Priceline.com, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft
Claim Number: FA1403001547179
Complainant is Priceline.com, Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Private Registrations Aktien Gesellschaft (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <apriceline.com>, <pricelinc.com>, and <pricelinie.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Ho-Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 6, 2014; the National Arbitration Forum received payment on March 6, 2014.
On March 7, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 March 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@apriceline.com, postmaster@pricelinc.com, postmaster@pricelinie.com. Also on March 24, 2014, 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 April 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho-Hyun Nahm, Esq. 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.
A. Complainant
i. Complainant, Priceline.com, Inc., is a leading online travel company that offers hotel and accommodation reservations at over 295,000 properties worldwide.
ii. Complainant is the owner of a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the PRICELINE.COM mark (Reg. No. 2,481,112, registered August 28, 2001).
iii. The disputed domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The introduction of the generic top-level domain (“gTLD”) is not enough to distinguish this domain name.
i. Respondent has no rights or legitimate interests in respect of the disputed domain names.
ii. Respondent has not been commonly known by the disputed domain names.
iii. Respondent is using the disputed domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business.
i. The disputed domain names should be considered as having been registered and being used in bad faith.
ii. Respondent has listed the <apriceline.com> domain name for sale.
iii. Respondent is a recalcitrant serial cybersquatter.
iv. Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant.
v. Respondent is using the disputed domain names to attract and mislead consumers for Respondent’s own profit.
vi. Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that
<apriceline.com> domain name was registered on June 1, 2008 and that <pricelinc.com> and <pricelinie.com> domain names were registered on October 3, 2005.
Complainant established that it had rights in the mark contained in the disputed domain names. Respondent has no rights to or legitimate interests in the disputed domain names.
Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent registered and used the disputed domain names 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 asserts that it is a leading online travel company that offers hotel and accommodation reservations at over 295,000 properties worldwide. Complainant argues that it is the owner of a trademark registration with the USPTO for the PRICELINE.COM mark (Reg. No. 2,481,112, registered August 28, 2001). See Complainant’s Exhibit E. The Panel observes that Respondent appears to reside in Saint Vincent and the Grenadines. However, the Panel holds that Complainant does not have to register its mark in the country of Respondent’s residence under Policy ¶ 4(a)(i). See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant’s registration of the PRICELINE.COM mark with the USPTO sufficiently proves its rights in the mark pursuant to 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 argues that Respondent’s <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names are confusingly similar to Complainant’s mark because they differ by only a single character from Complainant’s mark. The Panel observes that Respondent adds an additional letter “a” or “i” to its <apriceline.com> and <pricelinie.com> domain names. The Panel determines that Respondent’s inclusion of an additional character to Complainant’s mark does not differentiate the domain names from Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Valpak Direct Mktg. Sys., Inc. v. Manila Indus., Inc., D2006-0714 (WIPO Aug. 17, 2006) (finding the <vallpak.com> domain name to be confusingly similar to the VALPAK mark under Policy ¶ 4(a)(i)). The Panel notes that Respondent replaces the letter “e” in Complainant’s PRICELINE.COM mark with the letter “c” in its <pricelinc.com> domain name. The Panel holds that Respondent’s substitution of letters in a mark is inconsequential to a Policy ¶ 4(a)(i) analysis. See Belkin Components v. Gallant, FA 97075 (Nat. Arb. Forum May 29, 2001) (finding the <belken.com> domain name confusingly similar to the complainant's BELKIN mark because the name merely replaced the letter “i” in the complainant's mark with the letter “e”). Accordingly, the Panel concludes that Respondent’s <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names are confusingly similar to Complainant’s PRICELINE.COM mark under 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 contends that Respondent has not been commonly known by the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names. Complainant asserts that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Complainant argues that it has not given Respondent permission to use Complainant’s mark in a domain name. The Panel notes that the WHOIS information lists “Domain Admin / Private Registrations Aktien Gesellschaft” as the registrant of the disputed domain name. See Complainant’s Exhibit I. In Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the panel concluded that 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 respondent was commonly known by the disputed domain name. Therefore, the Panel concludes that Respondent is not commonly known by the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names under Policy ¶ 4(c)(ii).
Complainant alleges that Respondent is using the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names to redirect unsuspecting Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. The Panel notes that Respondent’s disputed domain names lead to pages that provide competing links called “Airline Tickets,” “Air Flights Cheap,” “Priceline: Official Site,” and more. See Complainant’s Exhibit H. Complainant contends that Respondent presumably receives pay-per-click fees from these linked websites, which is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel agrees that Respondent’s use of the disputed domain names to provide competing hyperlinks 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. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant argues that Respondent is a recalcitrant serial cybersquatter. Complainant asserts that searches through the NAF and WIPO UDRP decision databases reveal that Respondent has engaged in an ongoing pattern of such behavior. See Complainant’s Exhibit N: Tumblr, Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1543393 (Nat. Arb. Forum March 12, 2012); The Gap, Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1541856 (Nat. Arb. Forum March 14, 2014); Univision Communications Inc. v. Domain Admin / Private Registrations Aktien Gesellschaft, FA 1536966 (Nat. Arb. Forum Jan. 28, 2014). As the Panel finds that Respondent has engaged in prior UDRP proceedings resulting in findings of bad faith, the Panel determines that Respondent has registered and is using the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names in bad faith under Policy ¶ 4(b)(ii). See Azar Int’l Inc. v. Texas Int’l Prop. Assocs., FA 1122600 (Nat. Arb. Forum Feb. 18, 2008) (determining that the respondent’s forty-one prior UDRP rulings were evidence of bad faith registration under Policy ¶ 4(b)(ii)).
Complainant contends that Respondent’s advertised pay-per-click links displayed on the resolving websites promotes products that compete with Complainant. The Panel notes that Respondent’s <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names lead to websites containing competing links, such as “Air Flights Cheap,” “Last Minute Flight Deals,” “Air Fare Tickets,” and more. See Complainant’s Exhibit H. Complainant asserts that Respondent’s use of the domain names is in an attempt to divert consumers and disrupt Complainant’s business. Previous panels have held that a respondent’s use of a domain name to offer competing advertisements disrupts a complainant’s business. 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).”). Therefore, the Panel finds that Respondent’s use of the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names disrupts Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii).
Complainant claims that Respondent is using the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names to attract and mislead consumers for its own profit. The Panel observes that Respondent uses the disputed domain names to provide links that directly compete with Complainant titled “Airline Tickets,” “Last Minute Flight Deals,” “Cheap Airline Tickets,” and others. See Complainant’s Exhibit H. Complainant alleges that Respondent is using the disputed domain names to set up a “click through” website for which it likely receives revenue for each misdirected Internet user. Accordingly, the Panel concludes that Respondent is using the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names in bad faith under Policy ¶ 4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Complainant alleges that Respondent’s typosquatting behavior is, in and of itself, evidence of bad faith. The Panel notes that Respondent has changed Complainant’s PRICELINE.COM mark in the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names by only adding a letter or substituting one letter for another. As the Panel finds that Respondent has included Complainant’s PRICELINE.COM mark by only adding or substituting a letter, the Panel finds that Respondent has engaged in typosquatting and finds 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).”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apriceline.com>, <pricelinc.com>, and <pricelinie.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: April 24, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page