Priceline.com Incorporated v. Xirtec Networks, Inc.
Claim Number: FA1303001488415
Complainant is Priceline.com Incorporated (“Complainant”), represented by Jamie E. Platkin of Cantor Colborn LLP, Connecticut, USA. Respondent is Xirtec Networks, Inc. (“Respondent”), Illinois, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hajjpriceline.com>, registered with DOMAIN.COM, LLC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically March 1, 2013; the National Arbitration Forum received payment March 1, 2013.
On March 4, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <hajjpriceline.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the names. DOMAIN.COM, LLC verified that Respondent is bound by the DOMAIN.COM, LLC registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 7, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 2013, 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@hajjpriceline.com. Also on March 7, 2013, 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 April 4, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s <hajjpriceline.com> directs to a website that features travel arrangement and booking services related to Hajj and Umrah pilgrimages.
i. Respondent has demonstrated bad faith intent to disrupt Complainant’s business and cause consumer confusion.
ii. Respondent is using the disputed domain name in connection with a competitive travel booking website.
iii. Given the popularity of Complainant’s registered PRICELINE marks at the time the disputed domain name was registered, and the manner in which the disputed domain name is used, it is clear that registration of the disputed domain name unlawfully infringes the intellectual property rights of Complainant.
Complainant established rights in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in Complainant’s mark or the domain name containing it.
Respondent registered and used the disputed 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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. Foru¶m 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 to or Confusingly Similar
Complainant, Priceline.com Incorporated, contends that it is a well-known publicly traded company, offering unique and popular Internet-based travel services under the PRICELINE marks. Complainant contends that its customers can book reservations for airline tickets, hotel rooms, rental cars, vacation packages, and other travel services on its <priceline.com> website. Complainant argues that it is the owner of trademark registrations with the USPTO for the PRICELINE mark (Reg. No. 2,272,659, registered August 24, 1999) and for the PRICELINE.COM mark (e.g., Reg. No. 2,481,112, registered August 28, 2004). See Complainant’s Exhibit H. The Panel notes that Respondent appears to reside within the United States. The Panel finds that Complainant’s registration of the PRICELINE mark with the USPTO is sufficient to establish its rights in the mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant contends that Respondent’s <hajjpriceline.com> domain name is confusingly similar to Complainant’s registered PRICELINE marks within the meaning of Policy ¶ 4(a)(i). Complainant argues that the <hajjpriceline.com> domain name fully incorporates Complainant’s famous PRICELINE marks and merely adds the descriptive term “hajj” and the gTLD “.com.” The Panel finds that the addition of a descriptive term does not negate confusing similarity under Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). The Panel finds that the addition of a gTLD does not eliminate confusing similarity pursuant to Policy ¶ 4(a)(i). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Accordingly, the Panel finds that Respondent’s <hajjpriceline.com> domain name is confusingly similar to Complainant’s registered PRICELINE marks under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name containing Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to or Legitimate Interests
Complainant must first make a prima facie case that Respondent lacks rights to or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such 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 name. Complainant asserts that no relationship exists between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could own or use the disputed domain name. The Panel notes that the WHOIS information identifies “Xirtec Networks, Inc.” as the registrant of the disputed domain name. See Complainant’s Exhibit D. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant argues that Respondent’s <hajjpriceline.com> directs to a website that features travel arrangement and booking services related to Hajj and Umrah pilgrimages. See Complainant’s Exhibit P. Thus, the Panel finds that Respondent’s competing use of the disputed domain name is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent demonstrated bad faith intent to disrupt Complainant’s business and cause consumer confusion. Complainant argues that Respondent’s <hajjpriceline.com> directs to a website that features travel arrangement and booking services related to Hajj and Umrah pilgrimages. See Complainant’s Exhibit P. The Panel finds that Respondent’s competing use of the disputed domain name evidences bad faith use and registration under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent is using the disputed domain name in connection with a competitive travel booking website. Complainant contends that Respondent has a bad faith intent to trade on the goodwill that Complainant has earned in its PRICELINE mark by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and services. Complainant argues that Respondent’s <hajjpriceline.com> directs to a website that features travel arrangement and booking services related to Hajj and Umrah pilgrimages. See Complainant’s Exhibit P. The Panel finds that Respondent’s competing use of the disputed domain name constitutes attraction for commercial gain, demonstrating bad faith use and registration under Policy ¶ 4(b)(iv). See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Complainant claims that given the popularity of Complainant’s registered PRICELINE marks at the time the disputed domain name was registered, and the manner in which the disputed domain name is used, it is clear that registration of the disputed domain name unlawfully infringes the intellectual property rights of Complainant. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith 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 Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <hajjpriceline.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 18, 2013.
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