TRAVELOCITY.COM LP v. Joseph Nathan c/o Mainstream Advertising
Claim Number: FA0902001248403
Complainant is TRAVELOCITY.COM
LP (“Complainant”), represented by CitizenHawk,
The domain names at issue are <travelocitys.com> and <traveocity.com>, registered with Moniker Online Services, 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 February 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 17, 2009 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 and 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <travelocitys.com> and <traveocity.com> domain names are confusingly similar to Complainant’s TRAVELOCITY mark.
2. Respondent does not have any rights or legitimate interests in the <travelocitys.com> and <traveocity.com> domain names.
3. Respondent registered and used the <travelocitys.com> and <traveocity.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a provider of travel services that markets
and sells its services under the TRAVELOCITY mark. Complainant registered the TRAVELOCITY mark
with the United States Patent and Trademark Office (“USPTO”) on
Respondent registered the <traveocity.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 rights in the TRAVELOCITY mark, pursuant to
Policy ¶ 4(a)(i), through its trademark registration
with the USPTO, with the relevant rights dating back to
Complainant requests that the Panel find the disputed domain names to be confusingly similar to its TRAVELOCITY mark. The <traveocity.com> domain name is missing the letter “l” from the TRAVELOCITY mark; the <travelocitys.com> domain name has a letter “s” added to the end of the mark. Both disputed domain names have the generic top-level domain (“gTLD”) “.com” added to the end of the mark. The Panel finds that merely adding or deleting a letter within a mark does not sufficiently distinguish a domain name from a mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).
Because every domain name must contain a top-level domain, the Panel also finds that the disputed domain names are not distinguished from Complainant’s mark by the addition of “.com.” See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1146 (9th Cir. 2002) (“Internet users searching for a company’s Web site often assume, as a rule of thumb, that the domain name of a particular company will be the company name or trademark followed by ‘.com.’”). The Panel therefore finds that the changes to the disputed domain names have not eliminated or diminished the likelihood of confusion between the disputed domain names and Complainant’s mark, and thus, the Panel finds that the disputed domain names are indeed confusingly similar to the TRAVELOCITY mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
The initial burden under Policy ¶ 4(a)(ii) is on Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel finds that Complainant has made a prima facie case, and so the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to the directions provided in Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”).
The Panel finds no evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Complainant asserts that Respondent has no license or agreement with Complainant authorizing Respondent to use the TRAVELOCITY mark, and the WHOIS information identifies Respondent as “Joseph Nathan c/o Mainstream Advertising.” Furthermore, Respondent has not submitted any evidence to counter Complainant’s assertions. Thus, Respondent has not established rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent is using the disputed domain names to redirect Internet users to a website that promotes other third-party websites that compete with Complainant’s business. The Panel finds that Respondent’s use of domain names that are confusingly similar to Complainant’s TRAVELOCITY mark to redirect Internet users to competing websites in this manner is not a bona fide offering of goods or services under Policy ¶ (4)(c)(i), and is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also Geoffrey, Inc. v. Toyrus.com, FA 150406 (Nat. Arb. Forum Apr. 25, 2003) (holding that the respondent’s use of the <toyrus.com> domain name, a simple misspelling of the complainant’s mark, to divert Internet users to a website that featured pop-up advertisements and an Internet directory, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
The Panel finds that Complainant satisfied the elements of Policy ¶ 4(a)(ii).
The Panel finds
that Respondent’s use of Complainant’s TRAVELOCITY mark in the disputed domain names to redirect Internet users to
competing websites suggests that Respondent registered the disputed domain names
with the intention of disrupting Complainant’s business. The Panel consequently finds that Respondent’s
use of the disputed domain names is evidence of bad faith registration and use
under Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a
confusingly similar domain name to attract Internet users to a directory
website containing commercial links to the websites of a complainant’s
competitors represents bad faith registration and use under Policy ¶
4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Under Policy ¶ 4(b)(iv), a respondent is acting in bad faith when using a confusingly similar domain name to attract Internet users for commercial gain. In this case, Respondent is using the disputed domain names to attract users to third-party websites in competition with Complainant’s business. The Panel finds that the disputed domain names are capable of creating a likelihood of confusion with Complainant’s mark and that presumably Respondent has sought to profit from this confusion through click-through fees. Therefore, the Panel finds that Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travelocitys.com> and <traveocity.com> domain names be TRANSFERRED from Respondent to Complainant.
Dated: April 7, 2009
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