national arbitration forum

 

DECISION

 

CheapCaribbean.com, Inc. v. Texas International Property Associates - NA NA

Claim Number: FA1003001312206

 

PARTIES

Complainant is CheapCaribbean.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA.  Respondent is Texas International Property Associates - NA NA (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com>, registered with Compana, LLC.

 

PANEL

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.

 

Terry F. Peppard as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2010.

 

On March 10, 2010, Compana, LLC confirmed by e-mail to the National Arbitration Forum that the domain names <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com> are registered with Compana, LLC and that Respondent is the current registrant of the names.  Compana, LLC has verified that Respondent is bound by the Compana, LLC 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 March 10, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 30, 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@cheapcaibbean.com, postmaster@cheapcarabbean.com, postmaster@cheapcaribeean.com, and postmaster@cheapcribbean.com.  Also on March 10, 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 April 7, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.

 

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" 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.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

Complainant provides travel agency services, including reservations and bookings for transportation, through a website on the Internet. 

 

Complainant began travel services operations in December of 2000, and first used the CHEAPCARIBBEAN.COM mark in commerce on December 10, 2000. 

 

Complainant’s domain name averages over half a million visitors each month, and provided travel-related services to more than 250,000 customers in 2009. 

 

Complainant has spent hundreds of thousands of dollars in advertising and promoting its mark on the Internet.

 

Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHEAPCARIBBEAN.COM mark (including Reg. No. 3,316,639, issued October 23, 2007). 

 

Respondent is not sponsored by or legitimately affiliated with Complainant in any way, and Complainant has not given Respondent permission to use Complainant’s mark in a domain name.

 

Respondent registered each of the <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com> domain names on or about February 10, 2005. 

 

The disputed domain names redirect Internet users to a website displaying links to third-party websites, some of which compete with Complainant’s business.

 

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.    

 

The <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com> domain names are confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark.

 

Respondent does not have rights to or legitimate interests in any of these domain names.

 

Respondent’s domain names are designed, via the device known as typo-squatting, to take advantage of Internet users’ common typographical errors. 

 

Respondent registered and uses all of the disputed domain names in bad faith.

 

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

 

FINDINGS

(1)   the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and

(2)   Respondent has no rights to or legitimate interests in respect of any of the domain names; and

(3)   All of the same domain names were registered and are being used by Respondent in bad faith.

 

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 a 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:

 

i.         the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

ii.       Respondent has no rights or legitimate interests in respect of the domain name; and

iii.      the domain name has been registered and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established rights in the CHEAPCARIBBEAN.COM trademark pursuant to Policy ¶ 4(a)(i) through its registration of the mark with the USPTO. 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 Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006): “Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”

 

Complainant also asserts common law rights in its CHEAPCARIBBEAN.COM mark, tracing from its commencement of business operations in 2000. While spare, the record before is minimally sufficient to establish that the mark has acquired secondary meaning in the marketplace, and, therefore, that Complainant has common law rights in the mark under Policy ¶ 4(a)(i) pre-dating Respondent’s registration of the contested domain names in 2005.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); further see Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding that, while a complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”).

 

Complainant claims Respondent’s <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com> domain names are confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark.  Two of the disputed domain names delete a letter from Complainant’s mark.  The other two domain names replace a letter within Complainant’s mark.  The deletion or replacement of a letter in forming one or more domain names from a mark does not render the domain names distinct from the mark for purposes of the Policy.  See 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 instead renders the domain name confusingly similar to a complainant’s marks); see also Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to a complainant's BELKIN mark because the name merely replaced the letter “i” in that complainant's mark with the letter “e”); further see Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from a complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); finally, see Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to a complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).

 

Similarly the addition of the generic top level domain (“gTLD”) “.com” is not enough to distinguish the disputed domain name from Complainant’s SCOTCH mark.  A gTLD is not relevant in distinguishing the disputed domain name from Complainant’s mark because a gTLD is required of every domain name.  See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007):

 

The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.

 

Therefore, Respondent’s <cheapcaibbean.com>, <cheapcarabbean.com>, <cheapcaribeean.com>, and <cheapcribbean.com> domain names are confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Under this head of the Complaint, Complainant must show prima facie that Respondent lacks rights to or legitimate interests in the disputed domain names.  Once Complainant makes out a prima facie case, the burden shifts to Respondent to prove that it has rights to or legitimate interests in the disputed domain names.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that 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 Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant has asserted that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent upon that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).

 

Complainant has made out a sufficient prima facie case, while Respondent, for its part, has failed to respond to the allegations of the Complaint. We are free, therefore, to conclude that Respondent has no rights to or legitimate interests in any of the contested domain names.  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.

 

Although Respondent has failed to respond to the Complaint filed in these proceedings, we will examine the record before us, by reference to the criteria set out in Policy ¶ 4(c), to determine if there is any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain names which are cognizable under the Policy.

