RCI TM CORP. v. CrucialDomain.com
Claim Number: FA1002001309184
Complainant is RCI TM CORP. (“Complainant”), represented by Susan
L. Crane, of Wyndham Worldwide Corporation,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <rcitravel.com>, registered with Tucows, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 22, 2010. With its Complaint, Complainant also chose to proceed entirely electronically under the new Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”) and the new Forum’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”) by submitting an “opt-in” form available on the Forum’s website.
On February 22, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <rcitravel.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 24, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@rcitravel.com. Also on February 24, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 24, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (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 (effective March 1, 2010, but opted-in to by Complainant for this case) "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <rcitravel.com> domain name is identical to Complainant’s RCI TRAVEL mark.
2. Respondent does not have any rights or legitimate interests in the <rcitravel.com> domain name.
3. Respondent registered and used the <rcitravel.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RCI TM Corp., is a global provider of timeshare and other non-hotel vacation properties operating in 100 countries with 73,000 properties. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its RCI TRAVEL mark (e.g., Reg. No. 1,755,767 issued on March 2, 1993). Complainant also submits into evidence numerous international trademark registrations that it holds for its RCI marks.
Respondent registered the <rcitravel.com> domain name on December 12, 2003. Respondent’s disputed domain name resolves to a website that displays third-party links to other travel and timeshare service websites as well as a link to Complainant’s official <rci.com> domain name.
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 owns numerous trademark registrations with the USPTO for its RCI TRAVEL mark (e.g., Reg. No. 1,755,767 issued on March 2, 1993). Complainant also owns many international registrations for its RCI and RCI TRAVEL marks. The Panel finds that Complainant has submitted sufficient evidence to establish rights in its RCI TRAVEL mark for purposes of Policy ¶ 4(a)(i). 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 Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)); see also Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark office (‘USPTO’)”).
Complainant argues that Respondent’s <rcitravel.com> domain name is
identical to its RCI TRAVEL mark.
Complainant contends that removing the space between the words and
adding the generic top level domain (“gTLD”) “.com” is not sufficient to
distinguish the disputed domain name from its mark. Complainant further submits that Respondent’s
domain name is closely related to Complainant’s official <rci.com> domain
name. The Panel finds that Respondent’s
disputed domain name is identical to Complainant’s mark under Policy ¶ 4(a)(i), where it contains Complainant’s mark in its entirety
and merely deletes the space between the words of the mark and adds the gTLD
“.com.” See
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 Complainant has produced a prima facie case the burden shifts to 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 Complainant has produced a prima facie case. Due to 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. 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 argues that Respondent has not been granted permission to use Complainant’s mark, nor is Respondent commonly known by the <rcitravel.com> domain name. The WHOIS information identifies Respondent as the registrant of the domain name. Respondent has not come forward with evidence showing that it is commonly known as the disputed domain name. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <rcitravel.com> domain name pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Respondent’s disputed domain name resolves to a website that displays third-party links to the websites of Complainant, as well as Complainant’s competitors in the vacation hosting and timeshare travel business. Complainant contends that this use does not qualify as a bona fide offering of goods or services or a noncommercial or fair use, because Respondent is likely profiting from the confusing similarity of the <rcitravel.com> domain name to Complainant’s RCI TRAVEL mark. The Panel finds that Respondent’s use of a confusingly similar domain name to divert Internet users to its website where it likely profits from click-through links to the competitors of Complainant as well as Complainant is not in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute 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).”). Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the <rcitravel.com> domain name pursuant to Policy ¶ 4(a)(ii).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant sets forth the argument that Respondent’s
holding of the <rcitravel.com>
domain name is a disruption to its business.
Complainant contends that by using a confusingly similar domain name to
its mark, Respondent is diverting Internet users to its website where links to
Complainant’s competitors are displayed, thus taking business from
Complainant. The Panel finds that
Respondent’s use of the disputed domain name is evidence of bad faith registration
and use under Policy ¶ 4(b)(iii), where it diverts
Internet users to the websites and businesses of Complainant’s competitors
using a confusingly similar domain name.
See
Complainant also argues that Respondent is benefiting
commercially through its use of its confusingly similar domain name by
collecting click-through fees for the third-party links displayed. Complainant further argues that diverting
Internet users seeking Complainant’s services and products to a directory
website that contains links to the competitors of Complainant is evidence of
bad faith registration and use. The
Panel finds that Respondent’s use of the <rcitravel.com>
domain name to profit from click-through fees is evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Dell Inc. v. Innervision Web Solutions, FA 445601
(Nat. Arb. Forum May 23, 2005) (finding evidence of bad faith under
Policy ¶ 4(b)(iv) where the respondent was using the
<dellcomputerssuck.com> domain name to divert Internet users to
respondent’s website offering competing computer products and services); see also
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 <rcitravel.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: April 7, 2010
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