national arbitration forum

 

DECISION

 

Priceline.com, Inc. v. Domain Proxies, LLC

Claim Number: FA1001001303913

 

PARTIES

Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Domain Proxies, LLC (“Respondent”), Dominican Republic.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <priceilne.com>, registered with Dotregistrar.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 20, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 21, 2010.

 

On January 20, 2010, Dotregistrar confirmed by e-mail to the National Arbitration Forum that the <priceilne.com> domain name is registered with Dotregistrar and that Respondent is the current registrant of the name.  Dotregistrar has verified that Respondent is bound by the Dotregistrar 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 January 22, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 11, 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@priceilne.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE mark (including Reg. No. 2,272,659, issued August 24, 1999) in connection with its marketing of travel agency services.

 

Respondent is not sponsored by or legitimately affiliated with Complainant and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.

 

Respondent registered the <priceilne.com> domain name on May 19, 2003. 

 

The disputed domain name resolves to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.

 

Respondent’s <priceilne.com> domain name is confusingly similar to Complainant’s PRICELINE mark.

 

Respondent does not have any rights to or legitimate interests in the <priceilne.com> domain name.

 

Respondent used a typographical error in forming the disputed domain name by transposing two letters in Complainant’s mark.

 

Respondent registered and uses the <priceilne.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

(1)   the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of the domain name; and

(3)   the same domain name was registered and is being used by Respondent in bad faith.

 

DISCUSSION

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the PRICELINE trademark under Policy ¶ 4(a)(i) through its registration of the mark with the USPTO.  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007):

 

As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).

 

It is of no consequence for purposes of the Policy that Complainant’s mark is registered with the pertinent trademark authorities in the United States while Respondent resides in the Dominican Republic. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that a mark be registered in the country in which a respondent operates; rather, it is sufficient that a complainant can demonstrate a mark registered in some jurisdiction).

 

Respondent’s domain name is similar to Complainant’s PRICELINE mark because the domain name merely transposes two letters in Complainant’s mark and adds the generic top-level domain (“gTLD”) “.com.”  The evidently deliberate transposition of two letters does not avoid a finding of confusing similarity between the disputed domain name and the mark.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to a complainant’s GOOGLE mark, and noting that:

 

[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error.

 

See also Delta Corporate Identity, Inc. v. SearchTerms, FA 590678 (Nat. Arb. Forum Dec. 14, 2005) (concluding that the <dleta.com> domain name was confusingly similar to a complainant’s DELTA mark). 

 

Similarly, the addition of a gTLD to a domain name is irrelevant in distinguishing the domain name from a competing mark.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent has no rights to or legitimate interests in the disputed domain name.  Once Complainant makes out a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain name.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if a 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.”). 

 

Complainant has established a prima facie case in support of its contentions, and Respondent, for its part, has failed to submit a Response to these proceedings.  We are therefore free to conclude that Respondent has no rights to or legitimate interests in the contested domain name that are cognizable under the Policy.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):

 

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).

 

Nevertheless, we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name sufficient for purposes of the Policy.

 

We begin by noting that the pertinent WHOIS information lists the registrant only as “Domain Proxies, LLC,” and that Complainant alleges, and Respondent does not deny, that Respondent is not sponsored by or legitimately affiliated with Complainant and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.  On these facts, we are constrained to conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the relevant WHOIS information gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that that respondent was commonly known by the domain name, and where a complainant asserted, without contradiction from that respondent, that it did not authorize or license that respondent’s use of its mark in a domain name).

 

We also observe that there is no dispute as to complainant’s assertion that the contested domain name resolves to a website featuring links to third-party websites, some of which directly compete with Complainant’s business.  This use of the domain is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel found not to be a use in connection with 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s mark to send Internet users to a website which displayed a series of links, some of which resolved to the web sites of that complainant’s competitors, was not a bona fide offering of goods or services within the meaning of the Policy).

 

Complainant alleges that Respondent used a common typographical error in forming the disputed domain name by deliberately transposing two letters in Complainant’s mark.  Respondent does not deny this assertion. This deliberate behavior is evidence that Respondent lacks rights to 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 domain names <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> 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 IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that a respondent lacked rights to and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

The Panel therefore finds that the requirements of Policy ¶ 4(a)(ii) have been satisfied.

 

Registration and Use in Bad Faith

 

Respondent’s registration and use of the disputed domain name to link Internet users to websites featuring third-party links which are in competition with the business of Complainant constitutes disruption of Complainant’s business and evidences bad faith registration and use of the contested domain name 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 domain name confusingly similar to a competing mark in order 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 of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to a complainant’s commercial competitors).

 

In addition, Respondent is using the disputed domain name to display links to competing websites to attract Internet users, presumably profiting from the receipt of click-through fees, at the same time creating a strong likelihood of confusion with Complainant’s PRICELINE mark.  This is also evidence of bad faith registration and use of the disputed domain name pursuant to Policy ¶ 4(b)(iv).  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a respondent engaged in bad faith registration and use of a domain name by using it to offer links to third-party websites featuring services similar to those offered by a complainant); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iv) by using the domain to operate a commercial search engine with links to the products of a complainant and that complainant’s commercial competitors).

 

Finally under this head of the Complaint, Respondent has engaged in typo-squatting by intentionally misspelling Complainant’s PRICELINE mark in forming the contested domain name.  Typo-squatting is itself evidence of bad faith registration and use of the subject domain name pursuant to Policy ¶ 4(a)(iii).  See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):

 

Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors.  Typosquatting is inherently parasitic and of itself evidence of bad faith.

 

To the same effect, see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003).

 

For these reasons, the Panel find that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <priceilne.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  March 4, 2010

 

 

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