CheapCaribbean.com, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1303001489119
Complainant is CheapCaribbean.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <cheapcaribbeam.com> and <cheapcaribben.com>, registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 8, 2013; the National Arbitration Forum received payment on March 8, 2013.
On March 12, 2013, PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <cheapcaribbeam.com> and <cheapcaribben.com> domain names are registered with PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the names. PDR LTD. D/B/A PUBLICDOMAINREGISTRY.COM has verified that Respondent is bound by the PDR LTD. D/B/A PUBLICDOMAINREGISTRY.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 March 19, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 8, 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@cheapcaribbeam.com and postmaster@cheapcaribben.com. Also on March 19, 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 15, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 <cheapcaribbeam.com> domain name, the domain name at issue, is confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHEAPCARIBBEAN.COM mark (Reg. No. 3,316,639 registered Oct. 23, 2007). Respondent registered the <cheapcaribbeam.com> domain name on May 24, 2005, and the <cheapcaribben.com> domain name on May 10, 2005. Although the disputed domain names were registered prior to Complainant’s registration of the mark, Complainant first used the mark in commerce on December 10, 2000 and has established common law rights by acquiring secondary meaning through its length of use, advertising, and press coverage. The disputed domain names are nearly identical to Complainant’s mark, with only slight misspellings.
Respondent is not commonly known by the disputed domain names, based on the WHOIS information and the fact that Complainant did not authorize Respondent to use its mark. Respondent is using the disputed domain names to redirect unsuspecting internet users to a website featuring generic links to third party websites, some of which directly compete with Complainant’s services.
Respondent is using the disputed domain names in connection with “click through” websites, where it likely receives revenue when misdirected Internet users click on the displayed links. This is bad faith under Policy ¶ 4(b)(iv).
Respondent’s pay-per-click links promote products that compete with Complainant, which is disruptive of Complainant’s business and evidence of bad faith under Policy ¶ 4(b)(iii). Respondent is typosquatting, which is evidence of bad faith. Previous UDRP decisions reveal that Respondent has engaged in similar typosquatting behavior in the past. This represents a pattern of bad faith registration and use under Policy ¶ 4(b)(ii).
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 has rights in the CHEAPCARIBBEAN.COM trademark based on its registration of the mark (Reg. No. 3,316,639 registered Oct. 23, 2007) with the USPTO. Complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, a complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. See 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, Complainant has established rights under Policy ¶ 4(a)(i) in the CHEAPCARIBBEAN.COM mark, at least as early as October 23, 2007.
Trademark registration is unnecessary to establish rights in a mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark). Complainant first used the CHEAPCARIBBEAN.COM mark in commerce on December 10, 2000, and it has advertised and obtained significant media recognition under the mark since that time. These elements are evidence of secondary meaning in a mark. See Gourmet Depot v. DI S.A., FA 1378760 (Nat. Arb. Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Secondary meaning having been established, the Panel finds that Complainant established rights in the CHEAPCARIBBEAN.COM mark as early as December 10, 2000, which is prior to the creation of the disputed domain names.
The <cheapcaribbeam.com> and <cheapcaribben.com> domain names are confusingly similar to its CHEAPCARIBBEAN.COM mark. The disputed domain names are nearly identical to Complainant’s mark, with only slight misspellings in each. The <cheapcaribbeam.com> domain name merely replaces the letter “n” with the letter “m,” and the <cheapcarriben.com> domain name simply deletes a letter “a” from Complainant’s mark. Because slight misspellings do not create distinct domain names, the Panel here holds that the <cheapcaribbeam.com> and <cheapcaribben.com> domain names are confusingly similar to Complainant’s CHEAPCARIBBEAN.COM mark. See Intelius, Inc. v. Hyn, FA 703175 (Nat. Arb. Forum July 5, 2006) (finding the <intellus.com> domain name to be confusingly similar to the complainant’s INTELIUS mark because the domain name differed from the mark by one letter and was visually similar).
The Panel finds that Policy ¶ 4(a)(i) has been established.
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.”).
Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). The WHOIS information identifies “Private Registrations Aktien Gesellschaft / Domain Admin” as the registrant of both disputed domain names. Complainant is not affiliated with Respondent and has not authorized Respondent to use the CHEAPCARIBBEAN.COM mark. Nominally unsupportive WHOIS information and a lack of authorization provide strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, Respondent is not commonly known by the disputed domain names and has not established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).
Respondent is using the disputed domain names to redirect users to web pages featuring generic links to third-party websites, some of which compete with Complainant’s business (such as <caribbeanallinclusive.com>). This demonstrates that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii). The display of competing hyperlinks on a resolving website does not demonstrate a bona fide offering or a legitimate noncommercial or fair use of a disputed domain name. Accordingly, Respondent has not demonstrated rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Respondent has held registrations on other domain names that appear to be examples of typosquatting, which demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Domain Admin c/o Private Registrations Aktien Gesellschaft, FA 1306652 (Nat. Arb. Forum May 13, 2011). This demonstrates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii). See 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).”). Therefore, the Panel finds that Respondent registered and is using the <cheapcaribbeam.com> and <cheapcaribben.com> domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
The disputed domain names resolve to “click through” websites, which contain links promoting products that compete with Complainant’s business (including <catholicmatch.com> and <maturesinglesonly.com>). Complainant claims this disrupts its business and is evidence of bad faith under Policy ¶ 4(b)(iii). The display of competing links constitutes disruption under Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Respondent’s behavior is typosquatting, a practice that involves preying on the typing errors of Internet users and this is, in itself, evidence of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <cheapcaribbeam.com> and <cheapcaribben.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 17, 2013
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