VRBO.com, Inc. v. Linda Grizzle
Claim Number: FA0909001283513
Complainant is VRBO.com, Inc. (“Complainant”), represented by Courtney
Dickey, of HomeAway, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <vrbocleaner.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Dr. Katalin Szamosi as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on September 11, 2009.
On September 11, 2009, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <vrbocleaner.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that the Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 September 15, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 5, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on October 5, 2009.
On October 12, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Dr. Katalin Szamosi as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant states that it has rights in the VRBO mark through its trademark registration with the United States Patent and Trademark Office (Reg. No. 2,820,989). Complainant also contends that Respondent’s <vrbocleaner.com> domain name is confusingly similar to its VRBO mark, since the domain name differs from Complainant’s mark only in the term “cleaner,” which is descriptive of Complainant’s products and in the generic top-level domain (“gTLD”) “.com”.
Complainant contends that Respondent has no rights or legitimate interests in the domain name, since
§ Respondent is not commonly known by the <vrbocleaner.com> domain name nor has it ever been the owner or licensee of the VRBO mark;
§ Respondent is using the <vrbocleaner.com> domain name to operate a website featuring links to competing websites, which is, due to Complainant, neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Complainant argues that Respondent registered and uses the disputed domain name in bad faith. In support of this Complainant contends that
§ Respondent is gaining commercially from its use of the disputed domain name, because the third-party websites are remitting fees to Respondent in exchange for every Internet user who clicks on their links;
§ Respondent intentionally uses the disputed domain name to disrupt Complainant’s business by diverting Internet users, looking for Complainant’s website, to Respondent’s own website (registered May 15, 2009), where there are links to websites of Complainant’s competitors.
Respondent claims in the Response that
§ the domain name is neither identical nor confusingly similar to the VRBO mark, and contends that on the website under vrbocleaner.com it provides information about its cleaning business only;
§ the Complainant has no rights or legitimate interest in the domain name and denies all allegations made by Complainant in respect of the lack of rights and legitimate interest;
§ VRBO is making "frivolous UDRP Claims against domain name users in attempt to use the UDRP to wrongfully strip the legitimate registrant of a desired domain name";
§ Respondent is not using the domain name in bad faith and states that vrbocleaner.com and vrbo.com have different purposes (on the one hand listing vacation rentals and cleaning for vacation home owners on the other).
In the Response Respondent denied all allegations of Complainant, however in most cases Respondent failed to submit detailed argumentation in support of its standpoint.
Complainant, VRBO.com, Inc. is the owner of the VRBO mark, which is registered with the United States Patent and Trademark Office (Reg. No. 2,820,989). The mark is registered in conjunction with vacation real estate listing services. Complainant is the owner of the domain name vrbo.com
Respondent, Linda Grizzle is the owner of the domain name vrbocleaner.com. Respondent used the disputed domain names to operate a website, where it advertised Respondent's cleaning services related to vacation rental homes and also Respondent's own vacation rental home. The website is currently not operating.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.
The Panel finds that Complainant has rights in the VRBO mark pursuant to Policy ¶ 4(a)(i) through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,820,989 issued March 9, 2004).
The Panel finds that adding the largely descriptive term "cleaning" which is also an allusion to Complainant’s rental home business, does not sufficiently distinguish the domain name from that Complainant's mark See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also finds that adding a gTLD to a mark fails to distinguish a domain name from that mark. Therefore, the Panel finds that these changes to the VRBO mark do not eliminate the resulting likelihood of confusion, and finds that Respondent’s <vrbocleaner.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant made a prima facie case that Respondent lacks rights and legitimate interest in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
The WHOIS record for the disputed domain name lists Respondent as “Linda Grizzle.” The Panel therefore finds that Respondent is not commonly known by the <vrbocleaner.com> domain name pursuant to Policy ¶ 4(c)(ii). Respondent failed to submit evidence in respect of its arguments in this regards.
The Panel finds that Complainant did not present sufficient evidence that Respondent is using the <vrbocleaner.com> domain name to operate a website featuring links to competing websites.
However, it is clear from the evidences
submitted by the parties that Respondent was advertising and offering its own
vacation home rental services on the website under the disputed domain. The
Panel finds that this can be considered as competitive use of the domain name. Because of the competitive nature of
Respondent’s use of the disputed domain name, the Panel finds that Respondent
has not made 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). See Bond & Co. Jewelers, Inc. v.
However, the Panel finds that Complainant failed to prove that Respondent is gaining commercially from its use of the disputed domain name, because the third-party websites are remitting fees to Respondent in exchange for every Internet user who clicks on their links.
From the evidences submitted by the parties, the Panel finds that Respondent's main business is cleaning services for vacation rental homes (and not only for VRBO clients). With respect to this, the use of the VRBO mark by Respondent in the disputed domain name can misleadingly suggest to the relevant consumers that there is a license or business relationship between Complainant and Respondent. The Panel finds that such use of the VRBO mark by Respondent should have been made under the license of Complainant. The Panel finds that this conduct of Respondent can be evidence of bad faith.
The Panel highlights that according to the other correspondence from Respondent, Respondent now offers its services under the descriptive domain name cleaningservicesvacationhomes.com. The Panel finds that this shows that the use of the VRBO mark is not necessary and justified for Respondent to offer its cleaning services, which can be a further evidence of the bad faith of Respondent.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <vrbocleaner.com> domain name be TRANSFERRED from Respondent to Complainant.
Dr. Katalin Szamosi, Panelist
Dated: October 26, 2009
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