Holiday Systems International of Nevada v. C3 / Jim Gioiosa
Claim Number: FA1310001526701
Complainant is Holiday Systems International of Nevada (“Complainant”), represented by Mark Borghese, Nevada, USA. Respondent is C3 / Jim Gioiosa (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <vacationcash.net>, <myvacationbank.biz>, <myvacationbankaccount.com>, <vacationbank.biz>, <hsiburnlist.com>, and <us-texmex.net>, registered with FASTDOMAIN, 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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2013; the National Arbitration Forum received payment on October 25, 2013.
On October 28, 2013, FASTDOMAIN, INC. confirmed by e-mail to the National Arbitration Forum that the <vacationcash.net>, <myvacationbank.biz>, <myvacationbankaccount.com>, <vacationbank.biz>, <hsiburnlist.com>, and <us-mex.net> domain names are registered with FASTDOMAIN, INC. and that Respondent is the current registrant of the names. FASTDOMAIN, INC. has verified that Respondent is bound by the FASTDOMAIN, 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 October 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 18, 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@vacationcash.net, postmaster@myvacationbank.biz, postmaster@myvacationbankaccount.com, postmaster@vacationbank.biz, postmaster@hsiburnlist.com, and postmaster@us-mex.net. Also on October 29, 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 November 20, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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.
Complainant’s Contentions
Policy ¶ 4(a)(i)
Complainant claims to use the MYVACATIONBANK, VACATIONCASH, HSI, BURN WEEKS, US-MEX, and US-MEXICO TOURISM ALLIANCE marks in connection with its travel, vacation, and real estate-related services. Complainant has registered the MYVACATIONBANK mark with the United States Patent and Trademark Office ("USPTO") (e.g. Reg. No. 4,071,838 filed December 9, 2010, registered on December 13, 2011). Complainant has further registered the VACATIONCASH mark with the USPTO (e.g. Reg. No. 4,092,473 filed on December 9, 2010, registered on January 24, 2012). Complainant’s HSI mark is also registered with the USPTO (e.g. Reg. No. 3,430,815 filed on September 14, 2007, registered on May 20, 2008). Complainant also holds a USPTO registration for BURN WEEKS (e.g. Reg. No. 2,459,164 filed August 26, 1998, registered on June 12, 2001).
Complainant has established common law rights in all of the marks, specifically US-MEX and US-MEXICO TOURISM ALLIANCE. The marks have been used since September 2010 for purposes of enhancing tourism between the United States and Mexico through political and commercial advocacy. Complainant operates a website to promote its endeavors under the US-MEX and US-MEXICO TOURISM ALLIANCE marks. Complainant has obtained substantial sales under the US-MEX and US-MEXICO TOURISM ALLIANCE marks.
The <myvacationbank.biz>, <myvacationbankaccount.com>, and <vacationbank.biz> domain names are confusingly similar in regards to the MYVACATIONBANK mark. The presence of a generic top-level domain (“gTLD”) such as “.com” and “.biz” is not relevant here. The addition of the descriptive term “account” adds to confusing similarity. The removal of the term “my” from the mark in the <vacationbank.biz> domain name is not enough to distinguish the domain name from the mark.
The <vacationcash.net> domain name is essentially identical to the VACATIONCASH mark, putting aside the gTLD “.net.”
The <hsiburnlist.com> domain name incorporates the HSI mark along with the phrase “burn list,” a term Complainant uses as the masthead of weekly promotional e-mails sent to consumers.
Policy ¶ 4(a)(ii)
Respondent is known by the names “C3 / Jim Gioiosa” as noted in the WHOIS information. Complainant has not authorized, licensed, or sponsored Respondent’s use of the service marks in the disputed domain names.
The <vacationcash.net> domain name resolves to a website where information concerning potential customers is collected by the Respondent. Based on the phrase “The Best Vacation Club” as well as the travel related photographs which scroll across the background, Respondent is presumably collecting information to offer services directly in competition with HSI. The <myvacationbank.biz> and <usmex.net> domain names previously resolved to similar websites where information concerning potential customers of HSI was collected by the Respondent.
The <hsiburnlist.com> domain name resolves to a website dedicated to hyperlinks that redirect Internet users to other companies offering a wide range of services.
The <myvacationbank.biz>,<myvacationbankaccount.com>, <vacationbank.biz>, and <us-mex.net> domain names do not resolve to any active website at all.
Policy ¶ 4(a)(iii)
Respondent seeks to create a likelihood that Internet users will believe that Complainant is associated with any websites associated with the <vacationcash.net> and <hsiburnlist.com> disputed domain names.
Respondent’s competitive solicitations through the <myvacationbank.biz>, <usmex.net>, and <vacationcash.net> domain names illustrate Respondent’s intent to disrupt Complainant’s business.
Respondent’s current use of the <vacationcash.net> domain name, and historical use of the <myvacationbank.biz> and <usmex.net> domain names, to request personal and account information from Internet users is evidence of bad faith.
