Princess Cruise Lines, Ltd. v. Image Builders
Claim Number: FA1209001461048
Complainant is Princess Cruise Lines, Ltd. (“Complainant”), represented by Brett A. August of Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, Illinois, USA. Respondent is Image Builders (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <princesscays.net>, 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 August 31, 2012; the National Arbitration Forum received payment on September 4, 2012.
On September 5, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <princesscays.net> 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 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@princesscays.net. 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 9, 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
Complainant:
a) Complainant has rights in the PRINCESS CAYS mark.
i. The mark is used in connection with cruise ship good and services.
ii. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the PRINCESS CAYS mark (e.g., Reg. No. 1,747,916 registered January 19, 1993).
b) The <princesscays.net> domain name is confusingly similar to the PRINCESS CAYS mark.
i. The disputed domain name is merely Complainant’s mark, minus the space between words, and the generic top-level domain (“gTLD”) “.net.”
c) Respondent lacks rights and legitimate interests in the disputed domain name.
i. Respondent is not commonly known by the <princesscays.net> domain name.
ii. The <princesscays.net> domain name resolves to a website where Respondent provides false information about Complainant’s services as well as links to competing service providers.
d) Respondent registered and is using the <princesscays.net> domain name in bad faith.
i. Respondent registered and uses the disputed domain name to attract, for commercial gain, Internet users seeking Complainant by creating a likelihood of confusion with Complainant’s trademarks.
ii. Respondent must have registered the <princesscays.net> domain name with constructive and actual knowledge of Complainant’s rights in the PRINCESS CAYS mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its PRINCESS CAYS mark.
2. Respondent’s <princesscays.net> is identical to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the 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 contends that it has rights in the PRINCESS CAYS mark, used in connection with cruise ship goods and services. Complainant notes that it is the owner of USPTO registrations for the PRINCESS CAYS mark (e.g., Reg. No. 1,747,916 registered January 19, 1993). Panels have held that the registration of a mark is evidence of rights in a mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Therefore, the Panel finds that Complainant has rights in the PRINCESS CAYS mark pursuant Policy ¶ 4(a)(i).
Complainant contends that Respondent’s <princesscays.net> domain name is confusingly similar to the PRINCESS CAYS mark. Complainant notes that Respondent merely takes Complainant’s mark, deletes the space between words, and adds the gTLD “.net” to create the disputed domain name. The Panel finds that the deletion of a space and addition of a gTLD are changes which do not provide substantive distinctions between the disputed domain name and the mark at issue and panels have found these changes to render a disputed domain name identical to the mark within it. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Therefore, the Panel finds that Respondent’s <princesscays.net> domain name is identical to the PRINCESS CAYS mark under Policy ¶ 4(a)(i).
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.”).
According to Complainant, Respondent is not commonly known by the disputed domain name. Complainant alleges that Respondent is not licensed or authorized to use the PRINCESS CAYS mark. The Panel notes that the WHOIS record for the <princesscays.net> domain name lists “Image Builders” as the domain name registrant. Panels have found that information available on the record, including WHOIS information, indicates whether a respondent is commonly known by a disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the <princesscays.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the <princesscays.net> domain name is further demonstrative of Respondent’s lack of rights and legitimate interests in the disputed domain name. Complainant states that the <princesscays.net> domain name resolves to a website where Respondent displays false or misleading information about Complainant’s services alongside links to competing services. The panel in ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), held that the display of competitive links on a disputed domain name does not provide the respondent with rights in the domain name. Therefore, the Panel finds that Respondent’s use of the <princesscays.net> domain name to display links to services competing with those that Complainant provides in the cruise ship services industry is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant asserts that Respondent registered and is using the disputed domain name in bad faith. Complainant alleges that Respondent intends for the disputed domain name to attract, for commercial gain, Internet users seeking Complainant by creating a likelihood of confusion with Complainant’s PRINCESS CAYS mark. Complainant notes that the <princesscays.net> domain name resolves to a website where Respondent displays links to services competing with those that Complainant provides as well as information about Complainant that is false. Complainant argues that Respondent is profiting from the display of these links. Therefore, the Panel finds that Respondent registered and is using the <princesscays.net> domain name in a bad faith attempt to take commercial advantage of Internet users’ mistakes 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 contends that Respondent had constructive and actual knowledge of Complainant’s rights in the PRINCESS CAYS mark prior to registering the disputed domain name. Complainant asserts that the trademark registrations for the PRINCESS CAYS mark clearly give Respondent constructive knowledge of Complainant’s rights in the mark. Complainant alleges that Respondent’s acquisition of an infringing domain name and the widespread use and fame of the PRINCESS CAYS mark is evidence that Respondent had actual knowledge of Complainant’s rights. The Panel disregards Complainant's arguments concerning constructive knowledge as panels have held that constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, concluding that Respondent registered the <princesscays.net> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <princesscays.net> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 22, 2012
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