Priceline.com, Inc. v. Open Water Enterprises Limited c/o Louis S
Claim Number: FA1001001303930
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <epriceline.com>, <jpriceline.com>, and <priceiline.com>, registered with Fabulous.com Pty Ltd.
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.
Louis E. Condon as Panelist.
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, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <epriceline.com>, <jpriceline.com>, and <priceiline.com> domain names are registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the names. Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. 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 27, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 16, 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@epriceline.com, postmaster@jpriceline.com, and postmaster@priceiline.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 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <epriceline.com>, <jpriceline.com>, and <priceiline.com> domain names are confusingly similar to Complainant’s PRICELINE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <epriceline.com>, <jpriceline.com>, and <priceiline.com> domain names.
3. Respondent registered and used the <epriceline.com>, <jpriceline.com>, and <priceiline.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Priceline Inc., is an international online travel service provider that receives 16 million visitors per month to its website. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE.COM mark (e.g., Reg. No. 2,481,112 issued on August 28, 2001).
Respondent registered the <epriceline.com>, <jpriceline.com>,
and <priceiline.com> domain names from September 11, 2005 to
November 20, 2005. Respondent’s disputed
domain names resolve to a website that displays third-party links to websites
offering travel services in competition with Complainant.
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe upon the trademark rights of others and has been order by previous
UDRP panels to transfer the domain names at issue in those proceedings to the
respective complainants. See Mary Kay Inc. v. Open Water Enters. Ltd.,
FA 1286701 (Nat. Arb. Forum Nov. 12, 2009); see
also Retail Brand Alliance Inc. v. Open Water Enters. Ltd., FA 1153556
(Nat. Arb. Forum April 16, 2008); see
also
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.COM mark with the USPTO (e.g., Reg. No. 2,481,112 issued on August 28, 2001). The Panel finds that Complainant has established rights in the PRICELINE.COM mark for the purposes of Policy ¶ 4(a)(i) through its trademark registration 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).”); see also 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.”). The Panel further finds that the trademark registration need not be in the country in which Respondent resides for the purposes of Policy ¶ 4(a)(i). See 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); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country).
Complainant argues that the disputed domain names <epriceline.com>, <jpriceline.com>,
and <priceiline.com> are confusingly similar to the PRICELINE.COM
mark because each disputed domain name encompasses the entire PRICELINE.COM
mark with common misspellings of the mark in each disputed domain name. Complainant further argues that by adding the
letters, “e,” “j,” and “i” to its PRICELINE.COM mark, respectively, that
Respondent has not created a distinctive domain name, but rather Respondent’s disputed
domain names are confusinly similar to Complainant’s mark. The Panel finds that Respondent’s disputed
domain names that encompass the entire trademark of Complainant and simply add
a letter to the mark are not distinguishable from the mark for purposes of
Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004)
(“The mere addition of a single letter
to the complainant’s mark does not remove the respondent’s domain names from
the realm of confusing similarity in relation to the complainant’s mark
pursuant to Policy ¶ 4(a)(i).”); see also
Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18,
2000) (finding that, by misspelling words and adding letters to words, a
respondent does not create a distinct mark but nevertheless renders the domain
name confusingly similar to the complainant’s marks). Therefore, the Panel finds that the disputed domain names are
confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent does not have any rights or legitimate interests in the disputed domain names. Complainant is required to make a prima facie case in support of these allegations. Once the Complainant has produced a prima facie case the burden shifts to the Respondent to show it does have rights or legitimate interests in the disputed domain names. 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 Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that the Complainant has produced a prima facie case. Due to the Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the disputed domain names. The Panel will, however, examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Complainant contends that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, nor is Respondent making a noncommercial or fair use of the disputed domain names. Complainant argues that Respondent is using the disputed domain names to resolve to a website that offers click-through links and advertisements for Complainant’s competitors in the online travel service market, presumably for financial gain. The Panel finds that Respondent’s use of the disputed names to redirect Internet users to Complainant’s competitors, presumably for financial gain, does not constitute 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 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); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find 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)).
Complainant further contends that Respondent is not commonly known by the disputed domain names, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information for the disputed domain names identifies Respondent as “Open Water Enterprises Ltd. c/o Louis S,” and there is no further evidence on record showing that Respondent is commonly known by the disputed domain names. The Panel finds that without affirmative evidence of Respondent being commonly known by the disputed domain names, Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Complainant further asserts that Respondent is taking
advantage of Internet users that are attempting to reach Complainant’s website
by capitalizing on the misspelling of the Complainant’s PRICELINE.COM
mark. Complainant notes that this method
of diversion is called typosquatting and is evidence that Respondent does not
have rights or a legitimate interest in the disputed domain names for purposes
of Policy ¶ 4(a)(ii).
The Panel finds that the Respondent’s engagement in the practice of
typosquatting is evidence that Respondent lacks rights and legitimate interests
in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent’s repeated engagement
in cybersqatting is further evidence of bad faith. Complainant references past WIPO and NAF
decisions against Respondent as evidence of a pattern of bad faith registration
of domain names of well known parties. See Mary Kay Inc. v. Open Water Enters. Ltd., FA 1286701 (Nat. Arb.
Forum Nov. 12, 2009); see also Retail
Brand Alliance Inc. v. Open Water Enters. Ltd., FA 1153556 (Nat. Arb. Forum
April 16, 2008); see also
Complainant further contends that Respondent is using the disputed domain names to divert Internet customers seeking Complainant’s website to competitive websites that resolve from the disputed domain names, through confusion caused by similarity between the PRICELINE.COM mark and the disputed domain names, is disrupting Complainant’s business. The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business by intentionally diverting Internet users to competitors’ websites, and is evidence of registration and use in bad faith pursuant to Policy 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com>domain name in bad faith pursuant to ICANN Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant’s mark to divert Internet users to a competitor’s website. It is a reasonable inference that Respondent’s purpose of registration and use was to either disrupt or create confusion for Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii) [and] (iv).”).
Respondent is using the disputed domain names to intentionally divert Internet users to its website, which displays third-party links to websites in competition with Complainant. 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.COM mark and the confusingly similar disputed domain names. The Panel finds that Respondent’s use of the disputed domain names is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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).
The Panel has already determined that Respondent has engaged in typosquatting. This practice has been found to constitute evidence by itself of bad faith registration and use under Policy ¶ 4(a)(iii). See Nextel Commc’ns Inc. v. Geer, FA 477183 (Nat. Arb. Forum July 15, 2005) (finding that the respondent’s registration and use of the <nextell.com> domain name was in bad faith because the domain name epitomized typosquatting in its purest form); see also Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <epriceline.com>, <jpriceline.com>, and <priceiline.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 10, 2010
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