Royal Caribbean Cruises Ltd. v. Schwam, Adam / MAAAS LLC
Claim Number: FA1208001460129
Complainant is Royal Caribbean Cruises Ltd. (“Complainant”), represented by Leah H. Martinez, Florida, USA. Respondent is Schwam, Adam / MAAAS LLC (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cruiseroyalcaribbean.com>, registered with Network Solutions, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2012; the National Arbitration Forum received payment on August 28, 2012.
After numerous requests, the Registrar, Network Solutions, LLC, has not confirmed to the National Arbitration Forum that the <cruiseroyalcaribbean.com> domain name is registered with Network Solutions, LLC or that the Respondent is the current registrant of the name. Network Solutions LLC’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On September 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 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@cruiseroyalcaribbean.com. Also on September 10, 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.
A timely Response was received and determined to be complete on September 24, 2012.
A timely Additional Submission was received from Respondent on October 1, 2012.
A timely Additional Submission was received from Complainant on October 1, 2012.
On October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant alleges it is a well-known cruise provider who owns three related U.S. trademarks registrations for operating and booking cruises.
ROYAL CARIBBEAN (Reg. No. 1,397,148 registered on June 10, 1986)
ROYAL CARIBBEAN CRUISES LTD. ( Reg. No. 1,667,873 registered on December 10, 1991)
ROYAL CARIBBEAN INTERNATIONAL (Reg. No. 2,408,022 registered on December 10, 1991)
Complainant alleges that the <cruiseroyalcaribbean.com> domain name (the “Disputed Domain Name”) is confusingly similar to Complainant’s Royal Caribbean marks, that Respondent has no rights or legitimate interest in the Disputed Domain Name, and that the Disputed Domain Name was registered and is used in bad faith. Complainant, in support of its allegations, highlights that Respondent is not authorized or licensed to use Complainant’s marks and the Disputed Domain Name uses Complainant’s mark for competing travel services and in offering links to third-party sites. Finally, Complainant alleges that the Disputed Domain Name is meant to divert customers from Complainant’s booking site <royalcaribbean.com>.
B. Respondent
Respondent, MAAAS LLC, alleges that the Disputed Domain Name was registered and has been in use since 1997. Respondent alleges it acquired the Disputed Domain Name in January 2010 under a lease back agreement and leased the Disputed Domain Name back to the transferor, World Travel Holdings. Respondent alleges that World Travel Holdings (“Transferor/Lessee”) has provided and sold only Complainant’s vacation packages through the Disputed Domain Name and has operated without any objection by Complainant for fifteen years. Respondent alleges that Transferor/Lessee has an ongoing business relationship with Complainant.
C. Additional Submissions
Complainant submitted an Additional Submission in support of its Complaint, where Complainant reiterated its arguments. Complainant further alleged that the Respondent through its Response did not refute any of Complainant’s allegations. Complainant argues that Respondent did not deny that the Disputed Domain Name is confusingly similar to Complainant’s mark, failed to show rights or legitimate interests in the Disputed Domain Name, and admitted that the Disputed Domain Name is being used to offer competing products. Finally, Complainant asserts that third-party links to other competing websites appear at the Disputed Domain Name, that it has no agreement with the Transferor/Lessee and that the defense of laches is not applicable under the UDRP.
Respondent submitted an Additional Submission in support of its Response. Respondent agreed that the Disputed Domain Name is similar to Complainant’s mark and repeated its allegations of prolonged use and noted that a more recently registered domain name similar to Complainant’s mark and performing the same function as the Disputed Domain Name has not been challenged by Complainant.
Complainant, Royal Caribbean, is a well-known cruise line who owns three U.S. trademark registrations for its ROYAL CARIBBEAN marks. Customers book cruises with Complainant through the domain name <royalcaribbean.com>.
Transferor/Lessee created the Disputed Domain Name in 1997 and transferred the Disputed Domain Name to Respondent in January 2010. As part of the transfer, Respondent leased the Disputed Domain Name back to Transferor/Lessee so Transferor/Lessee could continue its sales of Complainant’s vacation packages and offering of third party links. Neither the Transferor/Lessee nor Respondent have permission to use Complainant’s mark or operate under any agreement with Complainant.
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.
The addition of the term “cruise” as a prefix to the ROYAL CARIBBEAN mark in the Disputed Domain Name does not mitigate the confusing similarity between the Disputed Domain Name and the ROYAL CARIBBEAN mark because the term “cruise” is descriptive of the services provided by Complainant. See Brown & Bigelow Inc. v. Site Ads. Inc., FA 96127 (Nat. Arb. Forum Jan. 11, 2001) (finding that <hoylecasino.com> was confusingly similar to the Complainant's HOYLE trademark); Shaw Indus. Grp., Inc., Columbia Ins. Co. v. VIPGeek LLC, D2010-1783 (WIPO Dec. 6, 2010) (finding <shawcarpetchicago.com> confusingly similar to SHAW marks). The addition of a descriptive term does not negate the confusing similarity between the ROYAL CARIBBEAN mark and the Disputed Domain Name. See Dell Computer Corp. v. MTO C.A. and Diabetes Education Long Life, D2002-0363 (WIPO July 5, 2002) (finding <dellaustralia.com> confusingly similar to DELL); Telstra Corp. Ltd. v. Ozurls, D2001-0046 (WIPO Mar. 20, 2001) (finding <telstraaustralia.net> confusingly similar to TELSTRA).
