Orbitz Worldwide, LLC v. Domain Admin / Abadaba S.A.
Claim Number: FA1405001561212
Complainant is Orbitz Worldwide, LLC (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Domain Admin / Abadaba S.A. (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <korbitz.com> and <cheaoptickets.com>, registered with FABULOUS.COM PTY LTD.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically May 23, 2014; the National Arbitration Forum received payment May 23, 2014.
On May 27, 2014, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <korbitz.com> and <cheaoptickets.com> domain names are registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the names. FABULOUS.COM PTY LTD. verified that Respondent is bound by the FABULOUS.COM PTY LTD. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 28, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 17, 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@korbitz.com, postmaster@cheaoptickets.com. Also on May 28, 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 June 25, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
1. Complainant has rights in the ORBITZ and CHEAP TICKETS marks under Policy ¶ 4(a)(i).
a. Complainant was formed in 1999, and is now a leading global online travel company that uses innovative technology to enable leisure and business travelers to research, plan, and book a broad range of travel products.
b. Complainant holds trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the CHEAP TICKETS (Reg. No. 2,021,749 registered December 10, 1996), CHEAPTICKETS.COM (Reg. No. 2,665,841 registered December 24, 2002), and CHEAP TICKETS INC. (Reg. No. 3,750,940 registered February 3, 2010) marks.
c. Complainant also holds trademark registrations with the USPTO for the ORBITZ (e.g., Reg. No. 2,858,685 registered June 29, 2004) and ORBITZ.COM (Reg. No. 2,951,983 registered May 17, 2005) marks.
d. Respondent’s <korbitz.com> domain name is confusingly similar to Complainant’s ORBITZ mark.
e. Respondent’s <cheaoptickets.com> domain name is confusingly similar to Complainant’s CHEAP TICKETS mark.
2. Respondent has no rights to or legitimate interests in the <korbitz.com> and <cheaoptickets.com> domain names.
a. Respondent has not been commonly known by the disputed domain names.
i. The WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant.
ii. Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s mark.
iii. Respondent is not sponsored by or legitimately affiliated with Complainant in any way.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
i. Respondent uses 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. Respondent presumably receives pay-per-click fees from the links displayed on Respondent’s websites.
3. Respondent registered and is using the <korbitz.com> and <cheaoptickets.com> domain names in bad faith.
a. Respondent is a serial cybersquatter, and has established a pattern of such behavior. See Complainant’s Exhibit N.
b. Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii) by redirecting Internet users to a website featuring links to services in direct competition with those offered by Complainant, thereby disrupting Complainant’s business.
c. Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s marks and commercially benefitting from that confusion.
d. Respondent’s use of the disputed domain names indicates typosquatting behavior.
1. The Panel notes that Respondent’s <korbitz.com> domain name was created on February 9, 2006 and Respondent’s <cheaoptickets.com> domain name was created August 25, 2004.
Complainant established that it has rights to and legitimate interests in the disputed domain names.
Respondent has no such rights or legitimate interests in the domain name containing misspelled versions of Complainant’s protected marks.
The disputed domain names are confusingly similar to Complainant’s protected marks.
Respondent registered and is using them 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 Complainant to 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 to or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given 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 will draw such inferences as the Panel 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.”).
Identical to or Confusingly Similar
Complainant’s evidence establishes that it was formed in 1999, and is now a leading global online travel company that uses innovative technology to enable leisure and business travelers to research, plan, and book a broad range of travel products. Complainant claims to hold trademark registrations with the USPTO for the CHEAP TICKETS (Reg. No. 2,021,749 registered December 10, 1996), CHEAPTICKETS.COM (Reg. No. 2,665,841 filed August 21, 2001; registered December 24, 2002), and CHEAP TICKETS INC. (Reg. No. 3,750,940 filed May 8, 2000; registered February 3, 2010) marks. Complainant also claims to hold trademark registrations with the USPTO for the ORBITZ (e.g., Reg. No. 2,858,685 registered June 29, 2004) and ORBITZ.COM (Reg. No. 2,951,983 registered May 17, 2005) marks. Registration of a mark with the USPTO sufficiently demonstrates that the owner of the registration has rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”). The Panel therefore finds that Complainant established Policy ¶ 4(a)(i) rights in the above marks, irrespective of the fact that Respondent appears to reside outside of the United States. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant registered its trademark in the country of the respondent’s residence).
Complainant argues that Respondent’s <korbitz.com> domain name is confusingly similar to Complainant’s ORBITZ mark. The Panel notes that Respondent displays Complainant’s ORBITZ mark in its entirety with the addition of the letter “k” and the generic top-level domain (“gTLD”) “.com.” Addition of a letter and a gTLD does not differentiate a disputed domain name from a given mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark). Given precedent, the Panel finds that Respondent’s <korbitz.com> domain name is confusingly similar to Complainant’s ORBITZ mark pursuant to Policy ¶ 4(a)(i).
Complainant also asserts that Respondent’s <cheaoptickets.com> domain name is confusingly similar to Complainant’s CHEAP TICKETS mark. The Panel notes that Respondent adds the letter “o” to Complainant’s CHEAP TICKETS mark and also removes the space between CHEAP and TICKETS. In Am. Online, Inc. v. Tencent Commc’ns Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) the panel concluded that the <oicq.net> and <oicq.com> domain names were confusingly similar to the complainant’s mark, ICQ because they added the letter “o” to complainant’s mark. Additionally, in Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) the panel determined that elimination of spaces between terms and addition of a gTLD does not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). This Panel similarly finds that Respondent’s addition of the letter “o,” removal of the space between Complainant’s mark, and addition of the gTLD “.com” does not defeat a claim of confusingly similarity. The <cheaoptickets.com> domain name is confusingly similar to Complainant’s CHEAP TICKETS mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
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 of proof 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) (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.”).
