RCI TM CORP. v. Purple Bucquet / Purple
Claim Number: FA 1357558
Complainant is RCI TM CORP. (“Complainant”), represented by Susan L. Crane of Wyndham Worldwide Corporation, New Jersey, USA. Respondent is Purple Bucquet / Purple (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rciresorts.com>, registered with Power Brand Center Corp.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 10, 2010; the National Arbitration Forum received payment on November 10, 2010«DateHardCopy».
On November 18, 2010, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <rciresorts.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the names. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 13, 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@rciresorts.com. Also on November 23, 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 December 15, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <rciresorts.com> domain name is confusingly similar to Complainant’s RCI mark.
2. Respondent does not have any rights or legitimate interests in the <rciresorts.com> domain name.
3. Respondent registered and used the <rciresorts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, RCI TM Corp., owns numerous trademark registrations with the United States Patent and Trademark office for its RCI mark (e.g., Reg. No. 1,386,274 issued March 11, 1986). Complainant utilizes its RCI mark in connection with its timeshare exchange network.
Respondent, Purple Bucquet, registered the <rciresorts.com> domain name on January 3, 2003. The disputed domain name resolves to a pay-per-click website containing hyperlinks to travel, lodging, and timeshare sales websites that compete with Complainant’s services.
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 alleges that it has established rights in its RCI mark. Previous panels have found that a complainant may establish rights in a mark by providing evidence of a federal trademark registration. 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). Prior panels have further held that a complainant is not required to register a mark within the country that a respondent resides in. See 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). In this case, Complainant provides evidence of numerous trademarks with the USPTO for its RCI mark (e.g., Reg. No. 1,386,274 issued March 11, 1986). Therefore, the Panel concludes that Complainant has established rights in its RCI mark pursuant to Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <rciresorts.com> domain name is confusingly similar to Complainant’s mark. Past panels have determined that a disputed domain name is confusingly similar to a complainant’s mark if the disputed domain name simply adds a descriptive term and a generic top-level domain (“gTLD”) to a complainant’s mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also 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). Respondent’s <rciresorts.com> domain name incorporates Complainant’s entire mark and simply adds the descriptive term “resorts,” which describes Complainant’s resort timeshare business, and the gTLD “.com.” Thus, the Panel concludes that Respondent’s <rciresorts.com> domain name is confusingly similar to Complainant’s RCI mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has alleged that Respondent does not have any rights or legitimate interests in any of the <rciresorts.com> domain name. Previous panels have held that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). 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.”). The Panel finds Complainant made a sufficient prima facie case. Past panels have also held that a respondent’s failure to respond to the Complaint allows the Panel to infer that a respondent does not have rights or legitimate interests in a disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the <rciresorts.com> domain name. Prior panels have concluded that a respondent is not commonly known by a disputed domain name if the WHOIS information is not similar to the disputed domain name, the complainant has not authorized the respondent to register the domain name, and the respondent fails to present any evidence contradicting the complainant’s assertions. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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). In the case at hand, the WHOIS information identifies the domain name registrant as “Purple Bucquet,” which the Panel determines is not similar to the <rciresorts.com> domain name. Respondent is not, and has never been, a licensee or affiliate of Complainant or any of its related companies. Respondent has failed to present any evidence, and the Panel fails to find any evidence in the record, that would support a finding that Respondent is commonly known by the disputed domain name. Therefore, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
According to Complainant, Respondent is not using the <rciresorts.com> domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Past panels have determined that a respondent’s use of a disputed domain name to resolve to a website featuring hyperlinks to Complainant’s competitors is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial 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).”). Respondent uses the disputed domain name to resolve to a pay-per-click website that features hyperlinks to third-party discount travel websites, lodging websites, timeshare sales websites, and competitors’ websites. Consequently, the Panel finds that Respondent’s use of the <rciresorts.com> domain name for such a purpose does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent registered and is using the <rciresorts.com> domain name for the purpose of disrupting Complainant’s timeshare business. Prior panels have concluded that the use of a website to host hyperlinks to a complainant’s competitors constitutes a disruption of a complainant’s business. See 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)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). Respondent’s <rciresorts.com> domain name resolves to a website containing hyperlinks to travel websites, lodging websites, timeshare sales websites, and competitor’s websites. Thus, the Panel determines that Respondent’s registration and use of the <rciresorts.com> domain name was in bad faith under Policy ¶ 4(b)(iii).
Complainant claims that Respondent is commercially benefiting from Internet user’s confusion as to Complainant’s affiliation with the disputed domain name, which constitutes bad faith registration and use. Previous panels have found that a respondent’s use of a website to feature pay-per-click hyperlinks to a complainant’s competitors constitutes bad faith registration and use. See 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).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Respondent does commercially benefit from the <rciresorts.com> domain name as Respondent receives a click-through fee each time an Internet user clicks on one of the hyperlink. Moreover, as Respondent is using a confusingly similar disputed domain name, Internet users will likely become confused as to Complainant’s affiliation with the disputed domain name. Therefore, the Panel holds that Respondent’s use of the <rciresorts.com> domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <rciresorts.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: December 21, 2010
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