Orbitz Worldwide, LLC v. Allergic to Gravity
Claim Number: FA1306001504529
Complainant is Orbitz Worldwide, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Allergic to Gravity (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orbotz.com>, 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.
Michael A. Albert as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013; the National Arbitration Forum received payment on June 12, 2013.
On June 13, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <orbotz.com> 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 June 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@orbotz.com. Also on June 14, 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.
A timely Response was received and determined to be complete on July 5, 2013.
On July 10, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Michael A. Albert 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the Disputed Domain Name is confusingly similar to a trademark in which Complainant has rights, that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent registered and is using the disputed domain name in bad faith.
Complainant is Orbitz Worldwide, LLC, a global online travel company. Through Complainant’s website, ORBITZ.COM, consumers book various travel services, including flights. Complainant has registered the ORBITZ mark with the United States Patent & Trademark Office (“USPTO”). See, e.g., Reg. No. 2,858,685 registered on June 29, 2004. The registration was filed on April 18, 2000 and claims a first use in commerce of June 4, 2001. Complainant contends that the Disputed Domain Name, <orbotz.com>, is confusingly similar to its ORBITZ mark because only one character is changed. According to Complainant, this is evidence that Respondent is engaged in “typosquatting,” an effort to take advantage of the typographical errors made by internet users.
Complainant contends that Respondent has no rights or legitimate interests in the Disputed Domain Name because Respondent is not known by the Disputed Domain Name and is not licensed, authorized, or otherwise permitted to use Complainant’s marks in domain names. Complainant alleges that, at the time of the Complaint, the Disputed Domain Name was used to host generic links to third party websites. Complainant contends that Respondent receives pay-per-click fees from the websites linked to the Disputed Domain Name and alleges that some of the linked websites compete directly with Complainant’s business.
Lastly, Complainant contends that Respondent is typosquatting and holds other domain names that Complainant believes to be further examples of this behavior: <qube.biz>, <qubez.org>, and <pebblesprint.com>. Complainant urges the Panel to take this as evidence of Respondent’s bad faith. Complainant further alleges that Respondent had knowledge of Complainant’s ORBITZ mark and that the use of click-through advertisements illustrates an attempt to confuse Internet users into believing Complainant endorses the ads. Complainant sent a cease and desist letter on October 17, 2012 but received no response.
B. Respondent
Respondent is Allergic to Gravity, which sells custom LEGO® brick sculptures at the domain <allergictogravtiy.com>. Respondent is also the owner of <qubez.net>, another site dedicated to LEGO brick products and sculptures. Respondent registered the Disputed Domain Name on July 23, 2001.
Respondent purchased the Disputed Domain Name with the intent to develop a series of stories about robots on a planet in outer space. The name Orbotz was selected as a combination of orbits and robots, in keeping with the theme. Respondent also considered the name Robotz, but it was already in use. Respondent built models of the robots to be featured in the story, including “QB,” the leader of the “good” Orbotz who also serves as the mascot and logo for Respondent’s LEGO sculpture business. See Respondent’s Ex. A, C. The project was repeatedly delayed, and Respondent ultimately had to park the site in or around 2008.
Respondent never attempted to sell the domain to Complainant and declined numerous offers from third parties interested in purchasing the domain. From the time it was registered in 2001 to the time it was parked in 2008, the site contained no mention of ORBITZ, ORBITZ.COM, or any type of travel services. Respondent contends that the parking service chose what to display at the Disputed Domain, not Respondent. Respondent claims not to have received the October 2012 cease and desist letter and states that if it had, it would have removed any offending information from the website. Respondent emphasizes that the Disputed Domain Name was used by Respondent to offer services unrelated to Complainant’s line of business for nearly seven years. See Respondent’s Ex. D.
In Response to Complainant’s allegations of a pattern of typosquatting behavior, Respondent alleges that these marks are used for his own business purposes, and are not infringing any unrelated trademarks. The domains <qube.biz> and <qubez.org> were purchased to protect Respondent’s <qubez.net> domain. Respondent claims that the final domain cited by Complainant, <pebblesprint.com> is for a future website discussing printing, and it is unaware of any variations of the name that are in use.
Complainant is the owner of the ORBITZ mark (Reg. No. 2,858,685 registered on June 29, 2004). Complainant filed the registration on April 18, 2000 and claims a first use in commerce date of June 4, 2001.
Respondent registered the Disputed Domain Name on July 23, 2001.
Respondent also holds the registrations for <qubez.net>, <qube.biz>, <qubez.org>, and <pebblesprint.com>.
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.
Complainant has rights to the ORBITZ trademark. See Reg. No. 2,858,685 registered on June 29, 2004. Those rights are effective as of Complainant’s filing date with the USPTO or April 18, 2000. See Planetary Soc’y v. Rosillo, D2001-1228 (WIPO Feb. 12, 2002) (holding that the effective date of Complainant’s trademark rights date back to the application’s filing date).
The Disputed Domain Name, <orbotz.com>, consists of a single-character alteration to the ORBITZ mark and the addition of the generic top-level domain (“gTLD”) “.com.” Except in certain cases where the gTLD encompasses a part of the mark, the addition of a gTLD does not distinguish a domain from the mark. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of a generic top-level domain does not distinguish the disputed domain name from the mark). Furthermore, a single-character alteration may be an indication of “typosquatting,” and such domains are consistently held to be confusingly similar. See Wachovia Corp. v. Peter Carrington, D2002-0775 (WIPO Oct. 2, 2002) (collecting cases).
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s trademark.
