CheapCaribbean.com, Inc. v. zhenhua ai
Claim Number: FA1303001489120
Complainant is CheapCaribbean.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California. Respondent is zhenhua ai (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <chepcaribbean.com>, registered with Go Australia Domains, Inc.
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.
Honourable Neil Anthony Brown QC 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 11, 2013, Go Australia Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <chepcaribbean.com> domain name is registered with Go Australia Domains, Inc. and that Respondent is the current registrant of the name. Go Australia Domains, Inc. has verified that Respondent is bound by the Go Australia Domains, Inc. 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 11, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 1, 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@chepcaribbean.com. Also on March 11, 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 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 made the following contentions.
1. Complainant is a leading provider of online travel and telephone resort vacation packages and reservations to destinations in the Caribbean and Mexico.
2. Complainant is the owner of a federal trademark registration in the United States that consist of the word CHEAPCARIBBEAN.COM and which is registered with the U.S. Patent and Trademark Office (“USPTO”) (“the CHEAPCARIBBEAN.COM mark”).
3. The Disputed Domain Name is nearly identical and confusingly similar to the CHEAPCARIBBEAN.COM mark.
4. When comparing the Disputed Domain Name to the Complainant's Mark, the relevant comparison to be made is between only the second-level portion of the Disputed Domain Name and the Complainant's Mark.
5. The Disputed Domain Name is confusingly similar to the CHEAPCARIBBEAN.COM mark because it differs by only a single character from Complainants Mark. This is therefore a case of typosquatting.
6. Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
(a) Respondent has not been commonly known by the Disputed Domain Name;
(b) Respondent is not sponsored by or legitimately affiliated with Complainant in any way;
(c) Complainant has not given Respondent permission to use Complainant’s Mark in a domain name;
(d) Respondent is using the Disputed Domain Name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per click fees from these linked websites. As such, Respondent is not using the Disputed Domain Name to provide a bona fide offering of goods or services as allowed under Policy ¶ 4(c) (I), or a legitimate noncommercial or fair use as allowed under Policy ¶ 4(c) (iii).
7. The Domain Name was registered and is being used in bad faith for the following reasons:
(a) Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
(b) the Respondent is using the Disputed Domain Name website in connection with generating revenue as a "click through" website by using the Complainant's registered trademark and providing links to the services and products offered by the Complainant to take advantage of Complainant's well known mark to achieve a wrongful competitive advantage and commercial gain.
(c) Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent's bad faith.
(d) the Respondent's advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. These links therefore divert potential customers away from Complainant to third-party websites, which disrupts Complainant's business.
(e) The Respondent has also listed the Disputed Domain Name for sale.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a leading provider of online travel and telephone resort vacation packages and reservations to destinations in the Caribbean and Mexico.
2. Complainant is the owner of a federal trademark registration in the United States that consists of the word CHEAPCARIBBEAN.COM and which was registered on August 30, 2012 with the United States Patent and Trademark Office (“USPTO”) as Registered Trademark No. 3,316,639 (“the CHEAPCARIBBEAN mark”).
3. Respondent registered the Disputed Domain Name on August 30, 2012. It resolves to a website promoting goods and services some of which are in competition with those of 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.
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.”).