Furthermore, the proper approach is to look at the overall impression or idea created by the mark and compare the result with the domain name. See Yell Ltd. v. Ultimate Search, D2005-0091 (WIPO Apr. 6, 2005). Applying the test described in Yell, the overall impression of the trademark in the present case is that it is a reference to Complainant or to Complainant’s ROYAL CARIBBEAN mark. As the Disputed Domain Name uses the mark ROYAL CARIBBEAN, it is confusingly similar to Complainant’s ROYAL CARIBBEAN mark.
For all of the foregoing reasons, this Panel finds that the Disputed Domain Name, <cruiseroyalcaribbean.com>, is confusingly similar to Complainant’s ROYAL CARIBBEAN mark in which the Complainant has established rights. Therefore, the Panel finds that Complainant has proven the first element of the Policy.
Under the Policy, paragraph 4(c), legitimate interests in domain names may be demonstrated by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A Complainant must show a prima facie case that a Respondent lacks rights or legitimate interests in a Disputed Domain Name, after which the burden of rebuttal passes to the Respondent. See Accor v. Eren Atesmen, D2009-0701 (WIPO July 10, 2009) (citing Croatia Airlines d.d. v. Modern Empire Internet Ltd., D2003-0455 (WIPO Aug. 21, 2003)).
Complainant has neither licensed nor otherwise authorized Respondent to use the ROYAL CARIBBEAN mark, or variations thereof, in connection with Respondent’s business or as part of the Disputed Domain Name. Complainant has thus made a prima facie showing that Respondent lacks rights to the Disputed Domain Name as Respondent concedes it is not commonly known by the Disputed Domain Name. Spencer Douglass, MGA v. Bail Yes Bonding, D2004-0261 (WIPO June 1, 2004). Additionally, Complainant has provided evidence that Respondent is using the Disputed Domain Name to offer competing goods in two forms: 1) by actually offering competing services and 2) by displaying third-party hyperlinks to other websites. This Panel finds that such use is not 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) but is in fact a misleading website that attracts consumers looking for genuine ROYAL CARIBBEAN services such as provided at <royalcaribbean.com>. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”).
For all of the foregoing reasons, this Panel finds that Complainant has proven that Respondent lacks rights to, or legitimate interests in, the Disputed Domain Name. The evidence suggests that Respondent is knowingly licensing the Disputed Domain Name for commercial benefit where the Disputed Domain Name is diverting customers and confusing those customers into believing that there is some relationship, sponsorship, affiliation or endorsement with Complainant. Therefore, the Panel finds that Complainant has proven the second element of the Policy.
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by, among other things, evaluating four (non-exhaustive) factors set forth in paragraph 4(b) of the Policy: (i) circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
Here, the Disputed Domain Name was registered in 1997 which was well after all of Complainant’s U.S. trademark registrations. Furthermore, Transferor/Lessee has used the Disputed Domain Name since its registration to offer competing services by selling Complainant’s vacation packages (in competition with Complainant itself) and by providing hyperlinks to websites where the services of competing cruise lines are sold. This Panel finds that such use demonstrates that the Disputed Domain Name was registered and used in bad faith by the Transferor/Lessee. See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”); see also Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
The questions remains whether the current registrant, Respondent in this matter, has acted in bad faith. Panels have explicitly recognized that a transfer of a registration qualifies as a new registration. Twitter, Inc. v. Geigo, Inc., D2011-1210 (WIPO Nov. 2, 2011) (citing WIPO Overview 2.0, paragraph 3.7 (“[T]he transfer of a domain name to a third party does amount to a new registration”); HSBC Fin. Corp. v. Clear Blue Sky Inc. and Domain Manager, D2007-0062 (WIPO June 4, 2007). Here, Respondent, through the lease back agreement and subsequent transfer of the Disputed Domain Name, for purposes of this decision, created a new registration. The effect of the lease back transfer is that Transferor/Lessee continues its misleading, competing use of the Disputed Domain Name. Therefore, given Respondent’s knowledge, Respondent’s registration, or acquisition, was in bad faith. This same knowledge renders Respondent’s use of the Disputed Domain Name – leasing to the Transferor/Lessee – a bad faith effort to mislead and divert Complainant’s customers. See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also 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). Therefore, based on Respondent’s knowledge of Transferor/Lessee’s use of the Disputed Domain Name, Respondent registered and is using the Disputed Domain Name in bad faith.
For all the foregoing reasons, this Panel finds that Respondent registered and is using the Disputed Domain Name in bad faith. Therefore, the Complainant has proven the third element of the Policy.
Doctrine of Laches
With respect to Respondent’s contentions that Complainant’s action is barred by the doctrine of laches, the Panel finds that the doctrine of laches does not apply as a defense. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”); see also Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (finding that the laches defense was inappropriate under the Policy and that the time frame within which the complainant brought the proceeding was of no consequence).
In a similar vein, this Panel also finds irrelevant and unpersuasive Respondent’s assertions that Complainant has not challenged more recent analogous domain names. Such a consideration is not a factor set forth in the Policy and like the doctrine of laches forms no part of a UDRP proceeding.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cruiseroyalcaribbean.com> domain name be TRANSFERRED from Respondent to Complainant.
Michael A. Albert, Panelist
Dated: October 23, 2012
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