Priceline.com, Inc. v. Price-E-line.Com c/o Domain Consultant
Claim Number: FA1002001307893
Complainant is Priceline.com,
Inc. (“Complainant”), represented by CitizenHawk,
Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <priceeline.com>, registered with Tucows Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 12, 2010; the National Arbitration Forum received a hard copy of the Complaint on February 16, 2010.
On February 16, 2010, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <priceeline.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. 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 February 18, 2010, a 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 postmaster@priceeline.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 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <priceeline.com> domain name is confusingly similar to Complainant’s PRICELINE mark.
2. Respondent does not have any rights or legitimate interests in the <priceeline.com> domain name.
3. Respondent registered and used the <priceeline.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Priceline.com, Inc., is a world-wide leader in providing travel services. 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 <priceeline.com> domain name on November 27, 2001. Respondent’s disputed domain name resolves to a website displaying Complainant’s mark and logo along with a link to Complainant’s official website.
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 mark with the USPTO (e.g., Reg. No. 2,272,659 issued August 24, 1999). The Panel finds that Complainant has established rights in the PRICELINE mark for purposes of Policy ¶ 4(a)(i) through its trademark registration with the USPTO. 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 <priceeline.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 “e” and adds the
generic top-level domain (“gTLD”) “.com.”
The Panel finds that the addition of the letter “e” to
Complainant’s mark, fails to create a distinguishable characteristic within the
disputed domain name. 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 the 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 <priceeline.com> domain name is confusingly similar to
Complainant’s PRICELINE mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks all rights and legitimate interests in the disputed domain name. When 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 in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that in this case, Complainant has established a prima facie case and Respondent has failed to submit a Response to these proceedings. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”); see also 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 although Respondent appears to be
commonly known by the disputed domain name from the WHOIS information, without
affirmative evidence of Respondent being commonly known by the disputed domain
name, Respondent lacks all rights and legitimate interests in the disputed
domain name pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc.
v. Arpita, FA 155461 (Nat.
Arb. Forum June 17,
2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com>
domain name despite listing its name as “Shanti Yoga Works” in its WHOIS
contact information because there was “no
affirmative evidence before the Panel that the respondent was ever ‘commonly
known by’ the disputed domain name prior to its registration of the disputed
domain name”); see also City News & Video v.
Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although
Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is
no evidence before the Panel to indicate that Respondent is, in fact, commonly
known by the disputed domain name <citynewsandvideo.com> pursuant to
Policy ¶ 4(c)(ii).”).
Respondent’s disputed domain name resolves to a website that imitates itself as being associated
with Complainant. This imitation is
referred to as “passing off.” The Panel
finds that Respondent’s attempt to pass itself off as an entity associated with
Complainant 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 Dream Horse Classifieds v.
Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s
attempt to pass itself off as the complainant by implementing a color scheme
identical to the complainant’s was evidence that respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii));
see also Crow
v. LOVEARTH.net, FA 203208 (Nat. Arb.
Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or
services, nor an example of a legitimate noncommercial or fair use under Policy
¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to
a registered mark, attempts to profit by passing itself off as Complainant . .
. .”).
In addition, Respondent is taking advantage of Internet
users that are attempting to reach Complainant’s website by capitalizing on the
misspelling of Complainant’s PRICELINE mark. The Panel finds that 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 is using the disputed domain name to pass itself off as being associated with Complainant, presumably for profit. The Panel finds that Respondent’s attempt to profit by causing unknowing Internet users to be confused as to the disputed domain names’ affiliation with Complainant constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
In addition, the Panel finds that Respondent’s disputed domain name is merely a typosquatted version of Complainant’s PRICELINE mark, and that such typosquatting constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See 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)); see also Bank of Am. Corp. v. Tak Ume domains for sale, FA 154528 (Nat. Arb. Forum May 19, 2003) (“Respondent’s registration and use of the disputed domain name demonstrates a practice commonly referred to as ‘typosquatting.’ This practice diverts Internet users who misspell Complainant’s mark to a website apparently owned by Respondent for Respondent’s commercial gain. ‘Typosquatting’ has been recognized as evidencing bad faith registration and use…”).
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 <priceeline.com> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: March 29, 2010
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