F
PRICELINE.COM, INC. v. Nadeem Qadir / Tan Kim Fong
Claim Number: FA1205001446497
Complainant is PRICELINE.COM, INC. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Nadeem Qadir (“Respondent”), Bangladesh.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <praceline.com>, registered with eNom, Inc., and <priceling.com>, registered with Domain.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 31, 2012; the National Arbitration Forum received payment on May 31, 2012.
On May 31, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <praceline.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 31, 2012, Domain.com, LLC confirmed by e-mail to the National Arbitration Forum that the <priceling.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 21, 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@praceline.com, postmaster@priceling.com. Also on June 1, 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 June 27, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <praceline.com> and <priceling.com> domain names are confusingly similar to Complainant’s PRICELINE and PRICELINE.COM mark.
2. Respondent does not have any rights or legitimate interests in the <praceline.com> and <priceling.com> domain names.
3. Respondent registered or used the <praceline.com> and <priceling.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
i. PRICELINE (Reg. No. 2,272,659 registered August 24, 1999); and
ii. PRICELINE.COM (e.g., Reg. No. 2,481,112 filed October 10, 1997; registered August 28, 2001).
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.”).
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” The Panel will address both of the disputed domain names.
Complainant asserts that it owns the PRICELINE (Reg. No. 2,272,659 registered August 24, 1999) and PRICELINE.COM marks (e.g., Reg. No. 2,481,112 filed October 10, 1997; registered August 28, 2001) with the USPTO. Complainant argues that its trademark registrations with the USPTO are sufficient for it to establish rights in the marks under Policy ¶ 4(a)(i). The Panel agrees and finds that Complainant has established rights in the PRICELINE and PRICELINE.COM marks under Policy ¶ 4(a)(i), through its trademark holdings with the USPTO and regardless of Respondent’s location. See 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); see also 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). The Panel also finds that Complainant’s rights in the PRICELINE.COM mark date back to Complainant’s filing date with the USPTO of October 10, 1997. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Further, Complainant argues that the <praceline.com> and <priceling.com> domain names are confusingly similar to Complainant’s PRICELINE.COM and PRICELINE marks. The Panel notes that the <praceline.com> domain name merely misspells Complainant’s PRICELINE.COM mark by replacing the letter “i” with the letter “a.” Further, the Panel notes that the <priceling.com> domain name misspells Complainant’s PRICELINE.COM mark by replacing the letter “e” with the letter “g.” Based upon the above noted changes, the Panel finds that Respondent’s <praceline.com> and <priceling.com> domain names are confusingly similar to Complainant’s PRICELINE.COM mark under Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive).
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 is not commonly known by the disputed domain names where the WHOIS record does not indicate a relationship between the registrant and the domain names. Further, Complainant contends that it has not licensed or otherwise authorized Respondent to use the PRICELINE.COM or PRICELINE marks in any way. The Panel notes that Respondent has not come forward with any evidence indicating that it is commonly known by the disputed domain names. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names under 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).
While Complainant does not argue specifically under Policy ¶ 4(c)(i) or ¶ 4(c)(iii), the Panel notes that Respondent has presented evidence of Respondent’s use within its Annexes and has presented arguments in other portions of its Complaint as to Respondent’s use of the disputed domain names. See Complainant’s Exhibit H. Complainant contends that Respondent’s disputed domain names resolve to the same parked website located at <usseek.com>. Complainant argues that the resolving website contains several third-party links to its competitors in the travel industry. The Panel finds that Respondent is not using the <praceline.com> and <priceling.com> domain names for 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 Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods or services or a legitimate noncommercial or fair use when “the website resolving from the disputed domain name displays links to travel products and services, which directly compete with Complainant’s business”). The Panel finds that Respondent lacks any rights or legitimate interests in either of the disputed domain names.
Complainant contends that Respondent has been the respondent in several prior UDRP proceedings in which it was ordered to transfer the disputed domain names to the respective complainants. See Microsoft Corp. v. Tan Kim Fong a/k/a Dong Wang a/k/a Ali Aziz a/k/a Nadeem Qadir, FA 1265720 (Nat. Arb. Forum July 14, 2009); see also Travelocity.com LP v. Nadeem Qadir a/k/a Tan Kim Fong, FA 1347880 (Nat. Arb. Forum Nov. 10, 2010); see also Time Warner Inc. v. Tan Kim Fong a/k/a Nadeem Qadir, FA 1384739 (Nat. Arb. Forum June 2, 2011). Complainant also asserts that Respondent has registered many other trademark infringing domain names involving third-party trademark holders. Complainant argues that Respondent’s prior UDRP proceedings and other domain name registrations establish a bad faith pattern of domain name registrations that also indicate bad faith in the present proceedings. The Panel agrees and finds that Respondent has registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(ii). See Liberty Mut. Ins. Co. v. Bin g Glu, FA 1036129 (Nat. Arb. Forum Sept. 2, 2007) (holding prior UDRP proceedings were sufficient evidence of a pattern of bad faith registrations); see also TRAVELOCITY.COM LP v. Aziz, FA 1260783 (Nat. Arb. Forum June 16, 2009) (“These previous [UDRP] decisions demonstrate a pattern of bad faith registration and use of domain names under Policy ¶ 4(b)(ii).”).
Further, Complainant argues that Respondent’s registration and use of the disputed domain names is also evidence of bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent registered the disputed domain names containing a misspelling of Complainant’s mark with an eye toward commercially gaining from its use of the domain names. Complainant argues that Respondent commercially profits from its redirection of the disputed domain names to the parking website <usseek.com> by receiving click-through fees. Based upon this information and evidence, the Panel finds that Respondent registered the disputed domain names to create confusion with Complainant’s trademarks in order to use the domain names for commercial gain. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Lastly, Complainant argues that Respondent’s registration of the <praceline.com> and <priceling.com> domain names constitutes typosquatting. Further, Complainant argues that typosquatting is evidence in and of itself of Respondent’s bad faith registration and use of the disputed domain names. The Panel finds that Respondent has engaged in typosquatting through its registration and use of the <praceline.com> and <priceling.com> domain names, and the Panel also finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Canadian Tire Corp. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (finding the respondent registered and used the domain name in bad faith because the respondent “created ‘a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location’ . . . through Respondent’s persistent practice of ‘typosquatting’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <praceline.com> and <priceling.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 6, 2012
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