mark is known anywhere else is a matter for consideration under one or both of paragraphs 4(a)(ii) and (iii).
Complainant has produced evidence
of the registration of its ORBITZ mark in the
The test of identity or confusing
similarity under the Policy is confined to a comparison of the disputed domain
name and the trademark alone, independent of the products or services for which
the domain name is used or other marketing and use factors, usually considered
in trademark infringement cases. See Arthur
Guinness Son & Co. (
Confusion in this context, in the sense of bewilderment or failing to distinguish between things, is a state of wondering whether there is an association, rather than a state of erroneously believing that there is one. An appropriate formulation might be: “Is it likely that, because of the similarity between the domain name on the one hand and the Complainant’s trademark on the other hand, people will wonder whether the domain name is associated in some way with the Complainant?” See SANOFI-AVENTIS v. Trevenio, D2007-0648 (WIPO July 11, 2007).
It is well established that the specific top level of a domain name such as “.com,” “.org,” or “.net” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO April 26, 2000); Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., D2000-1525 (WIPO Feb. 5, 2001) and Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000).
The <orbitz-world.com> domain name contains Complainant’s ORBITZ
mark with the additions of a hyphen and the geographical term “world.” The <orbitzexhibitions.com>
domain name merely adds the descriptive term “exhibitions” to Complainant’s
ORBITZ mark. The <orbitzmiceindia.com> domain name incorporates Complainant’s
ORBITZ mark with the descriptive acronym “MICE,” (which Respondent acknowledges
stands for “Meetings, Incentives, Conferences and Exhibitions” in
The Panel finds that these additions do not sufficiently distinguish any
of the disputed domain names from Complainant’s distinctive ORBITZ mark. Accordingly, the Panel finds each of the
disputed domain names to be confusingly similar to Complainant’s ORBITZ mark
pursuant to Policy ¶ 4(a)(i).
Complainant has established this element of its case.
Complainant claims its ORBITZ mark
was famous by the time Respondent registered the disputed domain names; that
Respondent must have had the ORBITZ mark in mind when effecting those
registrations; that Complainant never gave Respondent permission to use its
ORBITZ mark in any form and that Respondent has offered no legitimate
explanation for the sudden switch in 2006 from use of the ORBIT mark to ORBITZ
in conducting a business that competes with that of Complainant.
Complainant has provided evidence
of the expenditure of large sums of money on advertising and promotion of its
services under the ORBITZ mark prior to the registration of the disputed domain
names and of numerous domain name registrations of its own, including most
notably <orbitz.com> in November 1999 (which it has used as its principal
website); <orbitz.net> on March 24, 2000; <orbitz.org> on May 12,
2000; <orbitz-travel.com> on November 21, 2000; and
<orbitzhotels.com> and <orbitzvacations.com> on August 29, 2001.
The Panel finds that Complainant’s
trade mark ORBITZ was well known internationally by the time the domain names
were registered, not least through use of that mark in the <orbitz.com>
website, accessible throughout the world.
These circumstances and Complainant’s assertions set out above are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain names on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in those names. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 23, 2000) and the cases there cited.
Paragraph 4(c) of the Policy sets
out three illustrative circumstances as examples which, if established by a
respondent, shall demonstrate its rights to or legitimate interests in a domain
name for the purposes of paragraph 4(a)(ii) of the
Policy, i.e.
(i) before any notice to the
respondent of the dispute, the use by the respondent of, or demonstrable
preparations to use, the domain name or a name corresponding to the domain name
in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an
individual, business or other organization) has been commonly known by the
domain name, even if the respondent has acquired no trademark or service mark
rights; or
(iii) the
respondent is making a legitimate non-commercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert customers or to
tarnish the trademark or service mark at issue.
The critical question in this case, determinative of both the legitimacy
issue and the bad faith issue, is whether Respondent had Complainant’s ORBITZ
mark in mind when registering the disputed domain names. If it did, it must
have appreciated that its adoption of the name “Orbitz” in the corporate name Orbitz Corporate & Leisure Travels (
Travel related services provided
over the Internet necessarily involve making bookings, for example for hotels
and airlines, in countries far from the physical base of the service provider.
Thus reputations may be established around the world without a physical
presence outside the provider’s home country. Accordingly, the absence of any
physical presence by Complainant in
The Panel accepts that in 2006 Rupen Vikamsey chose the name “Orbitz” for
his new company so as to retain the name “Orbit”, which possessed considerable
goodwill in the travel industry, while wishing to create a fresh and separate
name/identity for it. However, that explanantion
does not exclude the possibility that when he added the letter “Z” to the name
“Orbit”, Rupen Vikamsey was aware that the chosen name comprised Complainant’s
trade mark and that the disputed domain names would attract consumers wishing
to avail themselves of Complainant’s travel related services. Just because the name “Orbitz” comprises the
trade mark ORBIT with the added letter “Z” does not mean that that name was
chosen solely for that reason and without knowledge of and without intent to
trade off Complainant’s ORBITZ mark.
Although V.K.Vikamsey provided to this Panel an affidavit explaining
how he encouraged his son Rupen Vikamsey to choose a name incorporating the
word “Orbit”, Rupen Vikamsey himself has not provided an affidavit as to why he
chose to add the letter “Z” to that word. The Panel draws the reasonable
inference from his silence that his explanation would not assist the Respondent
in this case.
In light of Rupen Vikamsey’s considerable prior experience in the travel industry in his father’s business and the widespread use of Complainant’s ORBITZ mark internationally on the Internet for years before he chose the name for his new company and registered the disputed domain names, the Panel finds that Rupen Vikamsey was aware of the ORBITZ mark and intended, by adopting the name “Orbitz,” to trade not merely on the goodwill established in the ORBIT mark but also on Complainant’s goodwill and reputation in its ORBITZ mark. Use of a domain name which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services. See Madonna Ciccone v. Parisi and “Madonna.com”, D2000-0847 (WIPO Oct. 16, 2000). Thus no finding of rights or legitimate interests may be found under Policy paragraphs 4(c)(i) or (iii).
Further, although the domain names are controlled by a company which includes the word “Orbitz” as part of its corporate name, no reliance can be placed on Policy paragraph 4(c)(ii) because the Panel finds that that name was chosen with Complainant’s mark in mind.
The Panel finds Respondent has no
rights or legitimate interests in any of the disputed domain names. Complainant
has established this element of its case.
It follows from the finding that the domain
names were chosen with Complainant’s ORBITZ mark in mind that they were
registered and have since been used with the intention of diverting to
Respondent’s travel-related business Internet traffic intended for
Complainant’s travel-related business. One of the disputed domain names, <orbitzmiceindia.com>, was even
registered after Respondent received Complainant’s cease-and-desist letter.
They were thus registered in order to disrupt Complainant’s business and have
been used intentionally to attract, for commercial gain, Internet users to
Respondent’s web sites by creating a likelihood of confusion with Complainant’s
ORBITZ mark as to the source, sponsorship, affiliation and endorsement of
Respondent’s web sites and services.
Accordingly the Panel finds that each of the
disputed domain names was registered and is being used in bad faith.
Complainant has established this element of
its case.
Laches,
Acquiescence and Delay
The remedy available
in an Administrative Proceeding under the Policy is not equitable. Accordingly,
the defence of laches has no application. See
Hebrew
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 <orbitz-world.com>, <orbitzmiceindia.com>, and <orbitzexhibitions.com>
domain names be TRANSFERRED from Respondent to Complainant.
Alan L. Limbury, Panelist
Dated: July 8, 2008
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