American Express Marketing & Development Corp. v. chen chao
Complainant is American Express Marketing & Development Corp. (“Complainant”), represented by Dianne K. Cahill of American Express Marketing & Development Corp., New York, USA. Respondent is chen chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <travelreleisure.com>, registered with GoDaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2012; the National Arbitration Forum received payment on April 9, 2012.
On April 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <travelreleisure.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 April 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2012 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@travelreleisure.com. Also on April 11, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 May 8, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
A. Complainant alleges:
1. Complainant’s TRAVEL + LEISURE mark has been in use since 1971.
2. Complainant uses its TRAVEL + LEISURE mark in connection with its web site <travelandleisure.com>.
3. Respondent’s <travelreleisure.com> domain name is confusingly similar to Complainant’s mark.
4. Respondent has no rights or legitimate interest in the <travelreleisure.com> domain name.
5. Respondent is not commonly known by the disputed domain name.
6. Respondent is not licensed by, affiliated with, or authorized by Complainant to use its mark.
7. Complainant has not licensed or otherwise permitted the Respondent to use any of its trademarks.
8. Respondent had notice of Complainant’s mark.
9. Respondent’s <travelreleisure.com> domain name diverts consumers to another site thereby disrupting Complainant’s business.
10. Respondent is passing off Complainant’s mark.
11. Respondent acted in bad faith.
12. Respondent registered the <travelreleisure.com> domain name to commercially profit.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) Complainant has rights in its TRAVEL + LEISURE mark.
(2) Respondent’s <travelreleisure.com> domain name is confusingly similar to Complainant’s mark.
(3) Respondent has no rights to or legitimate interests in the disputed domain name.
(4) Respondent registered and used the domain name in bad faith.
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."
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.
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.”).
Complainant presents the Panel with evidence of its trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its TRAVEL + LEISURE mark (e.g., Reg. No. 935,732 registered June 13, 1972). Complainant also presents the Panel with evidence of its trademark registrations with China State Administration for Industry and Commerce (“SAIC”) for its TRAVEL + LEISURE mark (e.g., Reg. No. 831,316 registered June 14, 2004). Based on this evidence, the Panel finds that Complainant has established rights in the TRAVEL + LEISURE mark pursuant to Policy ¶4(a)(i) through its trademark registration with the USPTO and SAIC. See 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)); see also Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s disputed domain name is confusingly similar to Complainant’s TRAVEL+LEISURE mark. The Panel notes that the <travelreleisure.com> domain name contains Complainant’s mark, absent the “+” mark, and merely adds the generic term “re.” The Panel further notes that the disputed domain name contains the generic top-level domain (“gTLD”) “.com.” Based on prior UDRP cases holding that these alterations are insufficient to differentiate a disputed domain name from a mark, the Panel holds that Respondent’s disputed domain name is confusingly similar to Complainants TRAVEL + LEISURE mark pursuant to Policy ¶4(a)(i). See 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.”); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent lacks rights and legitimate interest in the <travelreleisure.com> domain name. Complainant asserts that Respondent is not a licensee of, affiliated with, or authorized by Complainant to use its mark. Complainant further states that it has not licensed or otherwise permitted Respondent to use any of its trademarks or to apply for or use any domain name incorporating any of Complainant’s marks. Complainant provides the WHOIS information for Respondent, which lists “chen chao” as the registrant of the domain name and which the Panel notes suggests that Respondent is known as an entity other than the trademark associated with Complainant. The Panel notes that Respondent does not provide any evidence that it is commonly known by the disputed domain name. Based on the evidence submitted, the Panel may find that Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant argues that Respondent uses the <travelreleisure.com> domain name to resolve to a website aimed at purposely diverting consumers to another site and disrupting Complainant’s business, thereby, capitalizing on the good will associated with Complainant’s mark. Complainant further argues that this results in Respondent passing itself off as Complainant and trademark infringement. The Panel notes that Complainant has not provided a screen shot of Respondent’s resolving website. However, based on the arguments provided, the Panel finds that Respondent’s use of the disputed domain name to purposely divert consumers to another site while disrupting Complainant’s business 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). See Mortgage Research Center LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Complainant asserts that Respondent has shown bad faith registration and use according to Policy ¶ 4(b)(iii). Complainant asserts that Respondent uses the disputed domain name and resolving website to divert Internet users away from Complainant, thereby disrupting Complainant’s business. Based on this evidence, the Panel finds that Respondent acted in bad faith when disrupting Complainant’s business pursuant to Policy ¶4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding that the respondent registered and used the <sportlivescore.com> domain name in order to disrupt the complainant’s business under the LIVESCORE mark because the respondent was maintaining a website in direct competition with the complainant).
Complainant contends that Respondent has shown bad faith registration and use according to Policy ¶4(b)(iv). Complainant asserts that Respondent has done this by creating a likelihood of confusion with Complainant’s mark through its confusingly similar domain name, thereby misleading Internet users and diverting Internet traffic to a resolving website for commercial gain. The Panel notes that Complainant has not provided a screen shot of either Complainant’s resolving website or Respondent’s resolving website. Based on Complainant’s assertions, the Panel finds that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶4(b)(iv) when attracting consumers, and financially profiting, by creating a likelihood of confusion with Complainant’s mark. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Complainant further contends that Respondent is passing itself off as Complainant and its website as Complainant’s site. Complainant argues that Respondent is benefiting from the likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of its web site by Complainant. Complainant further states that Respondent has directly copied protected trademarks, including the TRAVEL + LEISURE mark, as well as copyrighted content, directly from Complainant’s site and placed it on the <travelreleisure.com> site. The Panel finds that Respondent is passing off Complainant’s site, which the Panel concludes is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). 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 Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <travelreleisure.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 21, 2012
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