Priceline.com, Inc. v. Rakshita Mercantile Private Limited
Claim Number: FA1001001304759
Complainant is Priceline.com, Inc. (“Complainant”), represented
by CitizenHawk, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <pricenline.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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@pricenline.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <pricenline.com> domain name is confusingly similar to Complainant’s PRICELINE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <pricenline.com> domain name.
3. Respondent registered and used the <pricenline.com> domain name 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. 2481112 issued on
Respondent registered the <pricenline.com> domain name on
Complainant
offers evidence that Respondent has a history of registering domain names that
infringe 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 Allianz
SE v. Rakshita Mercantile Private Ltd., FA 1277743 (Nat. Arb. Forum
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.
Respondent registered the <pricenline.com> domain name on
Complainant has obtained multiple trademark registrations
for the PRICELINE.COM mark with the USPTO (e.g.,
Reg. No. 2481112 issued on
Complainant argues that the disputed domain name <pricenline.com> is confusingly similar to the PRICELINE.COM mark because it encompasses the PRICELINE.COM mark in its entirety and only differs with the addition of the letter ‘n’ between the words “price,” and “line.” The Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark due to merely adding the letter ‘n’ in the middle of the mark, which in itself does not create a distinction 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 name is confusingly similar for purposes of 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 name. 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 name. 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 name. The Panel will, however, examine the record
to determine whether Respondent possesses rights or legitimate interests in the
disputed domain name pursuant to Policy ¶ 4(c).
See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant contends that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is Respondent making a noncommercial or fair use of the disputed domain name. Complainant argues that Respondent is using the disputed domain name 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 name 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 name, nor has Complainant given Respondent
permission to use Complainant’s mark.
The WHOIS information for the disputed domain name identifies Respondent
as “Rakshita Mercantile Private Limited,” and there is no further evidence on
record showing that Respondent is commonly known by the disputed domain
name. The Panel finds that without
affirmative evidence of Respondent being commonly known by the disputed domain
name, Respondent lacks rights and legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
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. 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 name
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 cybersquatting 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 Allianz
SE v. Rakshita Mercantile Private Ltd., FA 1277743 (Nat. Arb. Forum
Complainant further contends that Respondent is using the
disputed domain name to divert Internet customers seeking Complainant’s website
to the competitive websites that resolve from the disputed domain name, through
confusion caused by similarity between the PRICELINE.COM mark and the disputed
domain name. The Panel finds that
Respondent’s use of the disputed domain name disrupts Complainant’s business,
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
Respondent is using the disputed domain name to intentionally divert Internet users to the associated website, which displays 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.COM 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 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
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 <pricenline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: March 10, 2010
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