Priceline.com, Inc. v. Jan Cerny c/o Poste restante
Claim Number: FA1002001307053
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <plriceline.com>, registered with Hebei International Trading ( Shanghai) Co., Ltd.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically February 5, 2010; the National Arbitration Forum received a hard copy of the Complaint February 9, 2010. The Complaint was submitted in both Slovakian and English.
8, 2010, Hebei International Trading (
On February 18, 2010, a Slovakian Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 10, 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 17, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <plriceline.com>, is confusingly similar to Complainant’s PRICELINE mark.
2. Respondent has no rights to or legitimate interests in the <plriceline.com> domain name.
3. Respondent registered and used the <plriceline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Priceline.com, Inc., provides travel services online through its PRICELINE mark. 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 <plriceline.com> domain name May 17, 2009. Respondent’s disputed domain name resolves to a website displaying links to third-party websites that compete with Complainant’s travel services business.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided evidence of multiple trademark registrations for its PRICELINE mark with the USPTO (e.g., Reg. No. 2,272,659 issued August 24, 1999). The Panel finds that Complainant’s registrations of the PRICELINE mark with the USPTO are sufficient to find that Complainant established rights in the PRICELINE mark for purposes of Policy ¶ 4(a)(i). 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 <plriceline.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 by adding the letter “l.” The disputed domain name also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s PRICELINE mark. The Panel finds that addition of the letter “l” to Complainant’s mark fails to distinguish the disputed domain name from Complainant’s mark. 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 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). In addition, the Panel finds that 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 <plriceline.com> domain name is confusingly similar to Complainant’s PRICELINE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent does not have rights to 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 that Complainant 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,
Complainant contends that Respondent is neither commonly known by nor licensed to register the disputed domain name. The Panel finds that the registrant’s WHOIS information for the disputed domain name identifies “Jan Cerny c/o Poste restante,” which on its face demonstrates that Respondent is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶4(c)(ii), the Panel finds that Respondent is not commonly known by the disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent is using the disputed domain name to display links advertising third-party websites in competition with Complainant’s offering of travel services. Under such circumstances, the Panel is permitted to make an inference that Respondent is using the disputed domain name to earn click-through fees, and thus that Respondent is not making 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).
Furthermore, typosquatting occurs when a respondent
purposefully includes typographical errors in the mark portion of a disputed
domain name in order to divert Internet users who make that
typographical errors to Respondent’s own site. The disputed domain name
takes advantage of Internet users who mistype Complainant’s PRICELINE mark.
Complainant contends that Respondent has engaged in typosquatting by
misspelling Complainant’s mark in the disputed domain name and the Panel agrees.
The Panel finds that Respondent’s typosquatting is further evidence that
Respondent does not have rights or legitimate interests in the disputed domain
name pursuant to Policy ¶ 4(a)(ii). See LTD Commodities LLC v. Party
Night, Inc., FA 165155 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The Panel finds that Respondent intended to disrupt
Complainant’s business and take advantage of the goodwill surrounding Complainant’s
mark by displaying third-party links to Complainant’s competitors in the travel
services industry. Therefore, the Panel
finds that Respondent engaged in bad faith registration and use pursuant to
Policy ¶ 4(b)(iii).
See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent registered and used the domain name in
bad faith, pursuant to Policy ¶ 4(b)(iii), because it is operating on behalf of
a competitor of Complainant . . .”); see also
Additionally, Respondent created a substantial likelihood of confusion as to the source and affiliation of the disputed domain name and the corresponding website. Respondent benefits from such a likelihood of confusion, and likely receives click-through fees for displaying links to competing travel services on the website resolving from the confusingly similar disputed domain name. The Panel finds that Respondent’s use of the disputed domain name evidences Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003) (“Although Complainant’s principal website is <century21.com>, many Internet users are likely to use search engines to find Complainant’s website, only to be mislead to Respondent’s website at the <century21realty.biz> domain name, which features links for competing real estate websites. Therefore, it is likely that Internet users seeking Complainant’s website, but who end up at Respondent’s website, will be confused as to the source, sponsorship, affiliation or endorsement of Respondent’s website.”); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
Finally, the Panel finds that
Respondent’s typosquatting also constitutes evidence that Respondent registered
and is using the disputed
domain name in bad faith pursuant to Policy ¶ 4(a)(iii).
See Zone Labs, Inc.
v. Zuccarini, FA 190613 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <plriceline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: March 31, 2010
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