Priceline.com, Inc. v. Telecom Tech Corp.
Claim Number: FA0912001298293
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <priteline.com>, registered with Bargin Register, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 10, 2009.
On December 16, 2009, Bargin Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <priteline.com> domain name is registered with Bargin Register, Inc. and that Respondent is the current registrant of the name. Bargin Register, Inc. has verified that Respondent is bound by the Bargin Register, 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 December 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 6, 2010 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@priteline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <priteline.com> domain name is confusingly similar to Complainant’s PRICELINE mark.
2. Respondent does not have any rights or legitimate interests in the <priteline.com> domain name.
3. Respondent registered and used the <priteline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Priceline.com, Inc., is a world-wide leader in providing travel services. Complainant owns various trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE mark (e.g., Reg. No. 2,272,659 issued August 24, 1999).
Respondent registered the <priteline.com> domain name on June 17,
2008. Respondent’s disputed domain name
resolves to a website displaying third-party links to websites offering travel
services in competition with Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names
infringing upon the trademark rights of others and has been ordered by previous
UDRP panels to transfer the disputed domain names to the respective
complainants. See Allen Tate Co.
v. Telecom Tech Corp., FA
1278777 (Nat. Arb. Forum Sep. 29, 2009); see also Am.
Airlines, Inc. v. Telecom Tech Corp. c/o Administrator, FA 1224015 (Nat.
Arb. Forum Oct. 29, 2008); see also Baylor Univ. v. Telecom Tech Corp., FA
1142636 (Nat. Arb. Forum Mar. 27, 2008).
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 obtained multiple trademark registrations for the PRICELINE mark with the USPTO (e.g., Reg. No. 2,272,659 issued August 24, 1999). The Panel finds that Complainant has established rights in the PRICELINE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Complainant argues that Respondent’s <priteline.com> domain name is confusingly
similar to Complainant’s PRICELINE mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains a
misspelled version of Complainant’s mark that substitutes a “t” for the “c” and
adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a domain name that
contains a misspelled version a complainant’s mark creates a confusing
similarity between the disputed domain name and the established mark. See Dow Jones & Co., Inc. v. Powerclick,
Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate
introduction of errors or changes, such as the addition of a fourth “w” or the
omission of periods or other such “generic” typos do not change respondent’s
infringement on a core trademark held by the complainant); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum
May 29, 2001) (finding the <belken.com> domain name confusingly similar
to the complainant's BELKIN mark because the name merely replaced the letter
“i” in the complainant's mark with the letter “e”). In addition, the Panel finds that the
addition of a gTLD is irrelevant in distinguishing a disputed domain name from
a registered mark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(finding that the mere addition of the generic top-level domain “.com” is
insufficient to differentiate a disputed domain name from a mark); see also Gardline Surveys Ltd. v. Domain
Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a
top-level domain is irrelevant when establishing whether or not a mark is
identical or confusingly similar, because top-level domains are a required
element of every domain name.”).
Therefore, Respondent’s <priteline.com> domain name is confusingly
similar to Complainant’s PRICELINE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the disputed 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). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). 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. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). 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).
Complainant contends that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). The relevant WHOIS information identifies the registrant of the disputed domain name as “Telecom Tech Corp.” and there is no evidence in the record to suggest that Respondent is otherwise commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name, which it registered on June 17, 2008, to
display links advertising third-party websites in competition with
Complainant’s offering of travel services.
The Panel infers that Respondent is using the disputed domain name to
earn click-through fees, and thus 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
In addition, Complainant
contends that Respondent has engaged in the practice of typosquatting. Respondent is taking advantage of Internet
users that are attempting to reach Complainant, but mistakenly misspelling
Complainant’s PRICELINE mark. The Panel
finds that Respondent’s engagement in the practice of typosquatting is evidence
that Respondent lacks rights and legitimate interests in the disputed domain name
under Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>,
<ltdcommmodities.com>, and <ltdcommodaties.com> domain
names were intentional misspellings of Complainant's LTD COMMODITIES mark
and this “‘typosquatting’ is evidence that Respondent lacks rights or
legitimate interests in the disputed domain names”); see also Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant provides evidence that Respondent has a history
of registering domain names infringing upon the trademark rights of others and
has been ordered by previous UDRP panels to transfer the disputed domain names
to the respective complainants. See
Allen Tate Co. v. Telecom Tech Corp.,
FA 1278777 (Nat. Arb. Forum Sep. 29, 2009); see also Am.
Airlines, Inc. v. Telecom Tech Corp. c/o Administrator, FA 1224015 (Nat.
Arb. Forum Oct. 29, 2008); see also Baylor Univ. v. Telecom Tech Corp., FA
1142636 (Nat. Arb. Forum Mar. 27, 2008).
The Panel finds that a pattern of registration and use of domain names
containing third parties established marks is evidence Respondent has
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(ii). See Westcoast Contempo
Fashions Ltd. v.
Respondent’s disputed domain name resolves to a website featuring links to Complainant’s competitors in the travel services industry. The confusingly similar disputed domain name likely attracts Internet users that are attempting to access Complainant’s website. Those Internet users are unknowingly redirected to the websites of Complainant’s competitors. Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business, which 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
In addition, Respondent is using the disputed domain name to intentionally divert
Internet users to the associated website, which display third-party links to
competing websites. In cases such as
this, the Panel presumes that Respondent is collecting click-through fees and attempting
to profit by creating a likelihood of confusion between Complainant’s PRICELINE
mark and the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the
disputed domain name is further evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb.
Forum July 18, 2006) (finding that the respondent engaged in bad faith
registration and use by using a domain name that was confusingly similar to the
complainant’s mark to offer links to third-party websites that offered services
similar to those offered by the complainant); see also
Lastly, Respondent’s use of the disputed domain name constitutes typosquatting by misspelling Complainant’s PRICELINE mark. Internet users may accidentally misspell Complainant’s mark when attempting to reach Complainant, and may instead reach Respondent’s resolving website and become confused. Respondent attempts to profit from the Internet users’ mistake and confusion. Therefore, the Panel finds Respondent’s practice of typosquatting constitutes bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’. . . through Respondent’s persistent practice of ‘typosquatting’”); see also K.R. USA, INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration and use of the <philadelphiaenquirer.com> and <tallahassedemocrat.com> domain names capitalized on the typographical error of Internet users seeking the complainant's THE PHILADELPHIA INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith pursuant to Policy ¶ 4(a)(iii)).
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 <priteline.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 29, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home
Page