Respondent’s decision to make the <myvacationbank.biz>,<myvacationbankaccount.com>, <vacationbank.biz>, and <us-mex.net> domain names’ websites inactive illustrates a bad faith act of registering infringing domain names for no productive purpose.
Respondent had actual knowledge of Complainant’s marks as Respondent was employed by Complainant from February 2010 until June 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 claims to use the MYVACATIONBANK, VACATIONCASH, HSI, BURN WEEKS, US-MEX, and US-MEXICO TOURISM ALLIANCE marks in connection with its travel, vacation, and real estate-related services. Complainant demonstrates that it registered the MYVACATIONBANK mark with the USPTO (e.g. Reg. No. 4,071,838 filed December 9, 2010, registered on December 13, 2011). Complainant has further demonstrates that it registered the VACATION CASH mark with the USPTO (e.g. Reg. No. 4,092,473 filed on December 9, 2010, registered on January 24, 2012). Complainant demonstrates that its HSI mark is also registered with the USPTO (e.g. Reg. No. 3,430,815 filed on September 14, 2007, registered on May 20, 2008). Complainant demonstrates that it also holds a USPTO registration for BURN WEEKS (e.g. Reg. No. 2,459,164 filed August 26, 1998, registered on June 12, 2001). The Panel agrees that Complainant USPTO registrations of these domain names satisfactorily illustrates Policy ¶ 4(a)(i) rights. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (determining that the complainant’s trademark registrations with the USPTO for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Complainant argues that it has established common law rights in US-MEX and US-MEXICO TOURISM ALLIANCE. Complainant alleges that the marks have been used since September 2010 for purposes of enhancing tourism between the United States and Mexico through political and commercial advocacy. Complainant states that it operates a website to promote its endeavors under the US-MEX and US-MEXICO TOURISM ALLIANCE marks. Complainant claims that it has obtained substantial sales under the US-MEX and US-MEXICO TOURISM ALLIANCE marks. Complainant also claims that it has used its MYVACATIONBANK mark as far back as August 12, 2010. Ordinarily, a common law mark only exists when there is a showing that the terms/phrase has acquired secondary meaning in the minds of consumers. See, e.g., AOL LLC v. DiMarco, FA 1275978 (Nat. Arb. Forum Sept. 9, 2009) (“‘Secondary meaning’ is acquired when ‘in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product rather than the product itself.’”). The Panel finds that Complainant has sufficiently illustrated rights in the YVACATIONBANK, US-MEXICO TOURISM ALLIANCE, and US-MEX marks and finds that Complainant has established rights in those marks pursuant to Policy ¶ 4(a)(i).
Complainant next argues that the <myvacationbank.biz>, <myvacationbankaccount.com>, and <vacationbank.biz> domain names are confusingly similar to the MYVACATIONBANK mark. Complainant argues that the presence of the gTLDs “.com” and “.biz” is not relevant here. Complainant also suggests that the addition of the descriptive term “account” adds to confusing similarity. Complainant argues that the removal of the term “my” from the mark in the <vacationbank.biz> domain name is not enough to distinguish the domain name from the mark. The Panel agrees that the gTLDs “.com” and “.biz” are not relevant to this analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). The Panel also agrees that adding the term “account” to the MYVACATIONBANK mark in the <myvacationbankaccount.com> domain name enhances the confusing similarity. 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). The Panel agrees that the <myvacationbank.biz>, <myvacationbankaccount.com>, and <vacationbank.biz> domain names are confusingly similar to the MYVACATIONBANK mark under Policy ¶ 4(a)(i).
Complainant next argues that the <vacationcash.net> domain name is essentially identical to the VACATIONCASH mark, putting aside the gTLD “.net.” The Panel agrees that the <vacationcash.net> domain name is identical to the VACATIONCASH mark, as the addition of the gTLD is not in anyway distinctive. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant).
Complainant also argues that the <hsiburnlist.com> domain name incorporates the HSI mark along with the phrase “burn list,” a term Complainant uses as the masthead of weekly promotional e-mails sent to consumers. The Panel agrees that the gTLD is irrelevant. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). The Panel also agrees that the term “burnlist” enhances the confusing similarity of the domain name, as the term relates directly to a service provided under the HSI mark. See Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark).
Complainant has proven this element.
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 argues that Respondent is known by the name “C3 / Jim Gioiosa” as noted in the WHOIS information for the disputed domain names. Complainant has not authorized, licensed, or sponsored Respondent’s use of the service marks in the disputed domain names. The Panel notes that the WHOIS information lists “C3” and “Jim Gioiosa” as the registrant of record for all of the domain names. In the case of St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007), the panel could not find that the respondent was known by any of the domain names when there was nothing in the record that could suggest that the respondent had ever been known by the domain name. The Panel concludes that Respondent has never been known as the domain names under Policy ¶ 4(c)(ii).