The first question that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant has adduced evidence to the effect that it has a registered trademark for CHEAPCARIBBEAN.COM with USPTO being Trademark Reg. No. 3,316,639 registered on October 23, 2007. The Panel accepts that evidence. Based upon the evidence of the registrations provided, the Panel finds that Complainant has established its rights in the CHEAPCARIBBEAN.COM mark under Policy ¶ 4(a) (i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
The second question that arises is whether the disputed domain name is identical or confusingly similar to the CHEAPCARIBBEAN.COM mark. First, the Panel notes that the disputed domain name includes the generic top-level domain (“gTLD”) “.com”, but it is now well established that the top level domain cannot negate a finding of confusion similarity that otherwise exists, as it does in the present case. Moreover the domain name consists of the CHEAPCARIBBEAN.COM mark in its entirety with the only alteration being the deletion of the first letter “a”, the result being that the false impression is given to the internet user that this is a domain name of Complainant that has been misspelt. This minor alteration does not negate confusing similarity as the internet user would simply assume that a domain name in such a form was an official domain name of Complainant and that it would lead to its official website. Accordingly, the Panel finds that the domain name is confusingly similar to the CHEAPCARIBBEAN.COM trademark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a) (i) analysis) andTicketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006), (holding that the addition of a geographic term fails to distinguish a mark from the domain name into which it is incorporated).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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. Arab. 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. Gerber, FA 780200 (Nat. Arab. 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.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s CHEAPCARIBBEAN.COM trademark and to use it in its domain name, making only a minor spelling alteration;
(b) Respondent has then used the Disputed Domain Name to redirect
Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business;
(c) Respondent has engaged in these activities without the consent or approval
of Complainant;
(d) Complainant claims that Respondent is not commonly known by the domain name. Having regard to the whole of the evidence and the likelihood of the situation as contended for by Complainant, the Panel finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii) because there is no evidence suggesting otherwise. 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);
(e) Complainant submits that Respondent is using the Disputed Domain Name to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per click fees from these linked websites. The domain name resolves to a website that carries links to a broad range of businesses in the travel industry that are clearly in competition with Complainant. As the Panel agrees with Complainant’s submissions regarding the use of the domain name, it finds that such use of the domain name is not a Policy ¶ 4(c) (i) bona fide offering of goods and services, nor is it a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See e.g., Fred W. Gretsch Enterprises, Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (finding that when a respondent used the domain name <gretschdrum.com> to link to products that competed with those of the Complainant, "[t]he competitive nature of Respondent's use of [the domain name] renders this use neither bona fide offering of goods or services under Policy 4(c)(i) nor a legitimate noncommercial or fair use of the [domain name] under Policy4(c)(iii)")).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s typosquatting is in itself evidence that Respondent has acted in bad faith. The Panel agrees and finds that such conduct shows Respondent’s Policy ¶ 4(a)(iii) bad faith use. See Zone Labs, Inc. v. Zuccarini, FA 190613 (Nat. Arb. Forum Oct. 15, 2003) (“Respondent’s registration and use of [the <zonelarm.com> domain name] that capitalizes on the typographical error of an Internet user is considered typosquatting. Typosquatting, itself is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Secondly, Complainant submits that the facts show an intention to mislead and that Respondent is using the domain name to sell goods in competition with Complainant. There is no doubt from looking at the resolving website that the evidence supports that contention and the Panel so finds. See Etsy, Inc. v. Elizabeth McKinstry, FA1109001407949 (Nat. Arb. Forum Nov. 1, 2011) (finding that registration and use of domain name to offer unrelated hyperlinks is evidence of bad faith); Fred W: Gretsch Enterprises; Ltd v. NOLDC, Inc., FA0906001270597 (Nat. Arb. Forum Aug. 5, 2009) (respondent acted in bad faith by using Complainant's mark to divert confused customers to websites selling competitors' products).
Thirdly, Complainant submits that Respondent's setting up of a "click through" website for which it likely receives revenue for each misdirected Internet user obviously demonstrates Respondent's bad faith. It is clear that this is what Respondent has been doing and the Panel therefore agrees with the submission of Complainant. The Panel also agrees that the decision cited by Complainant support the submission, namely Cruises German Branch of Societa di CrociereMercurioS.rl., Caribbean Online International Ltd. / BelgiumDomains, WIPO Decision D2008-1470 (“the Panel finds that the Respondent registered and is using the disputed domain name for the purposes of commercial gain by offering links to other companies' websites related to cruises and travels, in the form of a "clickthrough" website. In similar cases, many prior panel decisions have recognised [sic] that the registration of domain names to be used in a "click-through" website has to be considered as an evidence of bad faith (see, e.g. Abercrombie & Fitch Trading Co. v. Digi Real Estate Foundation., WIPO Case No. D2007-0440; Early Times Distillers Company v. IP Admin / DNAV ASSOCS, WIPO Case No. D2007-1812; HBOS Plc v. Whois Protection, WIPO Case No. D2007-1605)".
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the CHEAPCARIBBEAN.COM mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <chepcaribbean.com> domain name be TRANSFERRED from Respondent to Complainant.
Honourable Neil Anthony Brown QC
Panelist
Dated: April 12, 2013
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