national arbitration forum

 

DECISION

 

RCI TM Corp. v. Dotsan / R.S. Potda

Claim Number: FA1008001343223

 

PARTIES

Complainant is RCI TM Corp. (“Complainant”), represented by Susan L. Crane, of Wyndham Worldwide Corporation, New Jersey, USA.  Respondent is Dotsan / R.S. Potda (“Respondent”), India.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <armedforcesvacationclub.com>, registered with eNom, Inc.

 

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.

 

Judge Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 25, 2010.

 

On August 25, 2010, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <armedforcesvacationclub.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name.  eNom, Inc. has verified that Respondent is bound by the eNom, 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 August 26, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 15, 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@armedforcesvacationclub.com by e-mail.  Also on August 26, 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 September 30, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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" 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <armedforcesvacationclub.com> domain name is identical to Complainant’s ARMED FORCES VACATION CLUB mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, RCI TM Corp., offers timeshare and vacation exchange services and provides non-hotel leisure accommodations in approximately 100 countries.  Complainant offers a program called Armed Forces Vacation Club that provides discounted direct-to-consumer vacation rentals to active and retired members of the Armed Forces, Department of Defense employees, and select civilian employees in military support roles.  Complainant owns a trademark registration for the ARMED FORCES VACATION CLUB with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,138,696 issued September 5, 2006).

 

Respondent, Dotsan / R.S. Potda, registered the <armedforcesvacationclub.com> domain name on September 29, 2001.  The disputed domain name redirects to the <usseek.com> domain name that displays pay-per-click links leading Internet users to discount travel sites and the sites of Complainant’s competitors.

 

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

 

Complainant owns a trademark registration for the ARMED FORCES VACATION CLUB with the USPTO (Reg. No. 3,138,696 issued September 5, 2006).  The Panel finds that Complainant has proven its rights in the ARMED FORCES VACATION CLUB mark dating back to September 5, 2006 by virtue of its trademark registration with the USPTO according to Policy ¶ 4(a)(i) .  See 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.”); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Complainant also possesses common law rights in the ARMED FORCES VACATION CLUB mark through its continuous use of the mark since 1998 and the subsequent establishment of secondary meaning.  Complainant’s ARMED FORCES VACATION CLUB mark is recognized by the USPTO as having a first use in commerce date of December 1998.  Complainant asserts that the Armed Forces Vacation Club first came into existence in 1998 and has been used continuously used since then to identify the program.  Complainant provides screenshots of its website located at the <afvclub.com> domain names dating from 2000 to the present as evidence of its use of the mark.  Complainant also includes a brochure with a date of 2009 and a press release from May 12, 2010 using the ARMED FORCES VACATION CLUB mark.  Complainant also alleges that it has a contract with the Department of Defense to offer the vacation program identified by Complainant’s mark through the Moral, Welfare, and Recreation network which provides leisure services to military personnel and their families.  As part of this network, Complainant contends that promotional materials bearing its mark are distributed to U.S. military installations round the world.  Complainant argues that in 2009, 31,000 accommodations were booked through the program.  Complainant asserts that it has expended significant time, resources, and effort on advertising, promoting, and establishing the goodwill of the ARMED FORCES VACATION CLUB mark that has resulted in the mark being well-known and having secondary meaning.  The Panel finds that Complainant has provided sufficient evidence of its continuous use of the ARMED FORCES VACATION CLUB mark and has thus acquired secondary meaning in the mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i) dating back to 1998, which predates Respondent’s registration of the <armedforcesvacationclub.com> domain name.  See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (finding that the complainant had common law rights in the JERRY DAMSON ACURA mark because it provided sufficient evidence of its continuous use of the mark since 1989 in connection with a car dealership); see also Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the 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 alleges that Respondent’s <armedforcesvacationclub.com> domain name is identical to Complainant’s ARMED FORCES VACATION CLUB mark because the only difference between the two is the elimination of the spaces between terms and the addition of the generic top-level domain (“gTLD”) “.com.”  The Panel finds that eliminating spaces and adding a gTLD does not prevent the disputed domain name from being identical to Complainant’s mark.  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (concluding that the <redhat.org> domain name is identical to the complainant’s RED HAT mark because the mere addition of gTLD was insufficient to differentiate the disputed domain name from the mark); see also Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”).  Therefore, the Panel finds that Respondent’s <armedforcesvacationclub.com> domain name is identical to Complainant’s ARMED FORCES VACATION CLUB mark for the purposes of Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant argues that Respondent does not possess rights and legitimate interests in the disputed domain name.  In order to support this assertion, Policy ¶ 4(a)(ii) requires that Complainant present a prima facie case against Respondent. After presenting such a case, the burden to prove rights and legitimate interests in the disputed domain name shifts to Respondent.  The Panel finds that Complainant has satisfied this requirement in the instant proceeding, but Respondent has not met its burden due to its failure to respond.  The Panel accordingly finds that, since Respondent has not contested Complainant’s assertions, Respondent lacks rights and legitimate interests in the disputed domain name and Complainant’s allegations may be accepted as true.  See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name.  It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise).  The Panel elects to consider the evidence in the record, however, in light of the Policy ¶ 4(c) factors in order to make a determination on Respondent’s rights and legitimate interests.

 

Complainant argues that Respondent has never been known by the <armedforcesvacationclub.com> domain name and is not a licensee, franchisee, or affiliate of Complainant.  Complainant asserts that the WHOIS information for the disputed domain name identifies Respondent as “Dotsan / R.S. Potda” and not as the disputed domain name or any other related name.  The Panel thus finds that Complainant is not commonly known by the <armedforcesvacationclub.com> domain name and consequently lacks rights and legitimate interests 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Complainant contends that Respondent uses the <armedforcesvacationclub.com> domain name to redirect Internet users to a website consisting of a series of pay-per-click links to discount travel sites and other third-party sites in competition with Complainant.  The Panel finds that such a use of the disputed domain name is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).  See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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)).

 

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

 

Registration and Use in Bad Faith

 

Complainant asserts that the pay-per-click links located at the <armedforcesvacationclub.com> domain name lead Internet users to discount travel websites and other third-party websites that compete with Complainant’s vacation exchange services.  Complainant argues that these pay-per-click links are disruptive to Complainant’s business because they divert potential customers away from Complainant to Complainant’s competitors.  The Panel thus finds that Respondent’s registration and use of the <armedforcesvacationclub.com> domain name demonstrate bad faith according to Policy ¶ 4(b)(iii).  See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy           ¶ 4(b)(iii)). 

 

Complainant alleges that Respondent’s registration of the identical <armedforcesvacationclub.com> domain name is intended to attract Complainant’s intending customers by creating a likelihood of confusion as to the affiliation between Complainant and the disputed domain name.  Complainant contends that Respondent uses Complainant’s mark in the disputed domain name in order to commercially profit from the increased Internet traffic and subsequent increased likelihood of revenue from the click-through fees generated by the pay-per-click links.  The Panel finds that Respondent’s efforts to profit from the misuse and appropriation of Complainant’s mark demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)); see also 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).”).

 

The Panel finds 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 <armedforcesvacationclub.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated: September 30, 2010

 

 

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