Orbitz Worldwide, LLC v. Above.com Legal
Claim Number: FA1312001535314
Complainant is Orbitz Worldwide, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Above.com Legal (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <orbigz.com>, registered with ABOVE.COM PTY LTD.
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 December 18, 2013; the National Arbitration Forum received payment on December 18, 2013.
On December 19, 2013, ABOVE.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <orbigz.com> domain name is registered with ABOVE.COM PTY LTD. and that Respondent is the current registrant of the name. ABOVE.COM PTY LTD. has verified that Respondent is bound by the ABOVE.COM PTY LTD. 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 December 23, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 13, 2014 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@orbigz.com. Also on December 23, 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 January 15, 2014, 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 name be transferred from Respondent to Complainant.
Complainant
a) Complainant has rights in the ORBITZ.COM mark, which it uses in connection with travel agency services. Complainant is the owner of a United States Patent and Trademark Office (“USPTO”) registration for the ORBITZ.COM mark (Reg. No. 2,951,983 registered May 17, 2005).
b) The <orbigz.com> domain name is confusingly similar to the ORBITZ.COM mark. The domain name is a single letter different from the mark.
c) Respondent has neither rights nor legitimate interests in the disputed domain name.
a. Respondent is not commonly known by the disputed domain name. The WHOIS record suggests that Respondent is known by a name other than <orbigz.com>, and Respondent was not licensed or authorized by Complainant to use the ORBITZ.COM mark in a domain name.
b. Respondent uses the <orbigz.com> domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, in direct violation of the affiliate agreement.
d) Respondent registered and is using the <orbigz.com> domain name in bad faith.
a. Respondent has attempted to commercially benefit from creating a likelihood of confusion and then redirecting Internet users to Complainant’s website.
b. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
c. Respondent was aware of Complainant’s rights in the ORBITZ.COM mark as a result of Respondent’s participation in Complainant’s affiliate agreement.
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 asserts that it has rights in the ORBITZ.COM mark, which it uses in connection with travel agency services. Complainant claims that it is the owner of a USPTO registration for the ORBITZ.COM mark (Reg. No. 2,951,983 registered May 17, 2005). Panels have found that registration of a mark is sufficient evidence of having rights in the mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)). Panels have elaborated that these rights satisfy Policy ¶ 4(a)(i) despite their existence in a jurisdiction other than that in which the respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel finds that Complainant has rights in the ORBITZ.COM mark under Policy ¶ 4(a)(i).
Complainant argues that the <orbigz.com> domain name is confusingly similar to the ORBITZ.COM mark. Complainant notes that the domain name is a single letter different from its mark. The panel in Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000), found that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive. Therefore, the Panel finds that the <orbigz.com> domain name is confusingly similar to the ORBITZ.COM mark pursuant to Policy ¶ 4(a)(i).
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 next alleges that Respondent has neither rights nor legitimate interests in the disputed domain name, as Respondent is not commonly known by the disputed domain name. Complainant contends that the WHOIS record suggests that Respondent is known by a name other than <orbigz.com>, and Respondent was not licensed or authorized by Complainant to use the ORBITZ.COM mark in a domain name. The Panel notes that the domain name registrant listed in the WHOIS record for the <orbigz.com> domain name is “Above.com Legal.” Therefore, the Panel finds that Respondent is not commonly known by the <orbigz.com> domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent uses the <orbigz.com> domain name to redirect Internet users to Complainant’s own website through Complainant’s affiliate program, in direct violation of the affiliate agreement. In Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006), the panel found that the respondent’s use of the disputed domain names to divert Internet users attempting to reach the complainant’s website and in breach of the complainant’s affiliate program is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds that Respondent’s use of the <orbigz.com> domain name to redirect to Complainant’s own website, in breach of the affiliate agreement between the Parties, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Complainant has proven this element.
Complainant argues that Respondent registered and is using the <orbigz.com> domain name in bad faith. According to Complainant, Respondent has attempted to commercially benefit from creating a likelihood of confusion and then redirecting Internet users to Complainant’s website. The panel in Blue Nile, Inc. v. Jiewei Li, FA 1411371 (Nat. Arb. Forum Nov. 23, 2011), concluded that the respondent’s registration and use of the disputed domain name to resolve to the complainant’s official website violates the complainant’s affiliate agreement and constitutes bad faith registration and use. Therefore, the Panel finds that Respondent registered and is using the <orbigz.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that the sole difference between the ORBITZ.COM mark and the <orbigz.com> domain name is the replacement of the letter “t” with the letter “g,” and the Panel finds that this is a minor change meant to prey on typographic errors of Internet users searching for Complainant directly. The Panel finds that Respondent has engaged in typosquatting behavior demonstrating bad faith under Policy ¶ 4(a)(iii). 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).”).
Complainant alleges that Respondent was aware of Complainant’s rights in the ORBITZ.COM mark as a result of Respondent’s participation in Complainant’s affiliate agreement. The Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION 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 <orbigz.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: January 17, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page