VRBO.com, Inc. v. Vacation Rental Partners
Claim Number: FA0905001260798
Complainant is VRBO.com,
Inc. (“Complainant”), represented by Trey
Herschap of HomeAway, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vacation-rentalsbyowner.com>, registered with Godaddy.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 1, 2009; the National Arbitration Forum received a hard copy of the Complaint May 5, 2009.
On May 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <vacation-rentalsbyowner.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On May 8, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of May 28, 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 by e-mail.
Thereafter on June 11, 2009, Complainant filed a deficient Additional Submission after the deadline for submissions had passed and without the appropriate fee. Complainant subsequently satisfied the fee requirement. The Panel reviewed this Additional Submission but finds that even if the Panel were to give it weight, it’s consideration would not change the outcome in this proceeding.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 4, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <vacation-rentalsbyowner.com>, is confusingly similar to Complainant’s VACATION RENTALS BY OWNER mark.
2. Respondent has no rights to or legitimate interests in the <vacation-rentalsbyowner.com> domain name.
3. Respondent registered and used the <vacation-rentalsbyowner.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, VRBO.com, Inc., is the owner of the VACATION RENTALS BY OWNER mark, registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,839,292 issued May 4, 2004). The VACATION RENTALS BY OWNER mark is used in connection with promotional and marketing materials for its vacation rental property services.
Respondent registered the <vacation-rentalsbyowner.com> domain name July 4, 2008, some four years after Complainant registered its mark. Respondent is using the disputed domain name to resolve to a website containing advertisements and click-through links that further resolve to the third-party websites of Complainant’s competitors.
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."
Given 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 will draw such inferences as the Panel considers to be 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 Complainant to 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 that Complainant established rights in the
VACATION RENTALS BY OWNER mark based on its registration with the USPTO
pursuant to Policy ¶ 4(a)(i). See
Metro. 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)); see also
Complainant alleges that Respondent’s disputed <vacation-rentalsbyowner.com> domain name is confusingly similar to its VACATION RENTALS BY OWNER mark. The disputed domain name incorporates Complainant’s mark in its entirety, with the addition of a hyphen and the generic top-level domain “.com.” The Panel finds that the use of a hyphen fails to differentiate Respondent’s domain name from Complainant’s mark. Additionally, the Panel finds that generic top-level domains are irrelevant for a Policy ¶ 4(a)(i) analysis. See InfoSpace.com, Inc. v. Ofer, D2000-0075 (WIPO Apr. 27, 2000) (finding that “[t]he domain name ‘info-space.com’ is identical to Complainant’s INFOSPACE trademark. The addition of a hyphen and .com are not distinguishing features”); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). Thus, the Panel finds that Respondent’s <vacation-rentalsbyowner.com> domain name is confusingly similar to Complainant’s VACATION RENTALS BY OWNER mark.
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
For the purposes of a Policy ¶ 4(a)(ii) analysis, corresponding to the factors listed in Policy ¶ 4(c), Complainant must first make a prima facie case that Respondent has no rights to and legitimate interests in the disputed domain name. The Panel finds that Complainant has done so in this proceeding. Once Complainant satisfies this burden, the Respondent then has the burden to show that it has relevant rights to or legitimate interests in the disputed domain name under Policy ¶ 4(c). In the present proceeding, Respondent did not file a Response to Complainant’s allegations. Such failure permits the Panel to make an inference that Respondent lacks rights to or legitimate interests in the <vacation-rentalsbyowner.com> domain name. However, this Panel chooses to review the record to determine whether evidence in the record would tend to suggest that Respondent has such rights or legitimate interests pursuant to Policy ¶ 4(c). See 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.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
The WHOIS information for the <vacation-rentalsbyowner.com> domain name lists Respondent as “Vacation Rental Partners.” While the WHOIS information may indicate a possible relationship to the disputed domain name, no evidence in the record supports or corroborates this suggestion. Respondent failed to contradict Complainant’s allegations with any evidence to show that it is commonly known by the disputed domain name under Policy ¶ 4(a)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
The disputed domain name resolves to a website that promotes Complainant’s competitors through the use of click-through advertisements, diverting Internet users to third-party websites. The Panel presumes that Respondent profits from such use and, therefore, finds that Respondent failed to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <vacation-rentalsbyowner.com> domain name resolves to a website that features click-through advertisements that further resolve to websites of Complainant’s competitors. The Panel finds that such use likely disrupts Complainant’s business, and that therefore, Respondent registered and is using the disputed domain name in bad faith pursuant to 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 David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Respondent is intentionally attracting Internet users through the confusingly similar nature of the disputed domain name, presumably for commercial gain through the receipt of click-through fees. The Panel finds that this is an attempt to mislead Internet users as to Complainant’s affiliation with the resolving websites. The Panel therefore finds that this evidence also permits findings that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601 (Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under Policy ¶ 4(b)(iv) where the respondent was using the <dellcomputerssuck.com> domain name to divert Internet users to respondent’s website offering competing computer products and services); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
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 <vacation-rentalsbyowner.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 17, 2009.
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