Complainant next explains that the <vacationcash.net> domain name resolves to a website where information concerning potential customers is collected by the Respondent. Complainant alleges that based on the phrase “The Best Vacation Club” that appears on the domain name’s website, as well as the travel related photographs which scroll across the background, Respondent is presumably collecting information to offer services and promotions directly in competition with HSI. Complainant claims that the <myvacationbank.biz> and <usmex.net> domain names previously resolved to similar websites where information concerning potential customers of HSI was collected by the Respondent. The Panel notes evidence suggesting that the <vacationcash.net>, <myvacationbank.biz>, and <usmex.net> domain names have all resolved to websites that request “member sign in” and account generation processes. The panel in Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010), found that the respondent had engaged in phishing when it used the disputed domain name to solicit the personal information from Internet users who were presumably seeking the complainant’s services. The Panel agrees that Respondent’s phishing scheme is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant next argues that the <hsiburnlist.com> domain name resolves to a website dedicated to hyperlinks that redirect Internet users to other companies offering a wide range of services. The Panel notes that evidence suggests that the <hsiburnlist.com> domain name is indeed being used to promote various unrelated hyperlink content. In Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006), the panel found no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use when the respondent used the disputed domain name to host assorted hyperlinks. The Panel agrees that Respondent has no Policy ¶ 4(c)(i) bona fide offering, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, in regards to the <hsiburnlist.com> domain name.
Complainant notes that the <myvacationbank.biz>, <myvacationbankaccount.com>, <vacationbank.biz>, and <us-mex.net> domain names do not currently resolve to any website at all. The Panel notes that all of these domain names presently resolve to a website which provides a notice indicating that the website is “temporarily unavailable.” The Panel agrees that it is hard to infer Policy ¶ 4(a)(ii) rights or legitimate interests in respect to the <myvacationbank.biz>, <myvacationbankaccount.com>, <vacationbank.biz>, and <us-mex.net> domain names when they do not resolve to any active website. See, e.g., Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant has proven this element.
Complainant claims that Respondent’s competitive solicitations through the <myvacationbank.biz>, <usmex.net>, and <vacationcash.net> domain name illustrate Respondent’s intent to disrupt Complainant’s business. The Panel notes that it appears that the <vacationcash.net> domain name is currently used, and the <myvacationbank.biz> and <usmex.net> were previously used, to operate websites that purported to offer vacation and travel services to Internet users who signed up for an account. The Panel agrees that such conduct indicates that Respondent sought to unfairly compete with Complainant in Policy ¶ 4(b)(iii) bad faith disruption by using confusingly similar domain names to acquire clients for a competing business. See, e.g., 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 seeks to create a likelihood that Internet users will believe that Complainant is associated with any websites associated with the <vacationcash.net> and <hsiburnlist.com> disputed domain names. The Panel notes that the <hsiburnlist.com> disputed domain name resolves to a website promoting hyperlink advertisements, whilst the <vacationcash.net> domain name resolves to a website which requests the Internet user to create an account. Previous panels have widely held that the use of a domain name for hyperlink advertisements serves as evidence of a Policy ¶ 4(b)(iv) bad faith attempt to profit through the likelihood of Internet users’ confusion. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). Panels also agree that any other use of a domain name that would otherwise illustrate an attempt to profit through a likelihood of confusion evidences Policy ¶ 4(b)(iv) bad faith. 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). Therefore, the Panel finds that Respondent acted in bad faith under Policy ¶ 4(b)(iv) in respect to the <vacationcash.net> and <hsiburnlist.com> disputed domain names.
Complainant next argues that Respondent’s current use of the <vacationcash.net> domain name, and historical use of the <myvacationbank.biz> and <usmex.net> domain names, to request personal and account information from Internet users is evidence of bad faith. The Panel agrees that the uses of these domain names serves as evidence of a Policy ¶ 4(a)(iii) bad faith attempt to phish for the personal information of Internet users through confusingly similar domain names. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant states that Respondent’s decision to make the <myvacationbank.biz>,<myvacationbankaccount.com>, <vacationbank.biz>, and <us-mex.net> domain names’ inactive illustrates a bad faith act of registering infringing domain names for no productive purpose. The Panel agrees here that Policy ¶ 4(a)(iii) bad faith is inferred when the respondent elects to make no active use of the domain names, yet holds onto them anyway. See, e.g., Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that Respondent had actual knowledge of Complainant’s marks as Respondent was employed by Complainant from February 2010 until June 2011. The Panel agrees that as an employee of Complainant, Respondent had actual knowledge of Complainant’s rights in its marks so as to evidence Policy ¶ 4(a)(iii) bad faith. 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").
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <vacationcash.net>, <myvacationbank.biz>, <myvacationbankaccount.com>, <vacationbank.biz>, <hsiburnlist.com>, and <us-mex.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: December 3 2013
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