priceline.com Incorporated v. Alok Das / Kanak Technologies Pvt. Ltd.
Claim Number: FA1303001490338
Complainant is priceline.com Incorporated (“Complainant”), represented by Jamie E. Platkin of Cantor Colborn LLP, Connecticut, USA. Respondent is Alok Das / Kanak Technologies Pvt. Ltd. (“Respondent”), Oregon, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mobilepriceline.com>, registered with NET 4 INDIA LIMITED.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 15, 2013; the National Arbitration Forum received payment on March 15, 2013.
On April 2, 2013, NET 4 INDIA LIMITED confirmed by e-mail to the National Arbitration Forum that the <mobilepriceline.com> domain name is registered with NET 4 INDIA LIMITED and that Respondent is the current registrant of the names. NET 4 INDIA LIMITED has verified that Respondent is bound by the NET 4 INDIA LIMITED 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 April 2, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 22, 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@mobilepriceline.com. Also on April 2, 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 May 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
i. Respondent is not commonly known by the disputed domain name.
ii. Respondent’s use of Complainant’s famous marks in the disputed domain name demonstrates an intention to commercially profit from Complainant’s registered marks and to misleadingly divert consumers to the commercial website at <mobilepriceline.com>.
i. Respondent has demonstrated a bad faith intent to disrupt Complainant’s business.
ii. Respondent is using Complainant’s PRICELINE marks in the disputed domain name, and on the associated website, in connection with offering phones and handheld computing devices that could be used to access Complainant’s goods and services.
iii. It is clear that Respondent knew of the existence of Complainant’s PRICELINE marks and the significance of PRICELINE in the market as a strong and well-known mark as of the registration date of the disputed domain name.
Respondent registered the <mobilepriceline.com> domain name on December 10, 2010.
1. Respondent’s <mobilepriceline.com> domain name is confusingly similar to Complainant’s PRICELINE mark.
2. Respondent does not have any rights or legitimate interests in the < mobilepriceline.com> domain name.
3. Respondent registered or used the <mobilepriceline.com> 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, priceline.com Incorporated, argues that it is a well-known publicly traded company which offers 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 asserts 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 (Reg. No. 2,481,112, registered August 28, 2001). See Complainant’s Exhibit G. The Panel notes that Respondent appears to reside within the United States; therefore, the Panel finds that Complainant’s registration of the PRICELINE and PRICELINE.COM marks with the USPTO sufficiently demonstrates its rights in the marks under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant claims that Respondent’s <mobilepriceline.com> domain name is confusingly similar to Complainant’s mark as it fully incorporates Complainant’s famous PRICELINE mark and merely adds the descriptive term “mobile.” Complainant contends that the word “mobile” could be descriptive for goods and services provided via mobile devices like mobile phones or handheld computing devices such as tablet computers, or “mobile” could be descriptive for goods like mobile phones. The Panel determines that Respondent’s addition of a descriptive term to the disputed domain name does not distinguish Respondent’s domain name from Complainant’s marks under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Complainant argues that Respondent adds the gTLD “.com” to the <mobilepriceline.com> domain name. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Accordingly, the Panel concludes that Respondent’s <mobilepriceline.com> domain name is confusingly similar to Complainant’s PRICELINE mark pursuant to 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.”).
Complainant asserts that Respondent is not commonly known by the disputed domain name. Complainant argues that there exists no relationship 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 provides that “Alok Das / Kanak Technologies Pvt. Ltd.” is the registrant of the <mobilepriceline.com> domain name. See Complainant’s Exhibit D. Thus, the Panel holds that Respondent is not commonly known by the disputed domain name pursuant to 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 claims that Respondent’s use of Complainant’s famous marks in the disputed domain name demonstrates an intention to commercially profit from Complainant’s registered marks and to misleadingly divert consumers to the commercial website at <mobilepriceline.com>. The Panel notes that Respondent’s disputed domain name sells mobile phones and handheld computing devices. See Complainant’s Exhibit N. Complainant argues that these mobile phones and handheld computing devices could be used to access Complainant’s goods and services. The Panel finds that the products sold at Respondent’s disputed domain name could be used to access Complainant’s goods and services, and the Panel finds that Respondent’s competing use of the disputed domain name is not a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) noncommercial or fair use. 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).”). Alternatively, the Panel notes that Respondent’s disputed domain name is primarily used for the sale of mobile phones and handheld computing devices. The Panel finds that Respondent’s use of the disputed domain name is unrelated to Complainant, and the Panel finds that Respondent’s unrelated use of the 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 Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent has demonstrated a bad faith intent to disrupt Complainant’s business. Complainant argues that these mobile phones and handheld computing devices could be used to access Complainant’s goods and services. See Complainant’s Exhibit N. If the Panel agrees with Complainant’s contention that Respondent’s use of the disputed domain name to sell mobile phones and handheld computing devices diverts consumers from Complainant’s business, the Panel holds that Respondent has registered and is being used in bad faith 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 argues that Respondent is using Complainant’s PRICELINE marks in the disputed domain name, and on the associated website, in connection with offering phones and handheld computing devices that could be used to access Complainant’s goods and services. Complainant argues that these mobile phones and handheld computing devices could be used to access Complainant’s goods and services. See Complainant’s Exhibit N. The Panel determines that Respondent’s use of the <mobilepriceline.com> domain name creates a bad faith intent to create a likelihood of confusion with Complainant’s mark, evidencing bad faith use and registration under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Complainant contends that it is clear that Respondent knew of the existence of Complainant’s PRICELINE marks and the significance of PRICELINE in the market as a strong and well-known mark as of the registration date of the disputed domain name. Complainant claims that Respondent’s knowledge of the existence of Complainant’s PRICELINE marks is evidenced by Respondent’s inclusion of “Priceline” in the disputed domain name, and the combination of “Priceline” with the descriptive travel term “mobile.” The Panel finds that, due to the reputation of Complainant's mark, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly,
it is Ordered that the <mobilepriceline.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 13, 2013
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