Under the Policy ¶ 4(c), Respondent may demonstrate rights or legitimate interests in the Disputed Domain Names by showing that:
(i) before any notice of this dispute, Respondent used, or demonstrably prepared to use, the domain names or a name corresponding to the domain names in connection with a bona fide offering of goods or services;
(ii) Respondent has been commonly known by the domain names, even if no trademark or service mark rights have been acquired; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain names, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue.
A Complainant must make a prima facie case that Respondent lacks rights and legitimate interests before the burden 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). Respondent is not known by the Disputed Domain Name and is not licensed, authorized, or otherwise permitted to use Complainant’s marks in domain names. While Respondent claims to use the “Orbotz” name for a proposed series of children’s stories, there is no evidence suggesting the name has been used in trade. Therefore, the Panel finds that Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain name.
Respondent claims to have legitimate rights and interests in the Disputed Domain Name based on the intent to use the “Orbotz” name in stories about robots in outer space. While preparations for use do generate legitimate rights and interests, in the over twelve years since it was registered, the Disputed Domain Name has never been used for this purpose. Instead, after seven years of inactivity on the “Orbotz” story project, Respondent used a parking service that in turn used the Disputed Domain Name to host hyperlinks to third party websites. The Disputed Domain Name has been used for this purpose for the past five years. Using a domain name to offer hyperlink advertisements is not a Policy ¶ 4(c)(i) bona fide offering of goods or services, or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
Respondent’s explanation for its intended use of the Domain Name has some plausibility, and accordingly the question is a close one, but on balance, and particularly given the extended period of inactivity on the “Orbotz” project and the usage of a parking service during that time, the Panel finds that Respondent does not have rights or legitimate interests in the Disputed Domain Name.
Respondent registered the Disputed Domain Name on July 23, 2001, less than two months after Complainant’s ORBITZ mark was first used in commerce. While Complainant’s rights in the mark extend to the date the registration was filed, that does not mean it is reasonable to assume Respondent was aware of the mark when it registered the Disputed Domain Name. Complainant presents no evidence to suggest that Respondent was aware of the mark at that time. Nonetheless, Complainant relies on the theory that Respondent is “typosquatting” and alleges a pattern of this behavior by citing other domains registered to Respondent. See Complainant’s Ex. O.
Respondent presents ample evidence that the registration was not made in bad faith and that it was not in fact “typosquatting.” Respondent contends that it registered <orbotz.com> with the intention of developing a series of stories about robots called “Orbotz” on a planet in outer space. This contention is supported by Respondent’s development of model “Orbotz” characters and the use of the character QB in Respondent’s primary business of creating LEGO sculptures. See Respondent’s Ex. A, C. Furthermore, versions of Respondent’s <allergictogravity.com> website included explicit references to QB as recently as 2012, stating that “[h]e has a very long and unique story that we will be sharing with you over the next few months.” See Respondent’s Ex. C.
As for the allegations of a “pattern” of “typosquatting” behavior, Complainant relies on Respondent’s registration of <qube.biz>, <qubez.org>, and <pebblesprint.com>. Complainant presents absolutely no evidence as to what marks these domain registrations purportedly infringe. Respondent, by contrast, presents persuasive evidence of legitimate business use for each of these domains, further undermining the “typosquatting” argument. The first two were purchased to protect Respondent’s <qubez.net> domain. The third Respondent intends to develop into a website dedicated to printing, and Respondent is not aware of any marks currently in use that the <pebblesprint.com> domain could infringe (nor has Complainant identified any).
Respondent’s early use the Disputed Domain Name provides additional evidence of good faith registration. Until the website was parked in or around 2008, Respondent apparently used the domain name to promote an unrelated financial self-help initiative and the Allergic to Gravity sculpture business. See Complainant’s Ex. D. In addition, Respondent never sought to sell the Disputed Domain Name to Complainant, and rejected offers from third parties to purchase it.
Based upon this analysis, Complainant has not met its burden of proof to show that Respondent registered the domain name with a Policy ¶ 4(a)(iii) bad faith intent to trade on the goodwill associated with Complainant’s marks. See e.g. Schering Aktiengesellschaft v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that because “Respondent neither offered the Domain Name for sale, nor wanted it to disrupt Complainant’s business, [nor] prevent Complainant from reflecting the mark in its domain,” it did not register or use the domain name <metagen.com> in bad faith).
Even if Respondent had registered the Disputed Domain Name in bad faith, it is not at all clear that it was used in bad faith. The bad faith requirement of Policy ¶ 4(a)(iii) is a conjunctive requirement, and both the registration and the use by Respondent must be in bad faith. See Greyson Int’l, Inc. v. Loncar, D2003-0805 (WIPO Dec. 3, 2003) (“Paragraph 4(a)(iii) is conjunctive [requiring that] both registration and use in bad faith must be proven. Numerous panels have applied this language strictly, to deny complaints [where the complainant fails to prove both].”).
The “competing hyperlinks” cited by Complainant consist of a single link to “flights” in a list titled “related searches” that appears in a sidebar on the right side of the website. See Complainant’s Ex. H. Additional terms in the sidebar could be construed as related to the ORBITZ mark, but they are not highlighted by Complainant as relevant. The main content of the website includes “sponsored listings” linked to unrelated content including college information and fantasy football. Complainant provides no information about what content is accessible thought the “flights” link, so there is no evidence in the record that the link actually resolves to competing products or services.
The Panel therefore finds that the Disputed Domain Name has not been registered or used in bad faith.
Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <orbotz.com> domain name REMAIN WITH Respondent.
Michael A. Albert, Panelist
Dated: July 25, 2013
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