According to Complainant, Respondent has never been known by any of the disputed domain names. Complainant first asserts that the relevant WHOIS information suggests Respondent is known as an entity other than the trademark associated with Complainant. The Panel notes that the WHOIS record identifies the registrant of the disputed domain names as “Domain Admin.” Complainant further asserts that it has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s marks. Finally, Complainant adds that Respondent is not sponsored by or legitimately affiliated with Complainant in any way. Given Respondent’s failure to rebut the preceding allegations, the Panel finds that the weight of the evidence in this case supports findings that Respondent is not commonly known by the <korbitz.com> and <cheaoptickets.com> domain names within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant next contends that Respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or for a noncommercial or fair use under Policy ¶ 4(c)(iii). Instead, Complainant says that Respondent is using the disputed domain names to redirect visitors to a website featuring generic links to third-party websites, some of which directly compete with Complainant’s business. Complainant further claims that Respondent receives pay-per-click fees from these links websites. The Panel notes that Complainant’s Exhibit H displays screen shots of the websites resolving from the <korbitz.com> and <cheaoptickets.com> domain names. The Panel also observes that the record shows that Respondent’s <cheaoptickets.com> domain name displays links such as “Cheap Flight Tickets,” “Cheap Airline Tickets,” and “Buy Cheap Airline Tickets.” The Panel observes that Respondent’s <korbitz.com> domain name displays links including, “Orbitz com,” “Orbitz Travel,” “Airline Tickets,” and “Cheapest Airline Tickets.” In Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) the panel held 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)). This Panel similarly finds that Respondent’s use of the <korbitz.com> and <cheaoptickets.com> domain names to redirect Internet users to a website offering pay-per-click links that compete with Complainant’s business is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a noncommercial or fair use under Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant alleges that Respondent is a serial cybersquatter, and that Respondent established a pattern of such behavior. Complainant refers the Panel to Complainant’s Exhibit N, where Complainant lists a sampling of UDRP cases in which Respondent was found to have registered various domain names in bad faith. See NIC Industries, Inc. v. Abadaba S.A., FA 1448503 (Nat. Arb. Forum July 17, 2012); see also Enterprise Holdings, Inc. v. Abadaba S.A., Fa 1444226 (Nat. Arb. Forum June 21, 2012); see also Vanguard Trademark Holdings USA LLC v. Abadaba S.A., FA 1333290 (Nat. Arb. Forum Aug. 16, 2010). The Panel thus holds that Respondent has demonstrated a pattern of registering domain names in bad faith, thereby indicating that Respondent has registered the <korbitz.com> and <cheaoptickets.com> domain names in bad faith as well, pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Complainant next alleges that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii) by redirecting Internet users to a website featuring links to third-parties in direct competition with Complainant, thereby disrupting Complainant’s business. Complainant further states that Respondent receives some form of consideration for driving Internet traffic to these websites displaying pay-per-click links. See Complainant’s Exhibit H. Past panels have found that the registration of domain names that are confusingly similar to complainants’ marks, for the purpose of linking to the websites of complainants’ competitors, constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). This Panel agrees that Respondent’s disputed domain names improperly disrupt Complainant’s business and finds that Respondent’s registration and use of the disputed domains to be in bad faith, according to Policy ¶ 4(b)(iii).
Complainant further alleges that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv) by creating a likelihood of confusion with Complainant’s marks and commercially benefitting from that confusion. Again, the Panel observes that Complainant accuses Respondent of using the disputed domain names to redirect Internet users to websites displaying third-party links that compete with Complainant’s business. See Complainant’s Exhibit H. Complainant further presumes that Respondent receives some form of revenue for diverting Internet traffic to the resolving websites and clicking on the displayed links. Upon noting the similarity between Respondent’s <korbitz.com> and <cheaoptickets.com> domain names and Complainant’s registered trademarks and business, the Panel agrees that Respondent intentionally registered the disputed domain names with the goal of creating a false association with Complainant. The Panel further notes that Respondent displays Complainant’s marks spelled correctly on the websites resolving from the disputed domain names. The Panel thus finds that Respondent intentionally attempts to create confusion as to Complainant’s association with the disputed domain names, in order to achieve a pecuniary gain at the expense of Complainant. The Panel therefore finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant additionally asserts that Respondent engaged in typosquatting behavior, which is, in and of itself, evidence of bad faith. The Panel notes that previous panels have traditionally found typosquatting where a disputed domain name shows a typographical error with respect to a complainant’s mark or correlation between an incorrect letter found in the disputed domain name and its placement on a computer keyboard near the correct letter as found in the complainant’s mark. 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).”). In the instant case, the Panel notes that aside from the elimination of spacing in the <cheaoptickets.com> domain name, the second-level portion of Respondent’s <korbitz.com> and <cheaoptickets.com> domain names merely adds an additional letter “k” or “o,” which are both spatially close to the correct letter following it on a typing keyboard. The Panel finds that Respondent’s registration of the disputed domain names constitutes typosquatting, and finds bad faith registration under Policy ¶ 4(a)(iii) on this basis.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN 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 <korbitz.com> and <cheaoptickets.com> domain names be TRANSFERRED from Respondent to Complainant
Hon. Carolyn Marks Johnson, Panelist
Dated: July 9, 2014
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