Greater
Claim Number: FA0905001263850
Complainant is Greater
Houston Convention & Visitors Bureau (“Complainant”), represented by Cathryn A. Berryman, of Winstead, P.C.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <visithouston.org>, registered with Moniker Online Services Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 19, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 20, 2009.
On May 20, 2009, Moniker Online Services Inc. confirmed by e-mail to the National Arbitration Forum that the <visithouston.org> domain name is registered with Moniker Online Services Inc. and that Respondent is the current registrant of the name. Moniker Online Services Inc. has verified that Respondent is bound by the Moniker Online Services 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 May 26, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 15, 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 postmaster@visithouston.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 17, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <visithouston.org> domain name is identical to Complainant’s VISITHOUSTON mark.
2. Respondent does not have any rights or legitimate interests in the <visithouston.org> domain name.
3. Respondent registered and used the <visithouston.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Greater Houston Convention & Visitors Bureau, is the primary sales and marketing arm of the City of Houston, Texas and Harris County, Texas. Complainant provides services with the mission to attract conventions and tourists to the area and promote the Greater Houston area. Complainant has used the VISITHOUSTON mark since 2005 and holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the VISITHOUSTON mark (i.e., Reg. No. 3,416,020 issued April 22, 2008).
Respondent registered <visithouston.org> domain name on October 27, 2008. Respondent is using the domain name to redirect Internet users interested in Complainant and Complainant’s services to a commercial website that hosts unrelated links, a search engine, and advertisements.
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.
The Panel finds Complainant has established rights under
Policy ¶ 4(a)(i) in the VISITHOUSTON mark through its registration with the
USPTO. 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 Reebok Int’l Ltd. v.
Respondent’s <visithouston.org> domain name is identical to Complainant’s mark except for the addition of a generic top-level domain “.org.” The Panel finds the addition of a top-level domain name is irrelevant in a Policy ¶ 4(a)(i) analysis and thus finds the disputed domain name is identical to Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <visithouston.org> domain
name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to
Respondent’s failure to respond to the Complaint, the Panel may assume that
Respondent does not have rights or legitimate interests in the disputed domain
name. However, the Panel will examine
the record to determine whether Respondent has rights or legitimate interests
in the disputed domain name under Policy ¶ 4(c). See
Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a
substantive answer in a timely fashion, the Panel accepts as true all of the
allegations of the complaint.”); see also
Broadcom Corp. v. Ibecom PLC,
FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to
the Complaint functions as an implicit admission that [Respondent] lacks rights
and legitimate interests in the disputed domain name. It also allows the Panel to accept all
reasonable allegations set forth…as true.”).
Respondent is using the <visithouston.org> domain name to operate a website featuring advertisements and search links unrelated to Complainant. The Panel finds Respondent’s use of a domain name identical to Complainant’s mark for this purpose is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Respondent’s website resolving from the disputed domain name
also solicits offers for sale of the domain name. The Panel finds Respondent’s
solicitation for offers to purchase the disputed domain name identical to
Complainant’s mark is not a use in connection with a bona fide offering of goods and services pursuant to Policy ¶
4(c)(i) or a legitimate noncommercial or fair use of the domain name pursuant
to Policy ¶ 4(c)(iii). See Skipton Bldg. Soc’y v. Colman,
D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where the
respondent offered the infringing domain name for sale and the evidence suggests
that anyone approaching this domain name through the worldwide web would be
"misleadingly" diverted to other sites); see also Mothers Against Drunk
Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003)
(holding that under the circumstances, the respondent’s apparent willingness to
dispose of its rights in the disputed domain name suggested that it
lacked rights or legitimate interests in the domain name).
Respondent has offered no evidence and there is no evidence
in the record suggesting that Respondent is commonly known by the <visithouston.org>
domain name. Complainant asserts that the Respondent is
not associated with Complainant and is not authorized to use Complainant’s
VISITHOUSTON mark. The WHOIS information
identifies Respondent as “Jan Barta” located in the
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <visithouston.org> domain name, which is identical to
Complainant’s VISITHOUSTON mark, to solicit offers for the purchase of the
disputed domain name presumably for an amount in excess of Respondent’s
out-of-pocket registration costs. The
Panel finds that that such use constitutes an attempt to sell and is evidence
of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
CBS Broad. Inc. v. Worldwide Webs,
Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently
wrongful in the offer or sale of domain names, without more, such as to justify
a finding of bad faith under the Policy. However, the fact that domain name
registrants may legitimately and in good faith sell domain names does not imply
a right in such registrants to sell domain names that are identical or confusingly
similar to trademarks or service marks of others without their consent”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
general offer of the disputed domain name registration for sale establishes
that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
The Panel infers that Respondent
receives click-through fees for diverting Internet users to search links and
advertisements. Because the disputed
domain name is identical to Complainant’s mark, Internet users accessing
Respondent’s domain name may become confused as to Complainant’s affiliation
with the resulting website. Therefore,
Respondent’s use of the <visithouston.org> domain name constitutes bad faith registration
and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <visithouston.org> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 29, 2009
National
Arbitration Forum
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