Radisson Hotels International, Inc. v. Radisson Travels
Claim Number: FA1306001505970
Complainant is Radisson Hotels International, Inc. (“Complainant”), represented by Elizabeth C. Buckingham of Dorsey & Whitney LLP, Minnesota, USA. Respondent is Radisson Travels (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <radissontravels.com>, registered with Tucows, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2013; the National Arbitration Forum received payment on June 21, 2013.
On June 21, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <radissontravels.com> domain name is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 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@radissontravels.com. Also on June 21, 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 July 17, 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 makes the following contentions.
i. Nowhere in the WHOIS information other than the identification of registrant name and the email address radissontravels@gmail.com is there any indication that Respondent is commonly known by the disputed domain name.
ii. Respondent uses the disputed domain name to resolve to a website through which Respondent purportedly offers hotel and other travel-related reservations.
i. Respondent’s unauthorized use of Complainant’s famous RADISSON mark in the disputed domain name which resolves to a website that offers hotel and other travel-related reservation services is in direct competition with Complainant’s services.
ii. Respondent is also using the domain name for its own commercial gain by generating fees through offering hotel and travel-related reservation services to Internet users who are likely confused as to whether Respondent is affiliated with Complainant.
iii. Similarly, Respondent is passing itself off as Complainant, creating further confusion as to the affiliation of Complainant with the disputed domain.
iv. Respondent had actual knowledge of the RADISSON mark at the time of registration.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is an internationally renowned hotel company.
2. Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the RADISSON mark (e.g., Reg. No. 920,862, registered September 21, 1971).
3. Respondent registered the disputed domain name on January 29, 2008.
4. Respondent uses the disputed domain name to resolve to a website through which Respondent purportedly offers hotel and other travel-related services including reservations.
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 next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s RADISSON mark. Complainant argues that the <radissontravels.com> domain name is confusingly similar to Complainant’s RADISSON mark as the domain fully incorporates the mark and merely adds the generic term “travels,” and the gTLD “.com.” Previous panels have found that the additions of a generic term and a gTLD to a complainant’s mark are insufficient to distinguish the disputed domain from the mark at issue. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). The addition of the word “travels”, which is closely associated with Complainant’s business of operating hotels, reinforces the notion that the domain name is concerned with travel services provided by Complainant and under the name of its chain of hotels. Therefore, the Panel finds that Respondent’s domain name <radissontravels.com> is confusingly similar to Complainant’s RADISSON mark under Policy ¶ 4(a)(i)).
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. 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.”).
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 RADISSON trademark and to use it in its domain name, adding only the word “travels” which suggests that the services being offered to the user of the domain name are travel services arranged by Complainant under the name of its chain of hotels;
(b) Respondent has then used the disputed domain name to resolve to a website through which Respondent purportedly offers hotel and other travel-related services including reservations;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name. Complainant contends that nowhere in the WHOIS information other than the identification of registrant name and the email address radissontravels@gmail.com is there any indication that Respondent is commonly known by the disputed domain name. Further, Complainant contends that it has not licensed or otherwise licensed Respondent’s use of the domain name containing Complainant’s mark. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. Therefore, the Panel finds that without license or authorization from Complainant to use its mark, and without further evidence indicating otherwise, Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name); see also Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”).
(d) Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to resolve to a website through which Respondent purportedly offers hotel and other travel-related services including reservations. Complainant asserts that such services directly compete with Complainant. Further, Complainant contends that Respondent is attempting to pass itself off as Complainant. Complainant notes that the resolving page features the RADISSON mark at the bottom of the homepage in a section called “Our Partners.” Previous panels have failed to find a bona fide offering of goods or services or for a legitimate noncommercial or fair use where the respondent passes itself off as the complainant or diverts Internet traffic from the complainant to the respondent’s own website. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel finds that Respondent’s use of the disputed domain name to attract and direct Internet users to a commercial website completely unrelated to Complainant but calculated to create an association with Complainant by passing itself off as Complainant, is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(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 contends that Respondent’s unauthorized use of Complainant’s famous RADISSON mark in connection with a website that offers hotel and other travel-related services including reservation services is in direct competition with Complainant’s services. Complainant argues that such competition disrupts Complainant’s business, and therefore reveals Respondent’s bad faith. Complainant includes a screenshot of the resolving page in Exhibit G, showing links to competitors including Hilton, and Sheraton. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant’s through the confusingly similar domain name. 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).”). The Panel finds evidence of bad faith under Policy ¶ 4(b)(iii) because Complainant has provided the Panel with evidence showing Respondent provides links to Complainant’s competitors, thereby disrupting Complainant’s business.
Secondly, Complainant further argues that Respondent is using the domain name for its own commercial gain by generating fees through offering hotel and travel-related services including reservations to Internet users who are likely confused as to whether Respondent is affiliated with Complainant, showing Respondent’s bad faith. The Panel agrees and finds evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent is attempting to benefit commercially from the goodwill associated with Complainant’s RADISSON mark through reservation service fees generated through links to competitors of Complainant. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Thirdly, Complainant argues that Respondent is passing itself off as Complainant, creating further confusion as to the affiliation of Complainant with the disputed domain. Complainant notes that the resolving page features the RADISSON mark at the bottom of the homepage in a section called “Our Partners.” Previous panels have found evidence of bad faith where a respondent passes itself off as a complainant for commercial benefit. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). As the Panel determines that Respondent’s activity reaches the level of passing off, the Panel finds that Respondent registered and used the disputed domain in bad faith pursuant to Policy ¶ 4(a)(iii).
Fourthly, Complainant argues that Respondent had actual knowledge of the RADISSON mark at the time of registration, which Complainant asserts provides evidence of bad faith registration. Complainant contends Respondent’s actual knowledge is demonstrated by Respondent’s use of the RADISSON mark in its domain name and on the resolving page. Previous panels have found that a respondent’s actual knowledge of a complainant’s rights in a mark is evidence of bad faith registration. See 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"). The Panel determines that Respondent had actual knowledge of Complainant's mark and rights and therefore finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Fifthly, 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 RADISSON mark and in view of the conduct that Respondent has 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 <radissontravels.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 17, 2013
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