national arbitration forum

 

DECISION

 

Kayak Software Corporation (Delaware Corporation) v. Jeong

Claim Number: FA1207001455942

 

PARTIES

Complainant is Kayak Software Corporation (Delaware Corporation) (“Complainant”), represented by Katherine L. Fink of Banner & Witcoff, Ltd., Illinois, USA.  Respondent is Jeong (“Respondent”), Korea.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <kkayak.com> and <kayakk.com>, registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com.

 

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.

 

Bruce E. Meyerson as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on July 30, 2012; the National Arbitration Forum received payment on July 30, 2012. The Complaint was submitted in both Korean and English.

 

On August 6, 2012, Korea Information Certificate Authority, Inc. d/b/a DomainCA.com confirmed by e-mail to the National Arbitration Forum that the <kkayak.com> and <kayakk.com> domain names are registered with Korea Information Certificate Authority, Inc. d/b/a DomainCA.com and that Respondent is the current registrant of the names.  Korea Information Certificate Authority, Inc. d/b/a DomainCA.com has verified that Respondent is bound by the Korea Information Certificate Authority, Inc. d/b/a DomainCA.com 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 August 6, 2012, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of August 27, 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@kkayak.com, and postmaster@kayakk.com.  Also on August 6, 2012, the Korean language 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 August 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.

 

Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant registered its KAYAK.COM (Reg. No. 3,129,154 registered August 15, 2006) and KAYAK marks (Reg. No. 3,209,578 registered February 13, 2007) with the United States Patent and Trademark Office (“USPTO”). Complainant has registrations with other trademark authorities around the world, such as the Canadian Intellectual Property Office (“CIPO”) for its KAYAK.COM (Reg. No. TMA724804 registered September 30, 2008) and KAYAK marks (Reg. No. TMA724197 registered September 23, 2008). Complainant uses its marks to provide online price comparisons to customers researching travel and lodging services, and allows searches of its directory to obtain information relating to travel, such as rates, quality of services, and reservations.

 

Respondent registered the <kkayak.com> and <kayakk.com> domain names, both of which redirect to a website corresponding with the <cheapflightsairlinetickets.info> domain name. The website features various hyperlinks, which earn income on behalf of Respondent in the form of “click-through” fees. Respondent does not have authorization from Complainant to use the KAYAK or KAYAK.COM marks in any way. Respondent deliberately misspelled complainant’s marks in its domain name, which constitutes typosquatting. The <kkayak.com> and <kayakk.com> domain names are confusingly similar to Complainant’s KAYAK.COM mark. Respondent is not commonly known by either of the disputed domain names, and does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of either of the disputed domain names. Respondent had actual and constructive knowledge of Complainant’s rights in the KAYAK and KAYAK.COM marks. Respondent’s use of the disputed domain names to host third-party competing hyperlinks disrupts Complainant’s business and improperly attracts Internet consumers by confusing them as to Complainant’s association to the resolving website.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant holds trademark rights for the KAYAK and KAYAK.COM marks. Respondent’s domain names are confusingly similar to Complainant’s marks.  Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain names <kkayak.com> and <kayakk.com>, and that Respondent registered and uses the domain names 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."

 

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.”).

 

Identical and/or Confusingly Similar

Complainant claims to own trademark rights in its KAYAK.COM (Reg. No. 3,129,154 registered August 15, 2006) and KAYAK marks (Reg. No. 3,209,578 registered February 13, 2007) via trademark registrations of the marks with the USPTO. Complainant also claims trademark rights through registration of the marks with trademark authorities internationally such as CIPO for its KAYAK.COM (Reg. No. TMA724804 registered September 30, 2008) and KAYAK marks (Reg. No. TMA724197 registered September 23, 2008). The panel in Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005), stated that a complainant secures rights in its mark through registration of the mark with trademark authorities internationally, including the USPTO. The Panel concludes that Complainant sufficiently established its trademark rights in both the KAYAK.COM mark and the KAYAK mark through its multiple trademark registrations with authorities around the world, pursuant to Policy ¶ 4(a)(i). The Panel also determines that Policy ¶ 4(a)(i) does not require Complainant to register its marks in the country where Respondent resides and operates. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).

 

Complainant asserts that the <kkayak.com> and <kayakk.com> domain names are confusingly similar to its KAYAK.COM mark because both disputed domain names are common misspellings of Complainant’s trademark. The Panel notes that both domain names have an additional letter “k.” The Panel finds that the addition of one letter does not alleviate the <kkayak.com> and <kayakk.com> domain names’ confusing similarity to Complainant’s KAYAK.COM mark. 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.”).  Therefore, the Panel finds that Respondent’s <kkayak.com> and <kayakk.com> domain names are confusingly similar to Complainant’s KAYAK.COM mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.

 

Complainant alleges that Respondent is not commonly known by either the <kkayak.com> or <kayakk.com> domain names, based on the WHOIS information connected with the domain names. The Panel observes that the WHOIS information for both disputed domain names identifies “Jeong” as the registrant. 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).

 

Complainant contends that Respondent uses the <kkayak.com> and <kayakk.com> domain names to redirect Internet users to a commercial website hosting hyperlinks to competing businesses and that does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007), the panel stated that operating a pay-per-click website at a disputed domain name was not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel determines that offering website visitors hyperlinks to competing businesses 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).

 

Complainant contends that Respondent engages in typosquatting by registering domain names that are intentionally misspelled versions of Complainant’s KAYAK.COM mark and that typosquatting is evidence that Respondent lacks rights and legitimate interests in the <kkayak.com> and <kayakk.com> domain names. The Panel finds that by registering typosquatted versions of Complainant’s mark, Respondent does not possess rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”).

 

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

 

Registration and Use in Bad Faith

Complainant alleges that Respondent’s bad faith registration and use is demonstrated by Respondent’s use of the disputed domain names to offer Internet users competing hyperlinks, which Complainant argues is disruptive use. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel found that the resolving website listed links to the complainant’s competitors, which was evidence that the respondent attempted to disrupt the complainant’s business through its use of the disputed domain names. The Panel concludes that Respondent’s intentional disruption of Complainant’s business by featuring competing hyperlinks at the resolving website demonstrates bad faith registration and use of the <kkayak.com> and <kayakk.com> domain names under Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent uses confusingly similar domain names to attract customers to its website in order to make a profit from the pay-per-click hyperlinks to competing commercial businesses. The Panel finds that Respondent’s purposeful attempts to attract Internet traffic through use of confusingly similar domain names, for commercial gain, is evidence that Respondent registered and uses the <kkayak.com> and <kayakk.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).

Complainant asserts that Respondent’s actual knowledge of Complainant’s KAYAK.COM and KAYAK marks is apparent because Respondent offers hyperlinks to services that are similar to those offered by Complainant, at confusingly similar domain names.  The Panel concludes that Respondent’s actual knowledge is apparent due to the featured competing hyperlinks at the resolving website, which demonstrates Respondent’s bad faith registration under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").

Complainant alleges that by registering typosquatted domain names, Respondent demonstrates bad faith registration. In Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003), the panel determined that the respondent’s registration and use of the disputed domain name was in bad faith because the domain name embodied classic typosquatting. The Panel concludes that because the <kkayak.com> and <kayakk.com> domain names are typosquatted versions of Complainant’s mark, Respondent’s registration of the disputed domain names demonstrates bad faith pursuant to Policy ¶ 4(a)(iii).

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

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 <kkayak.com> and <kayakk.com> domain names be TRANSFERRED from Respondent to Complainant. 

 

 

Bruce E. Meyerson, Panelist

Dated:  September 12, 2012

 

 

 

 

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