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DECISION

 

Priceline.com, Inc. v. Pioneer Enterprises Limited c/o Pioneer Enterprises

Claim Number: FA1001001305024

 

PARTIES

Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Pioneer Enterprises Limited c/o Pioneer Enterprises (“Respondent”), Antigua and Barbuda.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <priceiine.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Sandra J. Franklin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 26, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 27, 2010.

 

On January 27, 2010, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <priceiine.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  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 29, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 18, 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@priceiine.com by e-mail.

 

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

 

On March 1, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

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

 

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

 

3.      Respondent registered and used the <priceiine.com> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Priceline.com, Inc., operates its online travel services worldwide.  Complainant holds multiple trademark registrations for the PRICELINE.COM and related marks with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,481,112 issued August 28, 2001).

 

Respondent, Pioneer Enterprises Limited c/o Pioneer Enterprises, registered the <priceiine.com> domain name on March 27, 2005.  Respondent’s disputed domain name resolves to a directory website displaying links to third-party websites, some of which compete with Complainant.

 

Respondent is a cybersquatter who has been the respondent in at least three other UDRP proceedings in which the respective domain names were transferred to the respective Complainants.  See, e.g., Cabela’s, Inc. v. Pioneer Enters. Ltd., FA 1278786 (Nat. Arb. Forum Sept. 21, 2009); Travelocity.com LP v. Pioneer Enters. Ltd., FA 1282629 (Nat. Arb. Forum Oct. 13, 2009); Intuit Inc. v. Pioneer Enters. Ltd., D2009-1439 (WIPO Dec. 7, 2009).

 

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 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.

 

Identical and/or Confusingly Similar

 

The Panel finds that Complainant’s ownership of this trademark with the USPTO sufficiently establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i), even if Complainant’s mark is registered in a country different from that of Respondent.  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 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).

 

Respondent’s disputed domain name is confusingly similar to Complainant’s PRICELINE.COM mark.  Respondent’s disputed domain name <priceiine.com> is simply a misspelling of Complainant’s mark, exchanging the “l” in “priceline” for an “i.”  The Panel finds that a simple misspelling that merely exchanges one letter for another is insufficient to distinguish the disputed domain name from Complainant’s mark.  See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); 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”).  Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s PRICELINE.COM mark.

 

The Panel finds Policy ¶ 4(a)(i) has been satisfied.

 

Rights or Legitimate Interests

 

Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name.  Once Complainant puts forth a prima facie case, the burden shifts to Respondent to demonstrate that it does have rights and legitimate interests in the disputed domain name according to Policy ¶ 4(c).  The Panel finds that Complainant has put forth a sufficient prima facie case in these proceedings.  As Respondent failed to respond to the allegations made against it, the Panel may assume that Complainant’s allegations are true and that Respondent lacks any rights and legitimate interests in the disputed domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).  The Panel, however, elects to consider the evidence in record in light of the Policy ¶ 4(c) factors to determine whether Respondent has any rights and legitimate interests in the disputed domain name.

 

Complainant argues that Respondent is not commonly known by the disputed domain name.  The WHOIS information for the disputed domain name lists the registrant as “Pioneer Enterprises Limited,” evidence that Respondent is not commonly known by the disputed domain name.  The WHOIS information, combined with the lack of any further evidence showing that Respondent is commonly known by the disputed domain name, is sufficient to conclude that Respondent is not commonly known by the disputed domain name and accordingly lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See 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); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).

 

Respondent’s disputed domain name diverts Internet users to a directory website displaying third-party links to websites offering various services, some of which are related to and in competition with Complainant.  The operation of such a website presumably benefits Respondent financially through “click-through” fees.  The Panel finds that this use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).  See Fox News Network, LLC v. Reid, D2002-1085 (WIPO Feb. 18, 2003) (finding that the respondent’s use of the disputed domain name to generate revenue via advertisement and affiliate fees is not a bona fide offering of good or services); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).

 

Complainant asserts that Respondent’s use of a common typo of Complainant’s mark in the disputed domain name constitutes typosquatting.  Complainant argues that Respondent is using this common mistake in order to redirect Internet users searching for Complainant.  The Panel consequently finds that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).  See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that the respondent’s <wwwdinersclub.com> domain name, a typosquatted version of the complainant’s DINERS CLUB mark, was evidence in and of itself that the respondent lacks rights or legitimate interests in the disputed domain name vis á vis the complainant); see also Black & Decker Corp. v. Khan, FA 137223 (Nat. Arb. Forum Feb. 3, 2003) (finding no rights or legitimate interests where the respondent used the typosquatted <wwwdewalt.com> domain name to divert Internet users to a search engine webpage, and failed to respond to the complaint).

 

The Panel finds Policy ¶ 4(a)(ii) has been satisfied.       

 

Registration and Use in Bad Faith

 

Respondent has engaged in a pattern of cybersquatting as evidenced by several adverse UDRP proceedings against Respondent.  See, e.g., Cabela’s, Inc. v. Pioneer Enters. Ltd., FA 1278786 (Nat. Arb. Forum Sept. 21, 2009); Travelocity.com LP v. Pioneer Enters. Ltd., FA 1282629 (Nat. Arb. Forum Oct. 13, 2009); Intuit Inc. v. Pioneer Enters. Ltd., D2009-1439 (WIPO Dec. 7, 2009).  The Panel finds that this pattern of activity constitutes bad faith registration and use under Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Sony Kabushiki Kaisha v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously registered domain names incorporating well-known third party trademarks).

 

Respondent’s disputed domain name redirects to a website featuring links to third-party providers of services, some of which compete with Complainant.  The use of such a website and domain name clearly disrupts Complainant’s business as Internet users arriving at this site may be potential customers lost for Complainant, despite the Internet users’ initial intentions to seek out Complainant.  The Panel finds that this disruption of Complainant’s business and diversion of Internet users to Complainant’s competitors demonstrate bad faith registration and use under Policy ¶ 4(b)(iii).  See 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).”); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site.  The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Respondent misspells Complainant’s mark in the disputed domain name to capture Internet users who unknowingly make a typo when searching for Complainant.  Internet users entering the misspelled version of Complainant’s mark find themselves redirected to a page unaffiliated with Complainant but featuring links to similar goods and services.  It is presumed that Respondent receives compensation from “click-through” fees when any of the Internet users subsequently click on the links located at the disputed domain name’s website.  The Panel finds that these activities establish Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv).  See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to 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 finds Respondent’s practice of typosquatting is itself of bad faith registration and use under 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 Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).  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.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

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

 

 

Sandra J. Franklin, Panelist

Dated:  March 15, 2010

 

 

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