 

We begin by observing that the WHOIS information for the contested domain names does not indicate that Respondent is commonly known by any of those domain names. Moreover, Complainant asserts, and Respondent does not deny, that Respondent is not sponsored by or legitimately affiliated with Complainant in any way and that Complainant has not given Respondent permission to use Complainant’s mark in a domain name.  On this record, we are constrained to conclude that Respondent is not commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in any of the contested domains which might be recognized under Policy ¶ 4(c)(ii).  See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that a respondent was not commonly known by disputed domain names where the pertinent WHOIS information, as well as all other information in the record, gave no indication that that respondent was commonly known by the disputed domain names, and where a complainant had not authorized that respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record, including the relevant WHOIS information, showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name).

 

Complainant also claims, without objection from Respondent, that Respondent is using the disputed domain names to redirect Internet users to websites featuring links to third-party websites, some of which compete with Complainant’s business.  Respondent likely receives pay-per-click fees from each Internet user who is redirected to these third-party websites.  Therefore, Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate non-commercial fair use under Policy ¶ 4(c)(iii).  See Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (Nat. Arb. Forum Sept. 8, 2000) (finding that a respondent’s website, which is blank but for links to other websites, is not a legitimate use of contested domain names); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a contested domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with the business of a complainant, 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)); further see Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that a respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the business of a complainant was not 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)).

 

Finally under this head of the Complaint, Complainant alleges that Respondent’s domain names are designed to take advantage of Internet users’ typographical errors via the device known as typo-squatting.  Respondent does not deny this assertion, nor can it.  Each of Respondent’s domain names is formed by deleting or replacing a letter from Complainant’s mark, in each instance producing a domain name representing common misspellings of CHEAPCARIBBEAN.COM.  This behavior by Respondent constitutes typo-squatting, which is further evidence of Respondent’s lack of rights to or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Nat’l Ass’n of Prof’l Baseball League, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003):

 

Typosquatting … is the intentional misspelling of words with [the] intent to intercept and siphon off traffic from its intended destination, by preying on Internauts who make common typing errors. 

 

See also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, a respondent had “engaged in typosquatting, which provides additional evidence that respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the domain names  <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> were intentional misspellings of a Complainant's LTD COMMODITIES mark and that this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names.”

 

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

 

Registration and Use in Bad Faith

 

As alleged in the Complaint, Respondent has been subject to numerous UDRP proceedings wherein disputed domain names were ordered to be transferred from Respondent to various complainants.   See, e.g., Travelocity.com LP v. Texas Int’l Prop. Assocs. - NA NA, FA 1299319 (Nat. Arb. Forum Feb. 3, 2010); Am. Airlines, Inc. v. Texas Int’l Prop. Assocs. - NA NA, FA 1305281 (Nat. Arb. Forum Mar. 18, 2010); Piolin Prods., Inc. v. Texas Int’l Prop. Assocs. - NA NA, FA 1306690 (Nat. Arb. Forum Mar. 31, 2010).  Therefore, Respondent has engaged in a pattern of bad faith registration and use of domain names under the Policy ¶ 4(b)(ii), which supports the conclusion that it has likewise engaged in bad faith registration and use of the domain name which are the subject of this proceeding.  See Arai Helmet Am., Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use of a domain name pursuant to Policy ¶ 4(b)(ii) where a respondent had been the subject of numerous UDRP proceedings in which panels ordered the transfer of disputed domain names containing the trademarks of various complainants).

 

In addition, Respondent’s undenied use of the disputed domain names to redirect Internet users to websites featuring links to the websites of Complainant’s business competitors disrupts Complainant’s business and therefore evidences registration and use of the instant domain names in bad faith within the meaning of Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a domain name, which was confusingly similar to a complainant’s mark, to attract Internet users to a directory website containing links to the websites of a complainant’s commercial competitors represented bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use of a disputed domain name pursuant to Policy ¶ 4(b)(iii) where a respondent used it to operate a commercial search engine with links to a complainant’s business competitors).

 

As previously discussed, Respondent presumably profits from its use of the disputed domain names via the receipt of pay-per-click fees related to each diverted Internet user’s visits to the resolving sites.  Respondent’s use of the contested domain names to attract Internet users seeking Complainant’s services in the manner alleged constitutes bad faith registration and use of the domains under Policy ¶ 4(b)(iv).  See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name, which was confusingly similar to a complainant’s mark, to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that a respondent engaged in bad faith registration and use of domain names pursuant to Policy ¶ 4(b)(iii) by using them to operate a commercial search engine with links to the products of a complainant and to those of that complainant’s competitors, as well as by diverting Internet users to several other domain names).

 

Finally, Respondent has engaged in typo-squatting in its formation of the disputed domain names.  Typo-squatting is itself evidence of the bad faith registration and use of the subject domain names pursuant to Policy ¶ 4(a)(iii).  See The Vanguard Group, Inc. v. IQ Mgmt. Corp., FA 328127 (Nat. Arb. Forum Oct. 28, 2004):

 

By engaging in typosquatting, [r]espondent has registered and used the <vangard.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

For all of these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

 

DECISION

Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.

 

Accordingly, it is Ordered that the <cheapcaibbean.com>, < cheapcarabbean.com>, <cheapcaribeean.com>, and < cheapcribbean.com> domain names be forthwith TRANSFERRED from Respondent to Complainant.

 

 

Terry F. Peppard, Panelist

Dated:  April 21, 2010 

 

 

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